Polish your IP

How does a transfer of a trademark on which the opposition was based affect the standing of the petitioner in the course of the opposition proceedings

The Polish Industrial property Law (“IPL”) provides two alternative ways for cancelling a trademark registration.

Firstly, an opposition procedure, which can be launched within six months from the date of a publication of a trademark protection grant in the Polish Patent Office’s official bulletin.

Secondly, an action for a declaration of invalidity of a trademark which can be brought after the date of decision on trademark registration (without waiting for the publication, which in Poland can take up to several months).

Grounds for both actions (absolute/relative registration obstacles) and the aim of the proceedings (to cancel the trademark) are the same. The primary difference is that to initiate invalidation proceedings it is obligatory to prove having a legitimate interest – differently than in case of oppositions.

Basically, a party’s participation in the administrative proceedings is strictly correlated with its legal interest or obligation. It means that when a party loses its legal interest or obligation (eg. transfers a trademark) that served as a basis for the commencement of the proceedings, it is no longer entitled to be a party in the proceedings.  The situation becomes more complex in case of opposition proceedings since the IPL does not require the opponent to prove having a legitimate interest in filing opposition.

It was in question whether in such a case a party that transfers during the opposition proceedings a trademark that served as a basis for the opposition is still entitled to claim its violation as a ground for trademark cancellation. In other words – whether an opponent may attempt to cancel a mark referring to an earlier right that no longer belongs to them and not having an authorisation from the mark’s assignee.

This year an interesting verdict was given by the Supreme Administrative Court, which shed some more light on this blurry issue.

The case concerned an opposition filed against a registration of a trademark “CARLO BOSSI” for cosmetics. The opponent was a company that at the moment of filing the opposition owned a renowned trademark “BOSS”. However, during the proceedings the ownership of the mentioned trademark was assigned to an another entity. The Polish Patent Office decided to accept the opposition and invalidated the contested mark.

However, in its’ decision PPO indicated as a party not the entity originally filing the opposition (the assignor), but the assignee of the earlier trademark that served as a basis for the opposition – though the assignee had not participated in the proceedings at all. This was perceived by the Regional Administrative Court (“RAC”) as an obvious fault in procedure and the decision was set aside.

The PPO applied the RAC’s concerns and issued a new decision – this time addressed properly to the opponent. The case was appealed – once again – to the Regional Administrative Court. Surprisingly, this time (VI SA/Wa 1888/08) the RAC seemed to present another angle in this matter in comparison with the previous verdict.

The court claimed that the assignor had no standing in opposition proceedings based on reference to the assigned trademarks. This is because the assignee of the trademark rights has not confirmed in a clear manner that it wishes the assignor to further the opposition. Therefore, however the court accepts the view that an opponent filing an opposition is not obliged to prove having a legitimate interest, it cannot accept that the opponent proceeds with an opposition in case when it had already transferred the trademark rights – the ones that served as a a ground for the proceedings –  to an another entity.

A cassation appeal was filed and the Supreme Administrative Court (II GSK 608/09)  which gave a definite ruling: a person filing an opposition even if based on relative grounds is not obliged to have a legitimate interest, as well at the moment of filing as all throughout the litigation procedure.

According to the Court, art. 246 of IPL (right to file an opposition) constitutes an exhaustive regulation, which liberalizes criteria of the mentioned art. 164 regarding the standing in an invalidation action. The opposition may be filed by anyone, regardless of its legal status, motive and relationship to the case. It is so because an opposition is in its character somewhat similar to actio popularis and is aimed to protect an important public interest. The opposition’s function is to counteract against registrations abusing binding regulations of law, as such registrations would have a highly detrimental consequences for entrepreneurs and consumers. Therefore, an opposition filing and proceeding cannot be conditioned by a requirement of a possession of any right or interest.

Author: Rafał Kłoczko
For any questions on this article, please contact Michał Siciarek.

Author: admin