Supreme Administrative Court considers issue of opponent's legal interest

Poland
The Supreme Administrative Court has held that, under Article 246 of the Law on Industrial Property of June 30 2000, an opponent is not required to provide evidence of its legal interest, both at the time of filing the opposition and during opposition proceedings before the Polish Patent Office, even if the rights holder considers the opposition to be groundless (Case II GSK 608/09, May 13 2010).  
 
Article 246 provides as follows:

"1. Within six months of the publication in the Official Journal of the Patent Office of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right of registration.

2. The opposition... may be filed on the same grounds on which a patent, a right of protection or a right of registration may be invalidated
."
 
Therefore, Article 246 does not impose an obligation on the opponent to prove its legal interest. In contrast, under Article 164, a trademark may be cancelled, in whole or in part, at the request of any party having a legitimate interest therein, provided that it is able to prove that the statutory requirements for the grant of that mark have not been satisfied. Therefore, the requirements under Article 246(1) are less strict than those set forth in Article 164 - under Article 246(1), an opposition can be filed irrespective of:
  • the filing party's legal status;
  • its involvement in the matter; or
  • its motives.
Consequently, an opposition is similar in nature to a civil complaint (actio popularis) which is, due to its important public interest, available to every citizen or entity with procedural capacity, regardless of whether they have a direct involvement or interest in the matter. 
 
The aim of opposition proceedings is to prevent the grant of exclusive rights in violation of the requirements set forth under the law, as this could have unfavourable effects for both entrepreneurs and consumers. Therefore, filing an opposition should not be conditioned by, or dependent on, the existence of any subjective rights belonging to either the opponent or the rights holder. Importantly, Article 246(1) also provides that an opposition must be well reasoned. In other words, in an opposition based on Article 246, the characteristics of the opponent are irrelevant - the issue is whether the statutory requirements for granting the exclusive right at issue have been fulfilled.
 
In the present case, the court had to consider the following question: if the rights holder claims that the opposition is groundless under Article 247(2), which results in the proceedings turning into litigation under Article 255(1)(9), is the opponent under an obligation to prove its legal interest? There is no legal provision that suggests that the criteria relating to the status of the opponent in litigation proceedings are stricter that those applying to the opponent at the time the opposition was filed. Therefore, if a party possesses the necessary attributes at the time of filing the opposition, it cannot be deprived of those attributes as a result of circumstances occurring after the filing of the opposition.
 
The Supreme Administrative Court thus concluded that the Patent Office and, subsequently, the Court of First Instance had erred in:

  • finding that the plaintiff had lost its legal interest in pursuing its claims during the course of the proceedings; and
  • dismissing the plaintiff's request without examining whether the trademark at issue had been registered in accordance with the relevant regulations.
Slawomira Piotrowska, Patpol - Patent & Trademark Attorneys, Warsaw

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