Agnieszka Matusik

Citizen standing to object to trademark registration

The Polish Supreme Administrative Court has confirmed that a person objecting to a decision to register a trademark under Art. 246 of the Industrial Property Law need not demonstrate a legal or factual interest in the matter.

Supreme Administrative Court judgment dated 13 May 2010 (Case No. II GSK 608/09)

The German company E.C. GmbH sought invalidation of the trademark “Carlo Bossi” (R-149940) held by Viki Laboratories from Izabelin, Poland, relying in its opposition on a series of “Hugo Boss” and “Boss” trademarks. The opposition was denied as unfounded, and the case was submitted for consideration in an adversary proceeding under Art. 255(1)(9) of the Industrial Property Law. After filing the opposition, E.C. sold the trademarks to another company, but continued to litigate the matter on the basis of its contractual obligations.

The Polish Patent Office denied the opposition because E.C. no longer held the rights to the prior marks it relied on.

In its decision, the Patent Office held that a party seeking to invalidate a trademark must prove that registration of the mark violates its own rights, not the rights of a third party. The Patent Office did not reach the issue of whether the registration violated the prior marks asserted by the petitioner.

The Province Administrative Court in Warsaw upheld the decision by the Patent Office on the same grounds (judgment dated 19 March 2009, Case No. VI S.A./Wa 1888/08). The court stated that by relying on trademarks held by another party, the petitioner had intruded on the right of exclusivity enjoyed by the holder of the prior marks.

E.C. appealed to the Supreme Administrative Court on a number of grounds, chief among which was the claim that the decision was issued in violation of Industrial Property Law Art. 246 and 247 due to the erroneous holding that when opposition to a trademark is submitted for resolution through an adversary proceeding, the party opposing registration must demonstrate a legal interest.

The Supreme Administrative Court upheld the appeal pursuant to Industrial Property Law Art. 246, which provides: “Any person may file a justified opposition to a legally final decision of the Patent Office granting a patent, protective rights or registration rights, within 6 months after publication in [the Patent Office bulletin] Wiadomości Urzędu Patentowego of information about granting of such right.” The court held that Art. 246 does not require a legal interest as one of the grounds for effectively seeking invalidation of a trademark.

According to the Supreme Administrative Court, Art. 246 liberalises the criteria for filing opposition to registration, broadening the group of persons with standing. Opposition may thus be filed regardless of the party’s legal status, its connection to the matter, or its motivations. Thus, the court reasoned, opposition under Art. 246 is similar to a citizen suit (actio popularis), which, when an important public interest is at stake, is available to any citizen or other entity with legal capacity to sue, regardless of whether or not the party has a direct connection to the matter or a legal interest in the result.

The grounds for opposition are circumstances that would justify invalidation of the trademark. After the case is submitted for resolution through an adversary proceeding—as occurred in this case—it is conducted like a proceeding to invalidate a trademark under Industrial Property Law Art. 164.

The recent ruling by the court is consistent with the existing line of precedent. Under this ruling, it appears that there are two different regimes for a proceeding to invalidate a trademark. One is initiated by opposition filed under Art. 246, subject to a deadline of 6 months after publication of information about the registration of the mark. The other is initiated by an application to invalidate the mark under Art. 164, which is not subject to such deadline but requires that the applicant demonstrate that it has a legal interest in invalidation of the trademark.

The difference is substantial. The only condition for filing opposition under Art. 246 is compliance with the 6-month deadline and providing sufficient justification for the opposition.

Another noteworthy aspect of the case in practice goes to the issue of ownership of the conflicting trademarks asserted as the basis for the opposition. Significantly, the court found that in order to seek invalidation of a trademark, a party need not be the owner of a conflicting trademark and need not assert its own rights as the basis for invalidation. It follows that even if the owner of a prior mark has not pursued measures provided by law to eliminate a later mark, any person with legal capacity to sue may do so under Art. 246 of the Industrial Property Law.

Agnieszka Matusik, Intellectual Property practice, Wardyński & Partners