Copyright law, case I C 471/16

April 22nd, 2016, Tomasz Rychlicki

Niezależny Samorządny Związek Zawodowy “SOLIDARNOŚĆ” (Independent Self-governing Trade Union “Solidarity”), the owner of the figurative European Union trade mark EUTM no. 014026454, sued Czesław Mozil, a Polish singer known also as Czesław Śpiewa (Czesław sings), for the infringement of copyrights and personal interests. Mr. Mozil has recorded and published a song and a TV clip entitled “Nienawidze Cię Polsko” (I hate you Poland) in which the well-known and iconic “SOLIDARNOŚĆ” logotype was also presented. NSZZ “SOLIDARNOŚĆ” demanded 500.000 PLN of compensation.

The District Court in Kraków in its judgment of 8 April 2016 case file I C 471/16 dismissed the case. The Court held that the logo was used in the video as a symbol of Poland and as a Polish identity, and not as a logotype that identifies a trade union, so there was no infringement of personal rights. Any attempts to limit forms of artistic expression would violate the constitutional principle of freedom of artistic expression. The judgment is not final.

Procedural law, case III CZP 102/15

March 25th, 2016, Tomasz Rychlicki

The Supreme Court in its order of 23 March 2016 case file III CZP 102/15 answered important questions related to minutes of hearing that were recorded as electronic/digital versions. The Regional Court decided a case related to payment, while some doubts as to interpretation of law related to recording of minutes and evidence, arose. The Supreme Court held that the transcription of the minutes that were recorded as sound and video is not an official document according to the provisions of the Civil Proceedings Code – CPC – (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments, and as such cannot be used for findings related to court’s session. If the minutes recorded as audio and/or audio and video do not allow to determine the content of evidence, the Court has to repeat an action related to this step. On an appeal, there is no need for the applicant to indicate a specific part of the sound recording (or video and audio) that relates to action of taking an evidence.

Personal interest, case I ACa 544/15

March 17th, 2016, Tomasz Rychlicki

The Appeallate Court in Warsaw in its judgment of 12 January 2016 case file I ACa 544/15 decided a case of a person who offers legal assistance to entities who have received the payment order, and also writes articles and tips describing among other things, business debt collection companies and their activities. These articles were published online. The plaintiff in this case, one of such companies, felt that content of defendant’s posts infringed its personal interest – the company name. The defendant was found liable in first instance, however, the judgment was overturned on an appeal. The Court held that the District Court did not perform comprehensive assessment of the evidence.

The Appeallate Court did not agree that printouts from a website could serves as a private document according to the provisions of Article 245 of the Civil Proceedings Code – CPC – (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments. A private document is proof that the person who signed it, made a statement contained in the document. This means that inherent feature of this type of evidence is the signature. The evidence provided by the plaintiff did not contain a signature. The CPC does not provide an exhaustive list of what can be deemed as evidence in civil proceedings. As evidence can serve documents (official and private), testimonies of witnesses, expert opinions, inspection, hearing the parties. Moreover, based on the provisions of Article 308 § 1 of the CPCP, the Court may also admit movies, television series, photocopies, photographs, plans, drawings and CDs or audio tapes and other devices that store images or sounds, as evidence. The Court ruled that prints from websites are not a private document within the meaning of Article 244 and 245 of the CPC. However, such prints may be considered as “another type of evidence” within the meaning of Article 309 of the CPC, as the CPC does not provide an exhaustive list of evidence, and it is acceptable to use any source of information about the facts relevant to the outcome of the case, and as evidence may serve any legally obtained media or information of the facts. See “Procedural law, case I CSK 138/08“. Plaintiff’s claims and submitted evidence suggested that the claimant saw defendant’s posts on a web site and later saved it in its own web browser. In this way the Company has presented to the court only copies of files that were posted on a website, and not, as erroneously the District Court stated, printouts from the website maintained by the defendant. The Court pointed out that there are plenty of ways to modify the content of a website. The Appeallate Court decided that the plaintiff has submitted evidence of low credibility, since they did not provide information that their content was corresponding to was actually visible on the screen while a website with defamatory content was accessed. The Court found that it was also not known when the plaintiff has saved the content of a website, as the date of saving process was not indicated, and as the date the violation of personal rights was also not mentioned.

Personal interest, case I ACa 142/15

February 17th, 2016, Tomasz Rychlicki

The Appeallate Court in Warsaw in its judgment of 16 December 2015 case file I ACa 142/15 decided a case of a Polish rockman who sued a tabloid newspaper for publishing online article that infringed his personal interests. The Court found the journalist and author of the article liable and ordered him to publish apology and to pay proper compensation. However, the Court dismissed the claim that would order the publisher to remove the article from newspaper’s website. The Court ruled that the role of the judicial authorities is not to participate in the falsification of history by ordering the removal from the public sphere of all traces of publications recognized in the past by the final judicial decisions as unjustifiable attack on the good name of individuals. Accordingly, a proportional and adequate form of protection for the plaintiff would by be amending online defamatory publications with a relevant footnote, comment or link to information about the outcome of the proceedings.

Access to public information, case I OSK 2093/14

November 9th, 2015, Tomasz Rychlicki

The ePaństwo Foundation requested the President of the Supreme Court to disclose information on agreements entered between the Supreme Court and the commercial publishers of case-law of the Supreme Court. First, the President refused to initiate proceedings in this case. The Foundation filed a complaint against such order. The Voivodeship Administrative Court in its judgment of 10 January 2012 case file II SA/Wa 2259/11 repealed it, and the President filed a cassation complaint that was dismissed by the Supreme Administrative Court in its judgment of 11 September 2012 case file I OSK 916/12. The First President of the Supreme Court in its letter of 6 December 2012 informed the Foundation that the requested information is not public. The Foundation filed a complaint against the inactivity of the President. The Voivodeship Administrative Court in its judgment of 19 February 2014 case file II SAB/Wa 443/13 obliged the President to consider the request. The President filed a cassation comaplaint.

The Supreme Administrative Court in its judgment of 30 September 2015 case file I OSK 2093/14 dismissed it and ruled that the First President of the Polish Supreme Court has to disclose the requested information. In the meantime, someone else has obtained all the requested agreements and made their copies available online.

Copyright law, case SK 32/14

July 26th, 2015, Tomasz Rychlicki

The Polish Constitutional Tribunal in its judgment of 23 June 2015 case file SK 32/14 ruled on the unconstitutionality of Article 79(1)(3)(b) of the ARNR that provided treble licence fee for culpable infringement. The Tribunal held that this provision violated the right of ownership and the principle of equality under the law, by disproportionately burdening copyright infringer in relation to infringers of other rights.

Trade mark law, case II GSK 371/14

April 10th, 2015, Tomasz Rychlicki

On 5 May 2010, PLAY Brand Management Limited applied to the Polish Patent Office for the right of protection for a single color trade mark Z-369967 defined in PANTONE scale as 2627C, for goods and services in Classes 9, 35 and 38.

