The Polish newspaper Rzeczpospolita reports a recent judgment of the Supreme Administrative Court of 23 October 2008, regarding principles of mercantile honesty and legal interest in trade mark invalidation proceedings.

On 26 June 1996 the Polish company "Sniezka" Chlodnia from Czestochowa applied for figurative trade mark in class 30 (ice creams). The graphic represented a black boy's head. The Polish Patent Office granted the right of protection on 10 September 2001, R-132332. On 31 July 1998, the Lodmor company from Gdansk applied for word-figurative trade mark "calypso lody smietankowe waniliowe LODMOR" in class 30 for goods such as ice creams, ice cream powder, ice cream binders, Z-190131. The PPO rejected Lodmor's application justyfing its decision on priority of the "Sniezka" company's trade mark.

Lodmor filed a request for trade mark invalidation. The company from Gdansk claimed that "Sniezka" illegally appropriated a sign of a black boy's head, which was put on Calypso ice creams in the '70s and '80s by companies that were part of the Union of the Freezing Industry (Lodmor is a legal successor of one of them). The PPO has invalidated "Sniezka" trade mark in 2006. The Office ruled that this sign was registered in contrary to principles of merchant's honesty because the mark was already used for a long time by other entrepreneurs.

"Sniezka" company appealed. The District Administrative Court in Warsaw in its judgment (act signature VI SA/Wa 1005/07) of 17 October 2007 held that Lodmor had no legal interest in filing a request for trade mark invalidation. The court annulled PPO's decision. DAC held that the concept of legal interest in invalidation proceedings can not be derived from the fact that one company applies for a trade mark protection and there is an obstacle in the form of earlier registration. Such conclusion would lead to negation of principles that are the basis for granting rights for trade mark protection. In this case the interest involved only economic issues.

Lodmor filed a cassation complaint before the Supreme Administrative Court. The SAC agreed with Lodmor's arguments that DAC only referred to the trade mark application and it did not consider Lodmor's legal interest. The SAC already issued decisions and opinions as regards the breach of principles of mercantile honesty and the bottom line of each ruling was that, in specific circumstances, a legitimate interest of a competitor may be found, as it was in Lodmor's case. Therfore the SAC returned the case to DAC for reconsideration.

Judgment of the Supreme Administrative Court of 23 October 2008, act signature II GSK 385/08.