By virtue of a recent decision in the case No II GSK 305/06, the Supreme Administrative Court rejected an appeal filed by company T and maintained the Polish Patent Office's decision to invalidate the right holder's trade mark.

In 1999 company T managed to obtain a trade mark registration (R-116334) for a figurative/graphic sign in class 16, a representation of which was attached to the application. The description simply presented its nature as "the edges of books or brochure pages which are visible from the side. Those edges are coloured, and such pages compose a group in the same colour. The other pages compose a group in a different contrasting colour, and subsequently all pages of the book compose an original and characteristic division of pages into groups, each of them being in a different colour".

In 2001, a publishing house – company P – requested that the Polish Patent Office (PPO) invalidate the trade mark of company T. Company P claimed that coloured edges of book pages cannot function as a trade mark because they do not enable ordinary customers to distinguish between the products of different publishers. It also served evidence that many business entities had been using the discussed method of colouring the edges of pages to be printed on different materials before the registration date of the subject mark. Accordingly, such trade mark has no distinctive character at all. According to company P, registration of the trade mark R-116334 provided its holder with an opportunity to "possess" a specific method of printing. The trade mark owner set forth his counter-arguments that according to Polish law a composition of colors may serve as a trade mark. Company P responded by submitting evidence that company T was not publishing brochures or books at the date the PPO issued the decision on registration of the trade mark in question.

In 2005, the PPO invalidated trade mark R-116334. In its decision, the PPO noted that the trade mark in question on its own, when separated from the goods for the marking of which it is destined, has no distinctive character. Therefore, the trade mark is not capable of distinguishing the goods of one enterprise from the goods of others, as ordinary customers will not be able to remember a random combination of six colours, and keep them in mind, so that later on in the future this combination of colours may allow the customers to distinguish the goods bearing that trade mark from other goods marked in a similar way by other publishers. According to the PPO, an ordinary customer is able to remember a combination of only three colours. The PPO also admitted that granting protection to such "sign" as a trade mark may put an obstacle in the way of other undertakings operating on the market.

Company T started an action before the District Administrative Court in Warsaw to annul the decision of the PPO. It argued that the opposite party (company P) had no legal interest in requesting the invalidation of the subject trade mark. The Court maintained the standpoint of the Patent Office regarding the lack of distinctiveness of the trade mark of company T. The Court also decided that company P had legal interest in filing the request for invalidation of the trade mark in question because it had already been sued by company T in different civil proceedings in connection with the use of trade mark R-116334. The Court also noted that legal interest to proceed with such an action is guaranteed by the Polish Constitution, which provides the right to run one's business in a free way. Also, according to the District Court, under case law there should not be excessive legal barriers for entrepreneurs if they disagree with the decisions of the PPO and wish to argue whether a decision on trade mark registration was correct or not.

In 2006 company T attempted to override this decision of the District Administrative Court and filed an appeal with the last instance court – the Supreme Administrative Court. According to the last instance court, the appeal was not justified. Subsequently, the decision invalidating the mark was upheld.

Tomasz Rychlicki

Patpol
162J Nowoursynowska Str.
02-776 Warsaw
Poland
Postal address
PO Box 168
00-950 Warsaw
Tel: +48 22 644 96 57 / 96 59; +48 22 644 96 68 / 97 69
Fax: +48 22 644 96 00 / 44 02
patpol@patpol.com.pl  
www.patpol.com.pl