The Polish Patent Office refused to grant the right of protection and decided that the applied sign was not inherently distinctive in relation to communications services for mobile phones, and the applicant has not demonstrated sufficiently that the mark has acquired distinctivenes through use. PLAY submitted request for re-examination of the matter. The PPO ruled that the sign in question may serve as a trade mark, since it was applied graphically and identified using the code recognized at international level, i.e. Pantone number. Such a figurative representation of a single color is in line with the requirements set for a designation that in order to fulfill its function as a trade mark must be clear, precise, complete in itself, easily accessible, understandable, fixed and objective. However, while analyzing the distinctiveness of the applied trade mark in concreto, the PPO stressed that, according to settled case-law, the essential function of a trade mark is to guarantee to the consumer or end user the identity of the origin of the designated goods or designated services, by allwowing him to distinguish the goods or services from the goods or services of different origin. The goal of distinctiveness of a trade mark is to provide a given sign with such features that in the minds of market players they will clearly indicate that the product (or service) marked in this way is derived from the specific entity. Therefore, the attention sould be paid to the customary use of the trade mark, as a designation of origin in the specific sectors, as well as the perception of relevant consumers. In the opinion of the PPO when it comes to color per se, the existence of distinctiveness (without any prior use) is possible only in exceptional circumstances, in particular, when the number of goods or services for which the trade mark was applied for is very limited and the relevant market is very specific. Those conditions must be interpreted in the light of the public interest, which is based on the fact that the availability of colors cannot be unduly limited for all other entrepreneurs. The PPO noted that the modern technology allows to generate an almost infinite number of shades of each color, but in assessing whether they differ from each other, one should take into the perception of a relevant group, and therefore the average consumer. The number of colors that people are able to actually identify, is small, therefore the number of colors available as potential trade marks that would allow for distinguishing the goods had to be regarded as very limited. Moreover, the market for mobile services is not narrow and specific. Such market does not only cover telecom operators, but it is a collection of current and potential buyers of a product or service, respectively, its size depends on the number of buyers that express interest in all products, with an adequate income and availability of products for purchase. Market size is a characteristic that describes the quantitative state of the market at a given time in number of consumers (users) of a given type of goods or services. The PPO stated that the scale of Pantone, as the RAL or CMYK scales, is a very precise tool used to describe the color, but little practical from the standpoint of conditions of a normal trade and market turnover. The description of the Pantone color will not be a sufficient indication for the average consumer. The PPO also decided that less than four years (the company started its operation in 2007, and market survey evidence was conducted in 2011) could not be considered as a sufficient period to establish that the sign was in long-term use. In the context of proving that the sign has acquired secondary meaning, such time was certainly too short. PLAY Brand Management filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 9 October 2013 case file VI SA/Wa 1378/13 dismissed it. The Court ruled that the PPO properly examined all the evidence material and properly justified its decision. The VAC as the PPO relied on the opinion of legal commentators and the so-called “color depletion/exhaustion” theory. According to this concept, the number of colors that the human eye is able to recognize is small and limited. Therefore, none of the colors should be subject to anyone’s “ownership”, or generally speaking – the exclusive right, and these colors should be keept in the public domain, and therefore freely available for all entrepreneurs. The theory of shades’ confusion support the first one. The second provides that human perception is so limited that the average consumer is not able to distinguish between a large number of shades of different colors. Applying both theories to present commercial realities it should be borne in mind that the majority of trade marks exists in an environment where decisions on the purchase of goods or use of services are made hastily, without much hesitation on the part of consumers. It is difficult to expect that consumers will conduct an analysis and comparison of similar shades of color, and on this basis, they will be associating the product with its origin. The Court also agreed that the acquired distinctiveness has not been proven. Surveys were conducted in a group consisting of 1000 respondents who use mobile phones and thus who should have knowledge about the market and mobile network operators. However, these people differently responded to the two questions: i) with which mobile operators’ brands do they associate the color, and ii) with which brands do they associate the color.
For the first question, 59% of respondents indicated PLAY as the operator, and only 11% respondents of the same group associated the color with PLAY while answering the second question, although the results should be concurrent, because the second question has not been addressed to random group of people, but a group of people who use mobile services. PLAY Brand Management filed a cassation complaint.

The Supreme Administrative Court in its judgment of 23 March 2015 II GSK 371/14 dismissed it.

Personal interest, case XXIV C 607/13

March 30th, 2015, Tomasz Rychlicki

Maciej Strzembosz is a Polish film producer, screenwriter, director and the President of the Polish Audiovisual Producers Chamber of Commerce. In his statements regarding Polish copyright law ammendments, free culture, market regulatory Mr. Strzembosz used very personal arguments against Igor Ostrowski, who is a renown lawyer and the co-founder of The Projekt: Polska Association and Centrum Cyfrowe, and Alek Tarkowski, a sociologist and the coordinator of the Polish branch of Creative Commons. Mr. Ostrowski and Tarkowski both being tired of arguments such as “Ostrowski’ Google’s agent” or “Tarkowski ideologist of thievery on the Net” decided to file a civil suit against Mr Strzembosz claiming infringement of personal interest.

The District Court in Warsaw logged this proceedings under case file XXIV C 607/13, however it has never reached a judgment since the parties decided not to continue their legal dispute before the Court.

Copyright law, case K 15/13

March 27th, 2015, Tomasz Rychlicki

The Polish Constitutional Tribunal in its judgment of 17 February 2015 case file K 15/13 held that the contested by the Ombudsman provisions of Article 115 section 3 of the Polish Act of 4 February 1994 on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych), published in Journal of Laws (Dziennik Ustaw) No. 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No. 90, item 631, with subsequent amendments, is in conformity with Article 42 paragraph 1 of the Polish Constitution.

Art. 115. 1. Any person who usurps the authorship or misleads as to the authorship of all or part of the work or performance of another shall be liable to a term of imprisonment of up to 3 years, restriction of freedom or a fine.
2. Any person who, without mentioning the creator’s name or pseudonym, discloses the work of another either in its original or in a derived form, or a performance, or who publicly distorts a work, a performance, a phonogram or videogram or a broadcast, shall be liable to the same penalty.
3. Any person who, with a view to making a material profit in a manner other than that specified in paragraph 1 or 2, infringes the rights of the author or neighboring rights within the meaning of Articles 16, 17, 18, 19 paragraph 1, art. 191, 86, 94 paragraph 4 or article 97 or without performing his duties as mentioned in article 193 paragraph 2, 20 paragraphs 1-4, 40 paragraph 1 or paragraph 2, shall be liable to a term of imprisonment of up to one year, restriction of freedom or a fine.

The Ombudsman argued that the scope of criminal penalties set by provision of article 115(3) of the ARNR are too broad and unduly limits the rights and freedoms. The fundamental principle of criminal law – nullum crimen sine lege, is included in the article 42(1) of the Polish Constitution. The definition of a crime shall be strictly construed and shall not be extended by analogy.

Article 42
1. Only a person who has committed an act prohibited by a statute in force at the moment of commission thereof, and which is subject to a penalty, shall be held criminally responsible. This principle shall not prevent punishment of any act which, at the moment of its commission, constituted an offence within the meaning of international law
2. Anyone against whom criminal proceedings have been brought shall have the right to defence at all stages of such proceedings. He may, in particular, choose counsel or avail himself – in accordance with principles specified by statute – of counsel appointed by the court.
3. Everyone shall be presumed innocent of a charge until his guilt is determined by the final judgment of a court.

The Constitutional Tribunal held that the standard of definiteness of legal regulations, that is also included in the provisions of Article 42, does not preclude a margin of regulatory discretion by the state, within the criminal law. Therefore, this standard in the field of criminal regulation, although imposing higher requirements for the legislature, does not require clarity and communication to express prohibition or a legal order, to the absolute extent (judgment of the Constitutional Tribunal of 28 January 2003 case file K 2/02). The principle of definiteness (specificity) of the criminal law does not preclude the legislature to use unspecified or evaluative terms if their referents can be determined (judgment of the Constitutional Tribunal of 23 January 2003 case file K 2/02). In the case of the challenged provision of copyright law, the reference by the legislator to undefined concepts should be regarded as justified by the nature of copyright regulations, which are applied in dynamic and changing conditions in the era of new technologies. Thus, the legislator used the construction of the so-called substantive offence, i.e. an offense, which consists of the action of the offender and the result of the offense that is specified in the criminal law. In simple terms, it’s such a crime, which is determined the occurrence of a specific effect, and not the manner in which the offender caused that effect.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

E-signature, case I OPS 10/13

March 27th, 2015, Tomasz Rychlicki

The Supreme Administrative Court in its order of 12 May 2014 case file I OPS 10/13 held that the current legal status of administrative court proceedings, as defined in Article 46 § 1 pt. 4 of the Polish Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments, does not allow for filing to a court a letter that is only bearing an electronic signature of a party. Such letters must bear handwritten signature. This includes a situation of filing documents through public administration body, by means of electronic communication.

