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Poland: trade mark in design
On 10 April 2001 the Polish company Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J (this is the actual company name - the firm, which consist of names of partnes "Rosinski Andrzej Rosinski Michal Rosinska Joanna", the name "packages production plant" and the type of legal entity they operate "public company") applied for design registration for bottle with top. The Polish Patent Office has registered the design on 14 January 2003, Rp-2543.
In 2006, Unilever NV of Holland asked the PPO to annul its decision regarding Rp-2543. Unilever based its claim on Article 117(2) of the Polish Act of 30 June 2000 on Industrial Property Law (ustawa Prawo wlasnosci przemyslowej z dnia 30 czerwca 2000 r.) published in Dziennik Ustaw 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later changes:
A finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights will also constitute a ground for invalidation of the right in registration.
Unilever's legitimate interest to request the invalidation was based the earlier 3D trade mark registration, R-134678, which was granted by the PPO in a decision of 28 January 1999. However, the problem with applying Article 117(2) lays in the rules of Polish administrative procedure. The PPO is not allowed to decide if third parties rights are infringed.
The PPO in its decision of 19 October 2007, act signature Sp. 187/06 invalidated the contested design. The Office recognized the similarity between the trade mark and the design based on arguments presented by Unilever's patent attorney. The Polish company appealed. Its representative called into question the correctness of PPO's decision in applying provisions of article 117(2). In his opinion the infringement issue should be decided by the civil court, not the administrative body which the Polish Patent Office is. However, the District Administrative Court in Warsaw in its recent judgment of 21 November 2008, act signature VI SA/Wa 710/08 did not agree with the Polish company arguments. In court's opinion the PPO has been given the opportunity to assess similarities between a registered trade mark and a design. PPO's conclusions that there exist a significant similarity may entitle the Office to decide with regard to the infringement of third parties rights.
The judgment is not yet final; the Polish company has the right to file a cassation complaint before the Supreme Administrative Court. SAC's ruling would clarify the interpretation of Article 117(2).
Tags: 3d trade marks, new design, Poland, Polish courts, Polish Patent Office,
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