The registration right regarding a 3D shape trade mark in the form of a delicje biscuit R-116211 has been invalidated

Act of 30 June 2000 Industrial property law (Dz.U. z 2023 r. poz. 1170)

link to provision: https://isap.sejm.gov.pl/isap.nsf/download.xsp/WDU20010490508/U/D20010508Lj.pdf 

Article 315 Acquired rights
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trade marks and rationalisation projects, existing at the time of entry into force of this act, shall remain effective. The previous provisions are applicable to these rights, unless the provisions of this part stipulate otherwise.
2. Legal relationships established prior to the entry into force of this Act shall continue to be governed by the previous provisions.
3. Statutory requirements for the grant of a patent, a right of protection or a registration right shall be assessed under the provisions effective at a date of filing with the Patent Office of an application concerning an invention, a utility model, a trade mark or topography of an integrated circuit. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this act.

The Supreme Administrative Court’s (NSA) judgment dismissed the cassation appeal against the judgment of the Voivodeship Administrative Court. NSA also confirmed that the delicje biscuit cannot be protected as a 3D shape trade mark. The disputed trade mark, which is a faithful reproduction of a biscuit, serves to designate only these biscuits, as in fact it could not serve to designate other goods and types of confectionery bakery products. The exclusion of the registration of such trademarks as reproductions of the biscuit in question in its full form, shape and colours reflects the legal objective that individuals may not use the registration of a mark to obtain or renew exclusive rights in technical solutions.

It is only a pity that the NSA judgment was not handed down sooner, as a huge mess has been created in the market. Several enterprises were banned from producing delicje biscuits because of the registration of the trade mark R.116211. Some of these enterprises did not stand up to the experiment of checking whether the judges of common courts in Poland have sufficient knowledge of intellectual property law.

We kindly invite you to our PUBLICATIONS section, which describes the successes and failures of Polish entrepreneurs involved in the production of the world-famous jaffa cakes known in Poland as delicje.