Copyright law, case I Ns 700/12

March 27th, 2015, Tomasz Rychlicki

Henryk Goldszmit, better known as Janusz Korczak, has died in the Nazi-Germany maintained concentration camp Treblinka in 1942. The very popular Old doctor was also the author of many children books. The copyrights to his literary legacy are governed by the Polish Book Institute. The exact date of his death is not precisely known, however, it was determined by historians as on 6 August 1942, but for obvious reasons no eyewitness could confirm that during court proceedings that were held after the war. The County Court in Lublin in its order of 30 November 1954 case file Ns 2460/53 considered Korczak’s death on 9 May 1946. Almost 4 years after the date on which it actually happened. Therefore, according to the provisions of the Polish copyright law, Korczak’s works will be available in the public domain as of January 1, 2017.

The Modern Poland Foundation operates the school library project called Wolne Lektury (Free Readings). These e-books are freely available on the Creative Commons licenses. Dissatisfied with the fact that Korczak’s works are not yet available in the public domain, the Foundation decided to submit to the Regional Court Lublin-Zachód the application case file I Ns 700/12 for a declaration of death, seeking to establish a proper date on 6 August 1942. This day is mentioned in a number of publications as the day of deportation of Korczak and his students to the Nazi-German camp in Treblinka.

The Regional Court in Lublin in its judgment of 27 March 2015 case file I Ns 700/12 ruled that Janusz Korczak died in 1942 and not 1946. The Court decided that the most likely date of death was August 7, 1942. The judgment is not final yet.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Unfair competition law, case VI ACa 1478/13

March 26th, 2015, Tomasz Rychlicki

Two Polish companies were involved in dispute regarding invalidation of a patent right. During the proceedings before the Polish Patent Office, one of the parties provided evidence that included internal documents and secret materials of the other party. The company filed a civil court action claiming unfair competition delict/tort.

The Appeallate Court in Warsaw in its judgment of 13 May 2014 case file VI ACa 1478/13 ruled that patent invalidation proceedings, like any other litigation between entrepreneurs – even if it is connected with the economic activity of such entities, cannot be regarded as performing or conducting economic/business activities. This results in a lack of responsibility of the party of the proceedings before the Patent Office in respect of an act of unfair competition, even if in the course of that proceedings such party conducted activities that would normally be deemed as acts of unfair competition.

Trade mark law, case II GSK 2803/14

March 20th, 2015, Tomasz Rychlicki

The Polish Patent Office dismissed the request to invalidate the right of protection for the word trade mark PHYTOLYZIN R-195394. The request was filed by Dr. med. Matthias Rath, the owner of the earlier International trade mark registration LyCin IR-813677. The Voivodeship Administrative Court in its judgment of 15 November 2012 case file VI SA/Wa 790/12 dismissed a complaint filed against this decision, and the Supreme Administrative Court in its judgment of 3 July 2014 case file II GSK 492/13 dismissed a cassation complaint filed by Dr. med. Matthias Rath.

On November 2014, Mr Rath filed before the Supreme Administrative Court a request for the annulment of previous proceedings, and a motion to reopen the proceedings and to issue an award of costs in accordance with prescribed procedure and also submitted as a supplement to the cassation complaint the decision of the Office for Harmonisation in the Internal Market of March 2013 on invalidity of the trade mark PHYTOLIZIN along with its certified translation into Polish. Mr Rath argued that the proceeding should be deemed by the Court as invalid because as the representative of the trademark owner appeared an attorney who submitted at the hearing a substitution of PoA as signed of July 2014. However, the power of attorney was invalid, because it was issued on behalf of another company, which was not a party to the proceedings.

The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2803/14 rejected the request and held that such motion is allowed if a party does not have the capacity and standing to bring proceedings or was not properly represented or if as a result of violations of the law was deprived of possible actions. However, the reopening cannot be requested if, before the judgment becomes final the inability to act ceased, the lack of proper representation was raised by way of objection, or a party has confirmed all procedural actions. These pleas and arguments for reopening, however, did not apply to Mr Rath. The argument for reopening of the proceedings was based on lack of adequate representation refered to the representation of the trade mark owner, not Mr Rath, and such a request may only be raised by a party that was not properly represented.

Trade mark law, case II GSK 2037/13

February 23rd, 2015, Tomasz Rychlicki

The Polish company FARMINA Sp. z o.o. filed before the Polish Patent Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark FARMONA Waliczek R-190461 registered for goods in Classes 3 and 5. Farmina argued that the trade mark FARMONA Waliczek is similar to its word trade mark FARMINA R-98950 also registered for goods in Classes 3 and 5. Laboratorium Kosmetyków Naturalnych FARMONA Sp. z o.o., the owner of a contested registration, argued that both signs are different, and as such there is no likelihood of confusion. FARMONA Sp. z o.o. also requested the PPO to decided on the lapse of the right of protection for the trade mark FARMINA R-98950 for goods in Class 3. In its letter of May 2010, FARMONA withdrew all previous arguments made by a former attorney in the case and has requested the PPO not to take into the account of all the evidence submitted. FARMONA argued that the goods are not similar, and from the range of over 300 prodcts, only 3 are distibuted in pharmacies, but only in those who have a cosmetic department. FARMONA argued that the parties operate in other industries. FARMONA Waliczek is engaged in the production of natural cosmetics offering a series of body care products, facial hair, as well as professional cosmetics for beauty salons and spas. FARMINA, however, claims to be a producer of drugs.

FARMINA argued that the PPO should dismiss the request to decide on the lapse of the trade mark. The Company claimed that not only it produces goods for pharmaceutical purposes, but also products for the purposes of care, which according to some people may belong to Class 5 of the Nice Classification. FARMINA stated that it uses its trade mark for the goods associated with personal care such as soaps, gels, creams, cosmetics and hair care products. The Comapny indicated that, in principle, all cosmetics contain ingredients that cause skin regeneration and it is debatable whether or not they should be considered as therapeutic agents or care products. The Opponent also argued that, due to the fact that it uses the trade mark FARMINA for goods similar or complementary to the perfumery products, such use should be considered as use of that mark for goods in Class 3 of the Nice Classification.

The Polish Patent Office noted that the right of protection for a trademark may not be invalidated on a sole ground that the trademark is similar to an earlier trademark, where the latter has not been genuinely used. This argument that the sign has not been genuinely used may only be raised when accompanied by a request for declaring the right of protection lapsed. The case should be examined jointly with the request for invalidation. The PPO decided that the trade mark FARMINA was not genuinely used for perfumery and ruled that the right of protection lapsed as of November 2002. In the opinion of the PPO, the compared trade marks had to be regarded as similar as the dominant elements in the signs are verbal elements FARMINA and FARMONA. These are words of the same length, consisting of the same number of syllables, and which contain the same beginning and ending. These words differ only in the fifth letter. The similarities are not excluded by the use of another verbal element, the word “Waliczek”, because this element is the name of the owner of the company, thus, this word refers in its content to the information that may suggest the average person, a person who organizes and operates a business or businesses, the licensee, or the founder of the company, etc. The PPO invalidated the right of protection for the trade mark FARMONA Waliczek for the following products in Class 5: antisepsis, balms for medical purposes, biological preparations for medical purposes, enzymes for pharmaceutical purposes, enzymes for medical purposes, tea with herbs, medicinal ointments for pharmaceutical use, preparations with microelements for humans and animals, tinctures for medical purposes, dietetic beverages for medicinal purposes, oils for medicinal purposes, analgesics, laxatives, vitamin supplements, extracts for medicinal purposes, medicinal herbs, candies medicinal purposes, syrups for medical use, dietetic foods for medicinal purposes, gelatin for medical purposes. Both companies filed complaints against this decision.

