Nature of decisions on expiry of trademark rights clarified

The Supreme Administrative Court has clarified the nature of decisions issued by the Polish Patent Office (PPO) with regard to the expiry of trademark rights (Case II GSK 668/08, January 21 2009).

On January 25 2005 Société des Produits Nestlé SA applied to register the trademark CHOKELLA for goods in Class 30 of the Nice Classification, including "breakfast cereals, muesli, cornflakes, cereal bars, cereal flakes, cereal preparations, rice products, flour, also in the form of ready-to-use meals".
Nestlé was aware of the existence of the earlier trademark CHOKELLA, which was registered by Kelsen The International Bakery A/S on August 30 1993. Under Article 132(1)(iii) of the Industrial Property Law, a trademark will not be registered if it is identical or similar to:

"an earlier trademark registered in the Republic of Poland the registration of which has lapsed, provided that the interval between the date on which the registration lapsed and the date on which a third party applied for the registration of a similar trademark is, subject to Article 133, no longer than two years."
On February 3 2005 Nestlé requested that the PPO issue a declaratory decision affirming that the registration for the CHOKELLA mark had lapsed on the grounds of non-use. 
In January 2006 the PPO dismissed the action on the grounds that the registration for the CHOKELLA mark had expired on August 30 2003, as Kelsen had failed to renew the registration after 10 years. The PPO indicated that Nestlé's request was filed almost two years after the expiry of the registration, so dismissal was justified. 
Nestlé had argued that under Article 169(2) of the law, the PPO must issue a decision with regard to the expiry of a trademark registration at the request of any interested party. Nestlé had further argued that Article 169(2) clearly indicates that such a decision is declaratory in nature (ie, the decision does not terminate the rights in the mark, but merely states that the rights have expired under the law), in contrast to the corresponding provisions of the former Trademarks Act 1985.
However, the PPO was of the opinion that Article 169(2) of the law and the corresponding provisions of the Trademarks Act were identical. Moreover, even if the act did not indicate the exact date on which a registration lapsed, legal doctrine and case law had established a method for calculating such a date based on a specific event (ie, the date on which a third party requested that the PPO issue a decision on the expiry of the trademark rights).
Nestlé appealed. On December 12 2007 the District Administrative Court of Warsaw dismissed the appeal and upheld the PPO's findings (Case VI SA/Wa 791/07).
Nestlé filed a cassation appeal before the Supreme Administrative Court. First, the court noted that on April 23 2008 it had issued an important ruling on Article 169(1)(i) of the act in Case II GPS 1/08. Article 169(1)(i) provides that a registration will lapse if the trademark owner fails to put the mark to genuine use for the goods covered by the registration for a period of five successive years. The court had clarified that the trademark registration will lapse on the last day of the five-year period, counting from the first day of non-use. 
In the present case, the court ruled that it had to take into account its April 23 2008 decision. Moreover, it held that declaratory decisions cannot determine the occurrence of the new legal situation. According to the court, the lack of precision of the provisions of the Trademarks Act had led to the erroneous interpretation that decisions of the PPO with regard to the expiry of trademark rights were constitutive in nature. The court referred to the views of the judges in Case II GPS 1/08 and to an article written by two legal scholars, which provided examples on the declaratory or constitutive nature of decisions taken from family or labour law.
The court further held that the filing date of Nestlé's request for a declaration did not affect the date of expiry of the CHOKELLA registration. Whether and when a registration has lapsed should be assessed based on the findings made during the proceedings.
Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw

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