THURSDAY, 9 OCTOBER 2008
Poland: complexity of proceedings

R-83022A recent article of the Polish newspaper Rzeczpospolita is a perfect example of complexity of proceedings in trade mark cases in the Republic of Poland and presents its readers with nuances of Polish language. It also concerns the favourite animal of Class 46 team. "Mis" in Polish stands for "bear" or "teddy bear".
R-90583
MIS has operated on the Polish market since 1956 in the form of "industrial plant", but until 1978, it used the name "Wojewódzki Zwiazek Gminnych Spóldzielni Samopomoc Chlopska-Zaklad Wyrobów Cukierniczych Mis" in Oborniki Slaskie. The complex name was changed to "Spóldzielnia Pracy Produkcyjno Handlowa MIS" in 1978 and again to "Zaklady Wyrobów Cukierniczych MIS" in 1992.
Wlodzimierz Mis and Jerzy Mis - "Bracia Mis" (Bear's brothers) have started their activity in 1989. They use a single word "Mis" (bear) as their company name and produce confectionery since 1993. "Bracia Mis" have applied for word-figurative trade mark "Mis" in 1992. The Polish Patent Office has granted the protection right in 1995 (R-83022). The Company from Oborniki Slaskie received trade mark protection right for figurative sign consisting of bear's head in 1996 (R-90583).

Zaklady Wyrobów Cukierniczych MIS filed a request for invalidation of the right of protection of "Bracia Mis" trade mark. The PPO agreed and invalidated the contested trade mark in 2001 for the first time. The case went for the appeal to the District Administrative Court in Warsaw which annuled the PPO's decision. The Administrative court pointed that Polish Patent Office did not properly justified its decision and did not consider judgments of two civil courts that previously ruled in case of "Bracia Mis" and Zaklady Wyrobów Cukierniczych MIS as regards similarity of both signs and the use of "Bracia Mis" trade mark as a company name (a short explanation: Polish civil courts decide trade mark infringement cases while administrative courts decide appeals and cassation complaints related to administrative procedure and cases before PPO).

Once again, the PPO invalidated "Bracia Mis" trade mark in 2007. The Office ruled that the registration should not be allowed because it violated personal rights of Zaklady Wyrobów Cukierniczych MIS - the right to company name - which enjoyed a long tradition and reputation. Again, the case went for an appeal to DAC. Trade mark attorney who was representing "Bracia Mis" presented arguments that their products are only sold in company's owned shops and there is no risk of consumers confusion. The DAC did not follow such arguments so the case went to the Polish Supreme Administrative Court as cassation complaint. The SAC agreed with "Bracia Mis" and held that the PPO did not indicate on which evidences the annullement was based in its decision and that the PPO failed to comply with regulations provided in the Code of Administrative Procedure. The DAC by accepting PPO's decision has failed to comply with administrative proceedings rules which which in consequence was the reason to invalidate DAC's judgment. Judgment of the Supreme Administrative Court of 6 October 2008 act signature II GSK 406/08 is final and binding. It means that the District Court has to annul the Polish Patent Office's decision from 2007 and order the PPO to reconsider the invalidation of "Bracia Mis" trade mark.

Posted by: Tomasz Rychlicki @ 14.33
Tags: adminstrative proceedings, civil proceedings, Poland, Polish courts, Polish Supreme Administrative Court, Polish trade marks,
Link: https://www.marques.org/class46?XID=BHA721

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