The Voivodeship Administrative Court in its judgment of 15 April 2013 case file VI SA/Wa 2177/12 joined the cases in one proceeding. The Court found no reason to revoke the decision of the Polish Paten Office, and dismissed both complaints. The VAC held, inter alia, that according to the established legal doctrine (opinions presented by Professor M. Kępiński in “Niebezpieczeństwo wprowadzenia w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych”, published in Zeszyty Naukowe UJ 28/1982, pp. 17,18), in the short signs (words including up to 5 letters), just one letter difference should exclude the similarity. For the signs of the average length (up to 8 characters) at least 2 letters should be different to decide on dissimilarity. Again, both companies filed cassation complaints.

The Supreme Administrative Court in its judgment of II GSK 2037/13 dismissed both.

Trade mark law, case II GSK 2062/13

January 30th, 2015, Tomasz Rychlicki

Transformation and economic changes in Poland after 1990 left a lot of problems in the case of trademarks that belong to the state-owned enterprises. The case described below is one of many examples.

PPHU HERBAPOL spółka z ograniczoną odpowiedzialnością requested the Polish Patent Office to invalidate the word-figurative trade mark Herbapol Wrocław R-179901 that was registered for Wrocławskie Zakłady Zielarskie HERBAPOL Spółka Akcyjna for goods in Classes 3, 5, 30, 31 and 32. PPHU HERBAPOL argued that the questioned registration was applied for in bad faith and this sign is similar or identical to registration owned by PPHU HERBAPOL such as the word trade mark HERBAPOL R-00312 or the word-figurative trade mark HERBAPOL R-00356. PPHU HERBAPOL stressed that the goods are identical, are intended for the same consumers, on the same territory. The Company argued that according to the provisions of the Polish Industrial Property Law and regulations governing the use of Herbapol collective trade marks, the right to use this sign should be entitled only to PPHU HERBAPOL, and all affiliated entities, which also include HERBAPOL S.A., and the registration of an individual trade mark identical or similar to a collective trade mark Herbapol may only be made for the benefit of the PPHU HERBAPOL. Therefore, HERBAPOL S.A. obtained the right of protection “illegally”. It was emphasized that the right for the protection of the collective trade mark does not grant exclusivity to use the sign to one entity, because it is reserved for the organization with the right to its use by the organization and all of its affiliated entities. HERBAPOL S.A. is both a shareholder of PPHU HERBAPOL and the entity authorized to use the collective trade mark. Therefore, HERBAPOL S.A. was fully aware that its trade mark application was made without the knowledge and consent of PPHU HERBAPOL, which infringed PPHU HERBAPOL’s right of protection for the collective trade marks.

HERBAPOL S.A. requested the PPO to dismiss the case. The Company presented a genealogy of the transformation of the state owned company that was originally the sole owner of the Herbapol trade mark, and argued that PPHU HERBAPOL derives its priority to Herbapol sign “secondarily”. In this context, and bearing in mind that PPHU HERBAPOL does use the sign and not produce any goods under the name Herbapol, PPHU HERBAPOL is not the legal successor of the state enterprise. Consequently, HERBAPOL S.A. argued that PPHU HERBAPOL lacks of legal interest in seeking the invalidation of the disputed right of protection, and PPHU HERBAPOL did not object to the use of questioned sign in five years.

The Polish Patent Office invalidated the right of protection. The PPO decided inter alia that compared signs are similar in all three aspects, and the goods are identical or similar. HERBAPOL S.A. filed a complaint against this decision and argued that currently, between all companies included in PPHU HERBAPOL, there are no capital ties, on the contrary, they are in the classic competitive relationship, therefore as of the 1993/1994 they all began to use geographical designation like Wrocław, Poznań or Lublin alongside the sign Herbapol. Since then, HERBAPOL S.A. incurred large spending on advertising of its products thus the recipients of its products were able to distinguish the mark from other manufacturers that used the sign Herbapol. For these reasons, the HERBAPOL S.A. believed that its designation obtained independent and individual market position. HERBAPOL S.A. also argued that it has acquried the right to use Herbapol sign before PPHU HERBAPOL, because since 1959, it has used the word Herbapol in the company name. The state owned company Zjednoczenie Przemysłu Zielarskiego “Herbapol” in Warsaw applied for the right of protection for Herbapol trade mark in 1974, however in 1982 the company was dissolved and in its place another entity was created. Therefore, the right of protection has expired in 1984. PPHU HERBAPOL was founded in 1989 and in the same year the Company requested the Polish Patent Office to change the owner of all Herbapol trade marks in the Register kept by the PPO. From the foregoing, HERBAPOL S.A. brought the conclusion that the right to Herbapol sign should not derived by PPHU HERBAPOL from the “material priority”, but its right has kind of secondary nature.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 June 2014 case file VI SA/Wa 101/13 dimissed the complaint and ruled that because this case involved a collective trade mark, the Court had to indicate the nature of this type of sign. The main conclusion is that the right to collective trade mark belongs to the organization, but the organization’s affiliated entities are entitled to use the sign. The VAC cited recent judgment of the Supreme Administrative Court of 27 June 2007 case file II GSK 83/07 in which the SAC held that a collective trade mark serves many entities, although the right of protection is granted for a specific organization. The right to a trade and the right to use it separated. This institution should be distinguished from the joint right of protection, which is related to an individual trade mark, where such sign is intended for concurrent use by several undertakings who have jointly applied for the protection. In other words, the right of protection for a collective trademark does not grant exclusive rights to the use the sign by a single entity, but it’s owned by one organization, and it can be used by many entities associated in this organization. However, only the organization may be awarded the right, sell it, waive this right or request a change in the Register. Therefore, HERBAPOL S.A. infringed on registrations owned by PPHU HERBAPOL. With regard to the argument that PPHU HERBAPOL was not genuinely using the Herbapol collective trade mark, the Court noted that the organization may independently use the collective trade mark, however, the use of such sign only by entities affiliated also fulfills the conditions of trade mark use.

HERBAPOL S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 9 January 2015 case file II GSK 2062/13 dismissed it.

Trade mark law, case II GSK 1096/13

December 8th, 2014, Tomasz Rychlicki

Dansk Supermarked A/S, the owner of word trade marks NETTO and word-figurate trade mark NETTO R-114747 filed to the Polish Patenet Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark NETO R-227788 that was registered for the goods in Classes 7, 11, 19, 20, 21 and services in Classes 35 and 42. The opponent pointed out that the services in Class 35 are identical to these that NETTO trade marks were registered for, and are directed to similar consumers through similar channels. Furthermore, the services in Class 35 are complementary to the goods and services from other classes. Dansk Supermarked A/S also argued that the compared trade marks are very similar. The dominant element of the sign in question is the word “NETO”, which is crucial for the perception of the character, and the figurative element is of secondary importance. The word “NETO” is entirely contained in the opposing signs, therefore the compared trade marks are “substantially similar” and that the average consumer may mistakenly associate the signs, and there is a real risk of misleading the public as to the origin of goods and services.

The owner, Polish company Galicja Tomaszek sp. z o.o., argued that the chain stores NETTO offer both food and industrial goods, and in this case, the opposing sign is used for the determination of the store itself or chain of stores. In contrast, the disputed mark is used to designate the goods.

The Polish Patent Office invalidated the right of protection. The PPO found that trade marks at issue are similar, and pointed out that all the goods in Classes 7, 11, 19, 20 and 21, are covered by the services included in class 35, and relate to the sale of these goods. Galicja Tomaszek sp. z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 19 December 2012 case file VI SA/Wa 1808/12 dismissed it. The Court ruled that the term “providing a service” or “service” itself have no material content in the sense that the sign may be placed only on the elements used to provide a particular service, while a trade mark can be assigned to the goods, due to their material nature, and the consumer may directly related to the goods to which a sign is assigned. The similarity of the goods/services happens when the goods (services) covered by the earlier mark and the goods (services) covered by the later mark have the same purpose and method of use. Galicja Tomaszek sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 18 September 2014 case file II GSK 1096/13 dismissed it.

