Kenzo Societe Anonyme from France filed a request for invalidation of the right of protection claiming it was granted in violation of article 9(1)(i) of the old Polish Trade Mark Act of 1985 (Ustawa z dnia 31 stycznia 1985 r. o znakach towarowych, Dziennik Ustaw z 1985 r. Nr 5, poz. 15, z pózniejszymi zmianami):

(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

and article 8(i)

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;

The request had to be based on the old act because the trade mark application was filed while the old act was in force. KENZO was claiming the similarity of signs, (KENZO TOKYO BY KENZO, R-207663, TOKYO BY KENZO, R-207662) and their reputation. The French company has also argued that the German company imposes its trade mark on similar bottles to Kenzo's bottles. On February 2007, the PPO rejected the invalidation request and KENZO has appealed this decision.

The German company did not respond to the correspondence on this matter and no other address was known. During earlier hearings on July 2008, the District Administrative Court in Warsaw WSA had to ask the President Polish Chamber of Patent Attorneys to designate a curator for the German company. The curator did not agree with KENZO arguments. He pointed that the assessment had to be a comparison of the signs as they were registered, and not the packaging.

On 27 November 2008 the district Administrative Court in Warsaw rejected the appeal (act signature VI SA/Wa 1388/07). The Court acknowledged the fact that the PPO did not negate the reputation of KENZO trade marks. According to the DAC, the PPO was not obliged to take into account KENZO's reputation, since the Office found that the disputed signs were not similar. The Court did not agree with the argument that these signs had similar associations because cosmetics marked by them come from Japan. According to Judge Olga Zurawska-Matusiak such conclusion would be too far-reaching. She also pointed that the PPO hasproperly assessed both trade marks. The issue of passing off of packages should be decided by a civil court in a different proceedings.

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