Wolny Zwizek Zawodowy Kierowców RP v Urzd Patentowy RP, Supreme Administrative Court (NSA), Poland, II GSK 555/09, 21.04.2010
Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq109
The Supreme Administrative Court (NSA) in Poland has confirmed that a trade mark containing a representation of a white eagle similar to the Polish national emblem cannot be registered, taking into account not only the Law on Industrial Property of 30 June 2000 (Law on IP) but also the appropriate provisions of the Constitution of the Republic of Poland of 2 April 1997 (Constitution) and the National Emblem, Colours and Anthem Act of 31 January 1980 (NECA Act).
According to Article 131(2)(2) of the Law on IP, a right of protection shall not be granted for a sign if it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (national emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organizations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organizations performing activities in vital public interests, where these organizations' activities extend to the entire territory of the State or to a substantial part of it. This is the case unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organization, to use the sign in the course of trade.
When considering provisions of trade marks law in other EU Member States and the appropriate secondary EU law, this regulation is very casuistic. The Constitution, in Article 28(1), stipulates that the image of a crowned white eagle upon a red field shall be the national emblem of the Republic of Poland. Article 2 of the NECA Act states that the national emblem of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field. The latter Act contain some lex specialis provisions under which symbols of the Republic of Poland cannot be placed on items intended for trade (Article 16(1)). However, under Article 16(2) of the NECA Act such use may take place when the Poland's national emblem is presented in a stylized or artistically modified manner.
Wolny Zwizek Zawodowy Kierowców Rzeczpospolitej Polskiej (the Free Trade Union of Professional Drivers of the Republic of Poland, WZZKRP) applied to register at the Polish Patent Office (PPO) a trade mark which consisted of two vital graphic elements, the wording ‘Wolny Zwizek Zawodowy Kierowców’ as well as representation of a white eagle (application No. Z-276682). The mark was intended to designate various goods and services in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.
Figure 1. Trade mark application No Z-276682 (left)
and representation of Poland's national emblem.
and representation of Poland's national emblem.
The PPO refused to grant protection for the trade mark concerned, citing the provisions of the Law on IP and NECA Act mentioned above. The white eagle embedded in the trade mark was found to be ‘very similar’ to Poland's national emblem. The Office emphasized that Article 131(2)(2) of the Law on IP
serves to guarantee the State, its bodies and authorities, monopoly to use official state symbols ... and affirms an average consumer that any state symbols encountered in trade are used by proper and entitled institutions.
The Voivodship Administration Court (WSA) upheld the decision of the PPO, mentioning additionally the constitutional provisions at stake. In WSA's opinion Article 131(2)(2) of the Law on IP excludes the grant of protection to signs not only when they are identical to the image of the White Eagle (appended to the NECA Act), but also when an eagle is ‘similar’ to the national emblem of the Republic of Poland.
The NSA pointed out that the Law on IP did not define the notion of ‘symbols of the Republic of Poland’ and that the examples indicated in brackets in Article 131(2)(2) should be further interpreted. Following a legal analysis the Supreme Administrative Court explained that ‘symbols of the Republic of Poland, its national emblem and image of the white eagle’ had different meanings but that the first notion, being the vaguest, included the two others. The Court conceded that representation of the white eagle incorporated in the refused trade mark differed from the image of the white eagle being Poland's national emblem exclusively with ‘some colouristic details’. As the legislator, the NSA said, in Article 131(2)(2) of the Law on IP the notions used ‘symbol and national emblem of the Republic of Poland’, terms being vaguer then ‘image of the white eagle’, thus ‘minor colouristic differences do not have any legal effect’. Although the NSA referred to Article 16 of the NECA Act, no direct comment was made whether the white eagle in question was presented in a stylized or artistically modified manner. Arguments laid out in the judgment suggest that this was not the case.
Nowadays, being aware of advantages of heraldry or vexillology, applicants more often introduce into their trade marks officially protected elements such as flags, national emblems or armorial bearings. These signs are likely to influence a consumer who will, in most cases, subconsciously associate them with a particular state or specific public institution.
There is very little legal literature or judicial decisions on this topic. The judgment at stake is the first decision regarding the interpretation of Article 131(2)(2) of the Law on IP since it has been enacted, although previously the PPO had already rejected several comparable applications. Besides, although the Polish legal system has a statutory character, the role of judicial precedents has become vital over the years. Thus the significance of this judgment is crucial for the PPO's future practice. The Office for Harmonisation in the Internal Market (OHIM) may also take notice of this judgment. If such an application was filed with OHIM, that Office should refuse it in accordance with Article 7(1)(i) and (2) of the Regulation 207/2009 on the Community Trade Mark (since Poland's official emblem does not appear on the Article 6ter list, Article 7(1)(h) will not apply). Accordingly the substantial harmonization of the practice of granting protection for trade marks at the EU level would be achieved.
While Article 131(2)(2) of the Law on IP represents a transposition of Articles 3(1) (h) and (2)(c) of the Trade Mark Directive 2008/95 (formerly 89/104), it does not contain any reference to Article 6ter of the Paris Convention for the Protection of Industrial Property (identical provisions are in force in a few EU Member States, e.g. Germany and Austria). Therefore at any stage of proceeding neither the PPO nor the Courts considered the application in question concerning ‘any imitation from a heraldic point of view’. The only mention was made to the white eagle from the application No. Z-276682 as ‘similar’ (WSA), ‘very similar’ (PPO) or ‘different in some coloristic details’ to the Poland's official emblem (although the appropriate provision of the Law on IP does not refer to similarity). These expressions remain too vague and unclear at the moment and need to be further specified. Very likely applicants willing to use a white eagle's motive in their trade marks still cannot be certain whether their applications will be accepted.