Personal interests, case I C 988/13

September 26th, 2014, Tomasz Rychlicki

The District Court in Wrocław in its judgment of 27 March 2014 case file I C 988/13 ruled that the provisions Article 15 of the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), published in Journal of Laws (Dziennik Ustaw) No. 144, item. 1204 with subsequent amendments, exempts ISPs from the preventive moderation (approval) of comments posted by website and forum users.

The entity, which provides services specified in art. 12 – 14, shall not be obliged to monitor the data referred to in art. 12 – 14, which are transmitted, stored or made available by that entity.

The Court ruled that the lack of implementation of a control and content filtering system for profanity comments cannot prejudge the responsibility of the defendant, because preventive censorship would lead to infringement of the right to freedom of expression. The decision on the scope and priority of protected and conflicting rights, while accepting the obligation to adopt preventive control of information posted on a website and bonding the liability of the provider with the lack of such system, would constitute an excessive interference in the need of protection for different rights and interests, while simultaneously threatening freedom of expression.

Personal interest, case I CSK 542/13

September 17th, 2014, Tomasz Rychlicki

Leszek Czarnecki and his wife Jolanta Pieńkowska sued Grupa o2, the owner and publisher of pudelek.pl website. Mr Czarnecki claimed that articles posted on this website infringed his personal interests by publishing information about social status and a new home, which was built on a grand scale.

The District Court in Warsaw in its judgment of 24 October 2011 case file IV C 1639/10 found the publisher guilty. The court held that the content of articles undermined the prestige of the spouses as they are people commonly known, reputable and rich. The Court ruled that the amount of compensation is up to 200.000 PLN, because, as the judge assessed the higher the prestige of imputed persons is, the higher should be the economic sanction.

Grupa o2 appealed. The Appeallate Court in Warsaw in its judgment case file VI ACa 73/12 ordered owners of both sites to issue an apology but reduced the amount awarded, and ruled that the company has to pay 20.000 PLN for social purpose. Both parties filed cassation complaints.

The Supreme Court in its judgment of 12 September 2014 case file I CSK 542/13 repealed the contested judgment and returned the case for further reconsideration. The reasons were based on procedural grounds. It turned out that the Appeallate court has assessed the evidence, but it did not find its own conclusions. The Court also did not rule on the relationship between comments posted by Internet users and the provisions of Polish Act on Providing Services by Electronic Means that exclude the liability of the ISPs.

Trade mark law, case VI Kp 84/14

September 1st, 2014, Tomasz Rychlicki

The Regional Court in Szczecin in its decision of 18 June 2014 case file VI Kp 84/14 ruled that the provisions of Article 305 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, that provides that anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years, does not apply to services for which a trade mark was registered for. The Court noted that the definition of goods in the IPL also covers services, however, incriminated actions that are subject to the provisions of Article 305 of the IPL, were defined very narrowly and does not apply to trade mark use in advertising services. According to the Court, this view is shared by legal commentators who agreed that the protection provided in Article 305 of the IPL only covers the rights to mark the goods by the entitled person. Based on the principle of guarantee in the criminal law, the Court did not agreed for the analogy in order to extend the protection. The principle of the guarantee of law provides that those who do not violate the rules of law will not suffer negative consequences from the state. This function is of particular importance in the system of criminal law. By establishing sanctions for violation of, or for exposure of certain goods (criminalization) the legislator expresses its will to secure respect for such interests (the protective function of law), but also ensures (guarantee function of law) those who did not commit a criminal act, that they will not be held criminally responsible. The Court added that due to the nature of the service, it can not be introduced to the market, or be subject to market turnover.

Copyright law, case I ACa 1663/13

August 19th, 2014, Tomasz Rychlicki

During a political campaign in 2011, Dariusz Dolczewski posted a movie clip on his profile on Facebook in which he used images of young politicians from other party. This clip had a background music taken from a rap song “Suczki” (Bitches) that was recorded by Dominik Grabowski, known as Doniu. Grabowski sued.

The District Court for Warszawa-Praga in its judgment of 12 July 2013 case file I C 504/12 held that there was copyright infringement and ordered Dolczewski to pay 17.500 PLN compensation. More importantly, the Court ruled that posting a link on Facebook can be also deemed as infringement of copyrighted works. Both parties appealed.

The Appeallate Court in Warsaw in its judgment of 7 May 2014 case file I ACa 1663/13 repealed the contested judgment and held that the politician is not liable for copyright infringement, because since the defendant was not the author of this audiovisual work (the clip), therefore he could not be found guilty for posting a link to such work. The Court also presented a very original conclusions apropos tangible and digital copy of the work. This issue arose in the discussion regarding the provision of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments.

The Court ruled that recording of a work is undoubtedly the moment when one may accept the existence of a song. Traditionally, recording always, according to the provisions of ARNR, was related to the existence of material copy of the work. In the opinion of the Court of Appeal, the so-called “tangible copy theory” must be applied to digital world. First of all, one must realize the essence of digital recording, which forms the basis of operation and content availability on the Internet. The Court noted that the difference between conventional tangible copy and a digital copy is the fact that the data stored digitally may be removed, but such data/information also have physical location on the media, can also be duplicated, but always and at any time on a material substrate in the form of a computer memory, or a recording unit, regardless of how information is stored. Only such solution allows for the use of information. Therefore, the possibility to play a song, whether on a computer or on another device determines the existence of a copy of the work in a tangible form.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Trade mark law, case II GSK 582/13

June 26th, 2014, Tomasz Rychlicki

On 1 February 2007, SMYK GLOBAL ASSETS GmbH filed before the Polish Patent Office an opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465 that was registered for the Polish company NORDIS Chłodnie Polskie Sp. z o.o.

R-174465

SMYK GLOBAL ASSETS, the owner of the word-figurative trade mark SMYK R-151707 registered inter alia for goods in Class 30 such as confectionery and sweets, argued that both signs are similar and may cause consumers’ confusion. The questioned registration was also an attempt to use the trade mark that was known on the market for more than twenty years, and which has won the recognition of customers thanks to significant financial and organizational expenditures. SMYK also alleged violation of the right to the company name.

R-151707

NORDIS argued that the compared signs and the goods are not similar and there is no chance for confusion of potential buyers. The Polish company had applied for this sign in May 2003, because it should serve as a continuation of the word-figurative trade marks SMYK NORDIS NORDIS R-93343 and SMYK R-93586 that both lapsed on July 2003. NORDIS had the right to use all signs with the word elements SMYK and NORDIS, because both lapsed trade marks became the bar for registrations of new similar or identical signs for other entities, for two years after the lapse.

R-93343

SMYK GLOBAL ASSETS replied that the provisions of the Polish Industrial Property Law do not afford the institution of “continuation” of trade marks, and the modified sign does not derive legal force from the earlier marks, and the owner cannot be entitled to rely on the law that no longer exists.

R-93586

In 2008, the PPO dismissed the opposition. SMYK GLOBAL ASSETS decided to file a complaint, and the Voivodeship Administrative Court in its judgment of 20 May 2009 case file VI SA/Wa 2315/08 overturned the decision, and ruled that the PPO has made an invalid interpretation of the provisions of the Polish Industrial Property Law on the similarity of signs and the goods with regard to the likelihood of confusion. The Court found that the semantic analysis lead to the logical conclusion that the concept of the term “ice cream” falls within the term of “sweets”, and hence there exist homogeneity of goods bearing compared signs due to the fact that ice cream are goods of “the same kind” as sweets. The homogeneity of goods follows from the semantic analysis of the concepts and the nature of the goods such as “ice cream” (narrower term) and “sweets” (broader term). The VAC also noted that the word element SMYK that is present in both signs, is also endowed with a similar graphics. The case went back to the PPO for further reconsideration.

