On October 24, 2019, the Voivodship Administrative Court in Warsaw overturned the decision of the Adjudicative Board of the Polish Patent Office ("PPO"), which invalidated the recognition of the protection of the international trademark IR 681252 in the territory of the Republic of Poland. An incredibly interesting and multithreaded case - when it seemed that the PPO's decision would be upheld (i.a. due to the resolution of a similar case by OHIM), the court decided to repeal it. The basis for the decision are… procedural errors.
According to the court, PPO issued a decision in violation of art. 255 (4) of the Industrial Property Law ("IPL"), according to which the Patent Office decides cases in litigation proceedings within the limits of the application and is bound by the legal basis indicated by the applicant. The second sentence is particularly important, i.e. 'it is bound by the legal basis indicated by the applicant'. What does this mean in practice? Let us look at the case from the very beginning.
Proceedings before the PPO
In January this year, the PPO partially revoked the recognition in the territory of the Republic of Poland of protection of the international graphic trademark IR.681252 belonging to the French company Louis Vuitton for all goods in classes 18 and 25, as well as for some goods in class 16 of the Nice Classification. The ground for invalidity was the lack of secondary distinctiveness of the contested mark.
The case was widely discussed in the media. Due to the complexity, the Voivodship Administrative Court made use of the possibility of postponing the delivery of the judgment. An application for invalidation of the recognition on the territory of the Poland of the protection of the international trademark IR.681252 was submitted to the PPO in 2017, while the contested graphic mark was registered in the international procedure in 1997. The applicant is Norbert W., a natural person from Warsaw. It is worth noting here that in the present case the legal interest has been excluded, since the currently applicable art. 165 of the IPL does not require the demonstration of a legal interest in the request for invalidation of a trademark protection right.
Arguments of the parties
The applicant puts forward two pleas. First, the lack of abstract distinctiveness. Secondly, he pointed out that the mark does not have sufficient distinctive features, because it is a decorative design, a decorative motif that covers all or part of the products. Therefore, consumers do not perceive this mark as the source of origin of the goods.
In response, LV indicated that, in principle, litigation is an adversarial procedure, therefore each party is obliged to provide evidence. Since the applicant has raised the allegations referred to above, he should also provide evidence that on the date of submitting the application in 1998, the trademark did not possess sufficient distinctive features.
Additionally, LV emphasized that the mere fact that a trademark may be applied in whole or in part to a good does not indicate a lack of its distinctiveness, as is best exemplified by spatial marks. Naturally, it was not without presenting evidence of the recognition of the beige-brown "chessboard". According to the survey conducted by the trademark holder, 25% of respondents identified the disputed mark by the grid pattern and colors; while among target consumers as much as over 78%.
Choice of legal basis
Now let us move to the key issue. In the justification of its motion, the applicant indicated a violation of Articles 4 and 7(1) of the Act of January 31, 1985 on trade marks ("the TM Act"), because it was in force on the date of international registration of the disputed mark, i.e. in 1997. The TM Act was repealed as of the entry into force of the provisions of the IPL, i.e. on the day of submitting the application for a declaration of invalidity of the disputed mark, the provisions of the TM Act were no longer in force. In response, the PPO called on the applicant to indicate the correct, i.e. currently applicable legal basis, while directly specifying this basis, i.e. art. 165 of the IPL. The issue of choosing a proper legal basis will later become the basis for the Voivodship Administrative Court’s decision.
Finally, the PPO agreed with the applicant and partly invalidated the protection right for the trademark IR.681252; however – what is significant – the mark was invalidated in its entirety for goods in classes 18 and 25, including handbags, backpacks, travel bags, suitcases as well as clothing and clothing products, i.e. products for which the "chessboard" is most frequently used. Speaking of the grounds of the PPO's justification, one more important aspect cannot be ignored, namely: a similar case has already been decided by OHIM (now EUIPO), followed by the General Court and the European Court of Justice (“ECJ”).
OHIM decision and proceedings before the ECJ
The applications for invalidity of the trademarks EUTM 000370445 and EUTM 006587851 (Louis Vuitton 'checkerboards' in beige and brown, as well as dark gray and light gray) were submitted by the German company Nanu-Nana Handelsgesellschaft mbH für Geschenkartikel & Cp. KG. OHIM agreed with the applicant by revoking the protection rights over the abovementioned marks. The reason was the lack of distinctive character. Due to the appeal of LV, the case was referred to the General Court, which in 2015 upheld the OHIM decision (ref. No. T-359/12 and T-360/12). According to the court’s justification: “The chequerboard pattern is a basic and commonplace figurative pattern, since it is composed of a regular succession of squares of the same size which are differentiated by alternating different colours (…). The pattern thus does not contain any notable variation in relation to the conventional representation of chequerboards and is the same as the traditional form of such a pattern (…). The chequerboard pattern is one that has always existed and has been used in decorative arts”.
Naturally, LV did not agree with this argumentation and the case was referred to the ECJ (ref. No. C-363-15 P and C-364-15 P). A year later, in 2016, the parties concluded a settlement agreement, as a result of which the applicant (Nanu-Nana company) withdrew the application for a declaration of invalidity. Consequently, the proceedings were discontinued.
Returning to the Polish case: the PPO in the justification of its decision referred to the arguments of the General Court and shared them practically in their entirety. Therefore, it seemed that the Voivodship Administrative Court would share this position as well.
…. and the administrative court's different view
The Voivodship Administrative Court overturned the PPO's decision, citing the abovementioned violation of art. 255(4) of the IPL. The PPO was bound by the basis indicated by the applicant, i.e. by the provisions of the TM Act. Due to the inter-temporal regulations, the TM Act was not applicable to the present case. According to the court’s opinion, the Patent Office initiated the proceedings without considering the formal errors of the submitted application. Moreover, the PPO could request the applicant to supplement the binding basis of the submitted motion only if the applicant did not indicate any legal basis. In turn, the Patent Office in response to LV's argument that the legal basis is incorrect, called on the applicant to supplement it, at the same time specifying the provisions of the IPL that should be referred to. Consequently, the decision issued by the PPO was based on the legal basis de facto indicated by the office itself.
Therefore, we do not know what the Voivodship Administrative Court’s decision would be regarding the distinctive character (or lack thereof) of the disputed mark. The court's judgment is not final; the applicant has the right to appeal to the Supreme Administrative Court.