JURISDICTION REPORT: POLAND
LEGAL INTEREST BEFORE THE POLISH PATENT OFFICE AND COURTS
Marta Skrobot Patpol
According to the Polish Administrative Code and Law on Industrial Property, a party must prove its legal interest in order to start administrative proceedings before the Polish authorities.
Te following case between a Czech company and its Polish local representative illustrates the importance of legal interest.
Druchema, a chemical manufacturer from the Czech Republic, moved for invalidation of the ‘Tempo’ trademark (below right) granted in the name of Inter Global, which was its Polish local representative. Te Czech company claimed before the Polish Patent Office (PPO) to be the rightful owner of the trademark ‘Tempo’, as the holder of many identical registrations in the Czech Republic. Under a cooperation agreement, Inter Global was Druchema’s exclusive sales representative in Poland, but had no authorisation to register marks independently in its own name. Despite that, Inter Global applied at the PPO for registration of the trademark ‘Tempo’ and succeeded in obtaining protection. According to the Czech company, the application was filed in bad faith and the registration was dishonest.
Te Czech company filed a request for invalidation of the mark at issue and demonstrated its legal interest by referring to the regulations on protection of one’s own business activity and rights.
Inter Global’s counter-argument was that Druchema did not prove its legal interest sufficiently to request invalidation of the subject mark, and that identical registrations in Czech Republic were not sufficient for invalidation of the mark in Poland. Inter Global maintained that it had never been a sales representative of the Czech company, but only cooperated with Druchema in the field of manufacturing its products in accordance with its guidelines.
Inter Global paid the costs of launching the Tempo-branded goods on the Polish market, and the costs of advertising, so the relationship between the companies was not sales representation. Terefore, Inter Global was under no obligation to obtain Druchema’s permission to apply for the subject trademark.
By decision of October 16, 2009, the PPO invalidated the ‘Tempo’ trademark. Te legal interest of the Czech company was deemed sufficient, as it had applied for a trademark (below leſt) to protect its rights in Poland, and the earlier registration in the name of Inter Global was cited against Druchema’s later application.
“THE PPO ALSO CONFIRMED THAT INTER GLOBAL COOPERATED WITH DRUCHEMA, AND MUST HAVE BEEN AWARE OF ITS EARLIER TRADEMARKS, PRODUCTS AND ACTIVITY ON THE CZECH MARKET.”
Based on evidence provided by the Czech Company, the PPO also confirmed that Inter Global cooperated with Druchema, and must have been aware of its earlier trademarks, products and activity on the Czech market, so it seemed evident that the ‘Tempo’ trademark was applied for in bad faith.
Inter Global appealed to the District Administrative Court. In its judgment of October 29, 2010, the court upheld the standpoint of the PPO and dismissed the complaint. Te court acknowledged that Druchema had a legal interest in requesting invalidation of the mark at issue, as it had filed a trademark application against which Inter Global’s registration for ‘Tempo’ was cited.
Te court also confirmed that Inter Global was acting in bad faith, as it was aware of the Czech company’s earlier trademarks, and knew that its application would be detrimental to its interests.
Te Polish company disagreed with the court’s arguments and filed a request for cassation with the Supreme Administrative Court.
The Supreme Court held that a foreign company may proceed with an action against its local agent if the agent files a trademark application in its own name that is similar to the company’s trademarks registered elsewhere. The company has five years to start opposition or invalidation proceedings against such a trademark. If five years pass and the party takes no action, it is considered that it has tolerated the use of the mark and no longer has the right to proceed with invalidation.
However, according to the Polish Law on Industrial Property, it is different if the mark is found to have been applied for in bad faith. In that case, the owner can proceed with action against the mark at any time, although he might have unknowingly tolerated it for more than for years. Thus, the Supreme Court rejected the cassation complaint and upheld the initial standpoint of the PPO.
Z-304294
www.worldipreview.com R-104245
Marta Skrobot is a trademark attorney at Patpol. She can be contacted at:
marta.skrobot@
patpol.com.pl
World Intellectual Property Review September/October 2012 111
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