On 3 August 2009, NORDIS Chłodnie Polskie Sp. z o.o. requested the Polish Patent Office to decide on the lapse of the right of protection for the word-figurative trade mark SMYK R-151707 in part for goods in Class 30, becuse SMYK GLOBAL ASSETS failed to put this sign in genuine use on the Polish territory. SMYK argued that its trade mark was present on the market among others on candies available in SMYK’s stores that are located in big malls.

On December 2009, the Polish Patent Office decided that the right of protection for the word-figurative trade mark SMYK R-151707 lapsed as of 18 December 2008 in part for goods in Class 30 such as confectionery except chocolate and chocolate products, and candy except chocolate and chocolate products. The PPO also dismissed the opposition against the grant of the right of protection for the word-figurative trade mark lody SMYK NORDiS R-174465. SMYK GLOBAL ASSETS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 20 November 2012 case file VI SA/Wa 397/12 dismissed it. The Court ruled that there was no violation of the company name, because at the time the disputed trade mark was applied, there was no conflict of interest between both parties, because the scope of activities of the two companies was different. SMYK GLOBAL ASSETS has not shown that the registration will disrupt the function of the name of its company, NORDIS manufactures ice cream, while SMYK GLOBAL ASSETS is a producer of items for children, including toys and clothes and was never engaged in the production or sale of ice cream, moreover, the proceedings revealed that NORDIS does not use the sign in a possible colliding area. The Court agreed with the PPO that the trade mark was not applied contrary to law, public order or morality, because this provision, as it was aptly pointed by the PPO, refers to the content or form of how the applied sign is represented. Such contradiction lies in the violation of moral norms, ethics and customs adopted in business. It occurs primarily in the signs of vulgar or offensive content or form. The VAC noted that SMYK might have confused this regulation it with another institution i.e. bad faith. Legal provisions relating to signs applied in bad faith and signs which are contrary to public policy or morality that are included in the Polish Industrial Property Law are separate premises examined in the trade mark application or invalidation proceedings. The Court emphasized that the first condition is associated with the behavior of the applicant, and the second with the sign. SMYK GLOBAL ASSETS filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 May 2014 case file II GSK 582/13 dismissed it.

Trade mark law, case II GSK 1885/12

June 10th, 2014, Tomasz Rychlicki

Polskie Towarzystwo Tatrzańskie (Polish Tatra Society) requested the Polish Patent Office to invalidate the right of protection for the the word-figurative trade mark POL.TOW.TATRZAŃSKIE 1873 R-101381 owned by Zarząd Główny Polskiego Towarzystwa Turystyczno-Krajoznawczego (Polish Tourist and Sightseeing Society). PTT argued that in 1994, the PTTK unlawfully applied for the trade mark in question. It was plagiarized traditional organizational badge of the PTT and at the same time a membership badge and a badge of honor of that Society. This organizational badge with the inscription “Pol. Tow. Tatra of 1873” and the image of chamois, was established in 1922. After the II World War, the Society ceased to function, but it has been reactivated in 1981 in times of Polish People’s Republic. The badge was re-established by the decision of the Chairman of the Committee on Youth and Sports of October 1990 issued according to the provisions of the Polish Act of 21 December 1978 on badges and uniforms, as a PTT’s badge. PTTK argued that the decision was challenged before the administrative bodies and courts.

R-101381

The PPO adjourned the proceedings until the Supreme Administrative Court in its final judgment of 2008 dismissed the cassation complaint against the decision of the Minister of Economy that refused to annull the decision of the Chairman of the Committee for Youth and Physical Culture of October 1990. The PPO invalidated the right of protection. PTTK filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 5 July 2012 case file VI SA/Wa 515/12 annulled the contested decision, and ruled it unenforceable. The Court held that the legal basis for invalidation of the trade mark were the provisions of the Article 8 point 5 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. Under this regulation, the registration of a sign which contains the name or crest of the Polish voivodeship, city or town, a reproduction of a Polish order, badge of honor and a military badge or sign, is unacceptable. Where justified, such a sign may be registered following approval by the competent authority state or the relevant organizational unit. In the filing date for registration of the invalidated trade mark, the Polish Act of 21 December 1978 on badges and uniforms was in force. Article 2 of that Act established three types of badges: a badge of honor, an organizational badge and an occasional badge. There was no doubt for the Court that the PTT has established an organizational badge. Clearly, it was not a badge of honor, because the PTT has not preserved the procedures required for its establishment. In turn, Article 8 point 5 of the TMA introduces inadmissible registration of a sign containing a badge of honor, not organizational badges. The VAC ruled that the PPO has violated the substantive law while deciding this case. PTT filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 May 2014 case file II GSK 1885/12 dismissed it.

Trade mark law, case II GSK 244/13

May 22nd, 2014, Tomasz Rychlicki

On March 2008, the Polish Patent Office has granted to the Politechnika Wrocławska (Wrocław University of Technology) the right of protection for the word-figurative trade mark e e-Informatica R-204692, for goods and services in Classes 9, 16, 18, 25, 35, 41 and 42.

R-204692

Mr Piotr Chlebowski filed the opposition against the decision of the PPO, and argued that he works on the market (in business) under the business pseudonym Informatica, and has been using that term as a company name that was entered in the register of business activity in 2003. He also uses that name within “a website for his Internet domain”. The term Informatica is also used by Mr Chlebowski on business cards, in advertising, invoices and stamps. He argued that the questioned trade mark also violates his personal rights, because he has started the company under the name Informatica. In addition, he also enjoys the copyright to the term “Informatica”, and the use of that name by the Politechnika Wrocławska is also contrary to regulations provided in the Polish Act on Combating Unfair Competition.

Politechnika Wrocławska requested the PPO to dismiss the opposition and argued that the term Informatica cannot be deemed as personal or economic right or interest. There is no unfair competition because the name Informatica does not lead to consumers’ confusion as to the producer of goods or services.

The Polish Patent Office dismissed the opposition. The PPO ruled the Mr Chlebowski is entitled to his full company name, not only to the term Informatica, and the provisions of the Polish Civil Code raised by the opponent relate to the violation of personal interests, and therefore not personal rights. However, the the mere fact that someone applied for a trade mark consisting of a part of the name of another company is not yet an obstacle to the registration. It is required that the registration and use of the trade mark constitutes a violation of the right to the company name. The average consumer will considers the designation as descriptive for the goods and services related to information technology. However, the figurative element – the first letter “e” – plays the dominant role in the perception of the whole trade mark. The registration of a domain name informatica.pl does not create exclusive property rights that are effective against all (erga omnes – absolute rights). The right to use an Internet domain name is the “relative right” based on the contractual obligation that is effective only with respect to the domain registrar. Mr Chlebowski filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 September 2012 case file VI SA/Wa 917/12 dismissed it, and Mr Chlebowski decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 3 April 2014 case file II GSK 244/13 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that a name of enterprise (business or company) belongs to the category of personal and property rights, which are subject to legal protection, and that these rights may be infringed by the use of the trade mark, because the two signs (the company’s name and a trademark) both identify the company. The SAC noted that the VAC relied on provision of the Polish Commercial Code that for many years were no longer in force, and incorrectly stated that Mr Chlebowski, as a natural person conducting his business activities, is not entitled to the company name. While the the Polish legislature has regulated in the Civil Code in Section III titled “Entrepreneurs and their designation” the right to the company name, which is also entitled to an entrepreneur who is a natural person. Thus, in this case occurred primarily a conflict of a right to the company name and the right of protection for a trade mark. The Supreme Administrative Court stated in its previous case-law, that the name of a company (the firm) is used to identify and differentiate entities in legal and economic transactions. It also serves a carrier of certain information about the characteristics and qualities of their activities. Unauthorized interference with the functions of the company name infringes the right to the name. This infringement is not prejudiced by registration of a trade mark that is identical or similar to the name of another company. Exclusive rights to the company name (firm) are not absolute. Their limits are territorial and objective and are based on actual activity of an entity that uses a given name. Only within these limits a collisions between identical or similar company name and trademark may occur. If different fields of business activities of a person (legal or natural) that is entitled to the company name and the proprietor of a trade mark, do not lead to consumers’ confusion with regard to the identity of companies, or such proprietor of the later trade mark is not using the reputation associated with earlier (identical or similar) company name, it is difficult to talk about the collision of these two rights, and consequently an infringement of an earlier right to the company name by the later mark (see: “Trade mark law, case II GSK 31/06” and “Trade mark law, case II GSK 406/08“). Applying these considerations to the present case, the SAC ruled that the VAC should reconsider and establish such facts as from which time Mr Chlebowski had acted in the course of trade under the company, using in addition to his surname a designation Informatica, what was the scope and of that activity and whether there is a risk of consumers’ confusion as to the identity of his company and the owner of a disputed trade mark. As it was already established in the case-law of Polish administrative courts, while finding an infringement of personal or property rights of third parties by a trade mark registration, it does not matter whether there are specific facts of confusion in trade, i.e. consumers’ confusion as to the identity of the company and the sign. It is enough to determine the potential possibility (likelihood) of such confusion, that in case of companies carrying identical or convergent activities, seems inevitable (see the judgment of the Supreme Administrative Court of 30 March 2006 case file II GSK 3/06, published in electronic database LEX, under the no. 197239). While considering this case, the VAC should also pay attention to the unified position of both the Supreme Court and the Supreme Administrative Court expressed in the case law that in case of a collision between a company name and an applied and/or registered trade mark, the priority is given to the earlier right.

