Case number: C04212809 (PAC-0211/2012)
Court: The Chamber of Civil Cases of the Supreme Court of the Republic of Latvia
Parties: Czech company „POLDI Hutte s.r.o.” v. Patentservis Praha
Date: 12 April 2012
IP RIGHT(S) Trade marks
NORMS Arts. 4, 32(1), 32(5) Latvian Law on Trade Marks and Indications of Geographical Origin (1999), Arts. 73, 74, 128(2)(2) Latvian Civil Procedure Law.
The claimant brought a claim to the court against Patentservis Praha regarding revocation of a trade mark „POLDI STEEL” on the grounds that the trade mark had not been put to genuine use within a continuous period of five years. The registered proprietor of the trade mark was Czech Republic’s company „Metallurgical factory „Poldi””, but it had gone bankrupt and had been removed from the commercial register. The claimant was of an opinion that at these circumstances it could bring the claim against Patentservis Praha which was indicated as the representative of the proprietor of the trade mark in the database of internationally registered trade marks. Patentservis Praha objected to it, pointing out that it could not be a defendant in the proceedings, because it was neither the proprietor of the trade mark, nor the representative of the already non-existent proprietor of the trade mark.
DAMAGES AWARDED -
The case concerns the issue of the right defendant in the proceedings on revocation of a trade mark: whether the claim can be brought against the former representative of the proprietor of the trade mark in the situation where the proprietor of the trade mark is liquidated.
The Court decided that the claim had been brought against a wrong defendant, that was the reason for the claim to be dismissed.
The registration data of the trade mark shows that the Czech Republic’s company „Metallurgical factory „Poldi”” was the proprietor of the trade mark „POLDI STEEL”, but Patentservis Praha was the representative of the proprietor (a patent attorney). Solely the proprietor of the trade mark, and not its representative, can have the status of the defendant, because a representative acts on behalf of another person.
When the legal entity, which is registered as the owner of the trade mark, is liquidated and the issue regarding its trade mark has not been solved in liquidation proceedings, the trade mark becomes a property in abeyance. Issues regarding a property in abeyance are to be solved in other proceedings.
The claimant’s position that Article 32 of the Law on Trade Marks and Indications of Geographical Origin give the right to bring the claim in the way the claimant has brought it is not correct, because Article 32(1) contains a substantive law rule (provides for the grounds for revocation of a trade mark), but the way in which the substantive law norms are put into effect is set by procedural law rules – Articles 73, 74, 128(2)(2) of the Civil Procedure Law and to some extent Article 32(5) of the Law on Trade Marks and Indications of Geographical Origin. These rules expressis verbis provide for court proceedings based on a claim, and such proceedings are not possible without a defendant.
The aim of a claim for revocation of a trade mark is to deprive a person of the exclusive rights to this trade mark. Therefore such claim can be brought solely against the person who owns these rights. According to Article 4 of the Law on Trade Marks and Indications of Geographical Origin a representative (in this case – a patent attorney) is not entitled to ownership of the exclusive trade mark rights.
The Court explains that only the proprietor of a registered trade mark can be the defendant in the court proceedings regarding revocation of this trade mark, and the claim may not be brought against the patent attorney, even if the proprietor of the trade mark has been liquidated.