Trade mark law, case II GSK 146/13

May 7th, 2014, Tomasz Rychlicki

On September 2007, Mr Jarosław Spychała applied to the Polish Patent Office for the right of protection for the word trade mark LEGO-LOGOS Z-330692 for services in Classes 35, 36 and 41. The PPO informed the applicant that his trade mark is similar to series of signs registered and owned by LEGO Juris A/S. Mr Spychała argued that the applied sign is the neologism derived from the ancient Greek language, and the term LEGO simply means “to read, think or speak”, and the term LOGOS means “learning” in a broad sense. In academic and education circles the term LEGO-LOGOS is associated with a particular form of education in philosophy and in building moral attitudes. The mark is directed at people who wish to explore philosophy and knowledge.

The Polish Patent Office refused to grant the right of protection because the applied trade mark was similar to the word trade mark LEGO R-72961 that was registered with an earlier priority for almost similar services. Mr Spychała filed a complaint against this decision and argued that the fact that compared signs share the same identical word element is not sufficient to refuse the protection for the later trade mark. The most important was the subject of the applied trade mark – a philosophical concept developed by the applicant and its popularization.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 1201/11 dismissed the complaint. The Court noted that the PPO properly made the comparison of goods and services and did not erred in comparison of both signs. The VAC agreed with the PPO that the word element LEGO can also mean to fold or to assemble, and thus relate to specific products – blocks that are marked by registered trademarks of LEGO Juris A/S. The Court pointed out that the applicant while describing the project of philosophical education under the name LEGO-LOGOS has also showed that he drew the expression of LEGO from Danish language. Regardless of what language (Ancient Greek or Danish) the dominant element LEGO was taken, it is a word that does not exist in the Polish language. Its importance in ancient Greek or Danish is not understandable for the average Polish recipient of goods or services. It may be related to the characteristics of goods – just blocks marked with this sign. Mr Spychała filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 March 2014 case file II GSK 146/13 dismissed it.

Internet domains, case IV CSK 191/13

April 10th, 2014, Tomasz Rychlicki

The Polish company PASTA i BASTA Sp. z o.o. from Warszawa, the owner of the word-figurative trade mark pasta i basta 100 sposobów na makaron cafè R-212390 sued Restaurators Podlaszewscy Spółka Jawna from Toruń. PASTA i BASTA requested the court to prohibit Restaurators Podlaszewscy the use of restaurant name Pasta & Basta and to refrain from the use of Internet domain name pastaandbasta.com and to oblige the defendant to withdraw from the Polish Patent Office an application for the word-figurative trade mark pasta&basta Z-368187 and the withdrawal of the application for a Community trade mark and the award of 60.000 PLN.

R-212390.jpeg

The District Court dismissed the complaint and PASTA i BASTA decided to appeal. The Appeallate Court ordered Restaurators Podlaszewscy to cease the use of the name of the restaurant and refrain from using the website and ordered the defendant to pay 10.000 PLN. Restaurators Podlaszewscy filed a cassation complaint.

Z-368187

The Supreme Court in its judgment of 11 December 2013 case file IV CSK 191/13 held that if the competitor uses Internet domain name identical or similar to a registered trade mark, there may be trade mark infringement if such domain use may cause the likelihood of confusion as to the origin of the goods or services, or result in violation of the advertising function of the trade mark.

See also “Polish case law on domain names“.

Trade mark law, case II GSK 2005/12

April 8th, 2014, Tomasz Rychlicki

The Polish Patent Office dismissed the opposition filed by E.I. du Pont de Nemours & Company against the decision on the grant of the right of protection for the word trade mark TEFAPAK R-199130 that was applied for the Polish company SINOGRAF S.A.

E.I. du Pont argued that the sign TEFAPAK is similar to its trade mark TEFLON R-49573 that was registered in Poland in 1968, and to its CTM TEFLON that was registered in 1996. According to the US company, the compared goods are identical or similar, and the signs share the same prefix TEF, which could lead to consumers’ confusion.

SINOGRAF S.A. requested the PPO to dismiss the opposition, and argued that the goods are directed to competent consumers of the proper level of technical knowledge, who have knowledge and experience in the field of materials, and thus much greater possibility of distinguishing different trade marks than the average recipient.

The PPO dismissed the opposition and found that the trade marks at issue are not similar, since they have significantly different overall impression both in the the visual and aural aspects. The PPO noted that there is no likelihood of confusion and it could not include the likelihood of association, because the goods are targeted to specialized recipients. E.I. du Pont filed a compliant against this decision.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court held that the Polish Patent Office correctly established all circumstances of the case. The VAC agreed that the goods are identical or similar, however, the Court did not agree with the argument that the compared signs are similar to the extent that could lead to likelihood of confusion. In the opinion of the Court, the trade mark are not similar, so arguments about the use of someone else’s reputation and the reputation of the trade mark can not be justified. Dissimilar signs can not induce associations of customers, so there can be no conscious imitation and benefit from someone else’s reputation. E.I. du Pont filed a cassation complaint.

The Supreme Adminitrative Court in its judgment of 20 March 2014 case file II GSK 2005/12 dismissed it.

Trade mark law, case C-98/13

March 22nd, 2014, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 6 February 2014 in Case C‑98/13 ruled that the Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights must be interpreted as meaning that the holder of an intellectual property right over goods sold to a person residing in the territory of a Member State through an online sales website in a non-member country enjoys the protection afforded to that holder by that regulation at the time when those goods enter the territory of that Member State merely by virtue of the acquisition of those goods. It is not necessary, in addition, for the goods at issue to have been the subject, prior to the sale, of an offer for sale or advertising targeting consumers of that State.

Procedural law, case II GSK 248/14

February 26th, 2014, Tomasz Rychlicki

On August 2011, the Polish Patent Office invalidated the right of protection for a trade mark owned by a Polish entity. On 12 September 2012, the Austrian company and the Polish business filed a complaint against the decision of the PPO. The Austrian entrepreneur claimed that it is a legal successor in the case of the invalidated trade mark. As evidence, the company provided an agreement of transfer of trade mark rights.

In a letter of 6 November 2012, the Voivodeship Administrative Court in Warsaw called on the applicant, represented by the patent attorney, to submit a document setting out the authority to represent the applicant, i.e. the original or certified copy of an extract from the official register of companies, which would prove that a person who signed the PoA was a persons properly authorized to represent the applicant on the day of granting the power of attorney that has been attached to the complaint, together with a sworn translation into Polish, within thirty days under pain of dismissal of the action. The letter was delivered to the patent attorney on 12 November 2012. On 12 December 2012, the Court received a request for an extension of the deadline for filing the requested documents. The applicant argued that the person responsible in the applicant’s company for providing such documents was on leave in November 2012, and later, the document was sent by mail, however, it has not been delivered on time.

The Voivodeship Administrative Court in Warsaw in its order of 31 January 2013 case file VI SA/Wa 1810/12 rejected the complaint due to the failure to comply with the Court’s request of 6 November 2012. The Court noted that the deadline to correct formal deficiencies of a complaint is a statutory deadline. Statutory deadlines that are set for parties and participants in the proceedings cannot be extended or shortened. In addition, the VAC cited the order of the Supreme Administrative Court of 20 December 2006 case file I FSK 29/06, and noted that the applicant, while deciding to start its business in Poland, should properly protect its interests, by preparing documents that would authenticate PoAs granted to persons who represent the company, among others, in administrative proceedings. The Court also noted that 80 days have passed from the date of delivery of the letter to the attorney of the Austrian company, but the requested documents were not received by the Court.

In the letter of 20 March 2013, both applicants filed a request to restore the deadline in order to supplement formal deficiencies of the complaint. The request was based on the fact that the person authorized to issue and deliver of the document was long absent, and finally in December 2012, a copy of this document in German, was sent by mail. The whole delay was caused by the Christmas holidays, abroad stay, and his illness in January 2013. The application had attached a copy of the scanned document in German that was received via e-mail.

The Voivodeship Administrative Court in its order of 25 July 2013 case file VI SA/Wa 1810/12 refused to restore the deadline and ruled that the action in the administrative proceedings that was taken by the party after the expired deadline is deemed as ineffective, while, in the case where a party has failed to act without its fault, the court decides on the request to restore the deadline. The request should be submitted to the court in which the action was to be made ​​within seven days from the time of cessation of the cause of failure to comply with the deadline. The requesting party must substantiate circumstances indicating a lack of its fault in complying with the established deadline. The criterion of lack of fault, which is a prerequisite for the validity of the request to restore the deadline is based on the party’s fulfillment of an obligation to act in special care when making a procedural step. Both legal comentators and the case law of the Supreme Administrative Court states, that in assessing the occurrence of this evidence, the court should adopt an “objective measure of care” which may be required of each party who duly cares about their interests. The lack of fault can only be proved when the party could not remove the obstacle even with the greatest effort. The Court decided that the circumstances indicated by the applicant did not exclude the possibility to meet the deadline in order to fulfill formal deficiencies of the complaint.

The Supreme Administrative Court in its order of 19 February 2014 case file II GSK 248/14 dismissed the cassation complaint filed by both companies.

Abusive clauses in B2C IT contracts, decision no. RKT-38/2013

February 24th, 2014, Tomasz Rychlicki

According to the provisions of Article 7 of the Act on the Protection of Consumer Rights and Liability for Damage Caused by a Dangerous Product – PRCLL – (in Polish: o ochronie niektórych praw konsumentów oraz o odpowiedzialności za szkodę wyrządzoną przez produkt niebezpieczny) of 2 March 2000, published in Journal of Laws (Dziennik Ustaw), No 22, item 271 with subsequent amendments, the consumer who concluded the so-called “distance contract” may withdraw from it without giving reasons, by way of an appropriate written statement, within the period of ten days from the conclusion of the contract. The “distance contract” or contracts concluded at a distance are defined as contracts concluded without simultaneous presence of both parties, in which one party is deemed as a consumer (a natural person not performing any business activities), by way of a use of means of communication at a distance, in particular order form without the address or addressed, serial letter, press advertising with a printed order form, catalogue, telephone, radio, television, automatic calling machine, videophone, videotext, electronic mail, facsimile machine, provided that the party to the contract with the consumer is the entrepreneur who organised in such a way its business activity.

The Polish Company Decoratum, owner of endo.pl website that sells children clothes, provided the TOS according to which a consumer willing to withdraw from a purchase, has had to return the purchased goods in order to make the withdrawal legally effective. However, such provisions are inconsistent with the PRCLL. The Act does not require the consumer to perform any additional actions, except filing a written statement (declaration of will to withdraw from a contract). The President of the Office of Competition and Consumer Protection initiated proceedings against Decorum and found that the company did not provided its consumers proper written information that they have the right to return purchased products. The President in its decision of 21 November 2013 no. RKT-38/2013 ordered the Company to pay a fine in the amount of 15.084 PLN. The entrepreneur abandoned the use of the challenged practices so it was possible to decrease the financial penalty. The decision is final.

See also “Polish regulations on prohibited contractual provisions” and “Polish case law on abusive clauses in B2C IT and IP contracts“.

Trade mark law, case II GSK 1542/12

February 17th, 2014, Tomasz Rychlicki

On August 2008, The Polish Patent Office granted the right of protection for the word-figurative trade mark TEFLEX Q R-211213 for goods in Class 9 such as optical apparatus and instruments, spectacle frames, sunglasses, eyeglasses, articles for the manufacture of spectacles, spectacle cases, chains for spectacles, sports eyeglasses, optical lenses, optical glasses, optical products, and services in Class 44 such as optical services, medical assistance, medical clinics, for the Polish company Krasnodębski i S-ka OPTIBLOK Spółka Jawna.

R-211213

Eschenbach Optik GmbH filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. The German company argued that the trade mark TEFLEX Q is similar to its CTM t-flex no. 001821651 that was registered for goods in Class 9 such as spectacles and spectacle frames. Moreover, it pointed out that the questioned trade mark has been applied for registration in bad faith, and its registration and use may lead to the infringement of the applicant’s property rights and the unfounded use of the reputation of the t-flex designation. The fact that the registered sign is confusingly similar and resembles t-flex brand for the same narrow class of products was an argument for the bad faith. Such action indicated the intention to use consumers’ knowledge of products bearing t-flex sign. The brand t-flex is a fanciful designation and it was extremely unlikely for the OPTIBLOK to apply for registration of the sign that was very similar. It was merely a coincidence. The German company noted that it conducts its business in more than 80 countries, including Poland. From the beginning, the Company manufactured and sold of glasses and optical devices, and TITANflex technology is one of the most important of its products. The Polish company is a competitor on the local market. The registration and use of the trade mark TEFLEX Q infringes the Community trade mark t-flex and violates the property rights of Eschenbach Optik GmbH. The existence of similar signs can result in negative consequences for clients and lead them to confusion with regard to the origin of goods. The infringement of the reputation of the t-flex sign was based on its dilution. While referring to the similarity of the goods, the German company noted that the services of class 44 are complementary to the goods in Class 9.

CTM no. 001821651

The Polish company argued that it did not act in bad faith, because before filing the trade mark application, it used services of a patent and trade mark attorney and therefore acted negligently. At the time of registration there was no identical or similar signs to TEFLEX Q mark. Additionally, the brand t-flex does not have distinctive character, because there are tens of thousands of products with the same name in the world.

The Polish Patent Office invalidated the right of protection for the trade mark TEFLEX Q R- 211213 because, it found that the characters are very similar. However, PPO did not agree with the argument that the application was made ​in bad faith. According to settled case-law and legal commentators, the mere fact that one party applies for a trade mark similar to a sign used by the other party is not deemed as acting in bad faith. The bad faith must be proved based on other factors than knowledge of market presence of similar brands and signs, such factors include for instance dishonesty in relation to the interests of another entrepreneur. The reputation of the trade mark t-flex was also not proved. The mere statement that the German company had its Polish subsidiary was not sufficient to prove that Eschenbach Optik GmbH was present on the Polish market before the questioned trade mark was applied.

The Voivodeship Administrative Court in its judgment of 17 February 2012 case file VI SA/Wa 1885/11 dismissed it and ruled that the PPO referred precisely and in detail to all facts and evidence of the case. OPTIBLOK filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 January 2014 case file II GSK 1542/12 dismissed it.