Polish IP & IT law – copyright trademark computer internet telecomm

Trade mark law, case II GSK 839/10

January 17th, 2012, Tomasz Rychlicki

Nufarm Australia Limited, the owner of the trade mark DUAL SALT TECHNOLOGY R-164428 registered for goods in Class 5, requested the Polish Patent Office to decide on the lapse of the right of protection for DUAL IR-0534713 owned by Syngenta Participations AG. Earlier before, Syngenta opposed the registratin of the trade mark DUAL SALT TECHNOLOGY R-164428.

Syngenta requested the PPO to dismiss the request. The Company provided evidence of use of the trade mark DUAL IR-0534713. There were six copies of VAT invoices from the period from 2002 to 2006, of sale of goods bearing the sign “DUAL GOLD 960 EC”, and two newspaper articles concerning this product and the material safety data sheets of “DUAL GOLD 960 EC of August 2005.

The Polish Patent Office decided on the lapse of the right of protection for DUAL IR-0534713 and dismissed the opposition against the registration of the trade mark DUAL SALT TECHNOLOGY R-164428. Syngenta filed a complaint against this decision. The Voivodeship Administrative Court in its judgment of 19 March 2010 case file VI SA/Wa 1807/09 dismissed it. Syngenta filed a cassation compliant.

The Supreme Administrative Court in its judgment of 3 October 2011 case file II GSK 839/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC ruled that the cassation complaint can be based on the following grounds: a) the violation of substantive law by its erroneous interpretation or misuse, or the violation of proceedings rules, if it could affect the outcome of the case. The specific provisions of substantive law or procedural law, which were violated the court of first instance, should be indicated. Furthermore, it should be precisely explained What was the misapplication or misinterpretation – in relation to substantive law, or it should be demonstrated what was the significant impact of the violation of procedural law to decide the case by the court of first instance – in relation to the rules of proceedings. The Supreme Administrative Court cannot change or precise cassation complaints and their grounds, or otherwise correct them, due to limitations resulting from the mentioned rules. If the cassation complaint alleges violation of both substantive law and proceedings, as it was in the present case, the Supreme Administrative Court recognizes the allegation of violation of proceedings, in the first place.

The SAC decided the PPO has erred in its findings because it considered that the evidence submitted on, was from the years 2002-2006, while there was also an invoice from March 2007 on the case file, which was of the relevance to the case. It was a sales invoice of the preparation DUAL GOLD 960 EC 12 XI and DUAL GOLD 960 EC 4X 5 L. Surprisingly, the Supreme Administrative Court acknowledged, that the case facts showed that the trade mark DUAL GOLD lapsed on June 2006, so as a trade mark it ceased to exist on the market from that date (it was not registered). Since the trade mark DUAL GOLD ceased to exist in legal transactions after June 2006, the Polish Patent Office should examine whether this sign could be used in this situation, as indicated on the invoice of March 2007, or perhaps the invoice indicated the use of any other trade mark, for example, the trade mark DUAL, and therefore the Article 170 (1) of the IPL should be applied in this case.

Article 170
1. Subject to paragraph (2), the Patent Office shall dismiss a request for declaring the right of protection lapsed in the case referred to in Article 169(1)(i), if before the submission of the request genuine use of the mark has started or has been resumed.

2. Start or resumption of the use of the trademark after the expiration of an uninterrupted period of five successive years of non-use and within a period of three months preceding the submission of the request for declaring the right of protection lapsed, shall be disregarded, if preparations for the start or resumption of the use have been undertaken immediately after the right holder became aware of possible submission of such request.

3. Paragraphs (1) and (2) shall apply accordingly in the cases referred to in Article 169(7).

4. Loss of a right to use a sign or a symbol, referred to in Article 131(2) incorporated in a trademark shall not constitute a ground for non-making a decision declaring the right of protection for that trademark lapsed, if that sign or symbol ceased to be used in the trademark before a request for the declaration of the right of protection lapsed has been submitted.

In light of this evidence, which were the facts of this case, where a detailed analysis could affect the outcome of the case, it was premature by the court of first instance to rule and to say that, in this case that the genuine use of the mark has not started or has not been resumed, and PPO in this case did not erred in law, because it has analyzed all the evidence gathered. Considering other procedural allegations, the SAC held that administrative courts are not required in justification of its judgments to refer to each decision of Polish or European courts, that were cited by the author of a complaint. Such obligation can not be inferred from any provision of the Polish Act on Proceedings Before Administrative Courts. However, the administrative court should refer to these judgments, of which the applicant derives important arguments for the assessment of the case. In this case, the Court of first instance did not meet this requirement.

The SAC noted that the doctrine of law and case-law indicate that the trade mark proprietor may use its sign in an altered form in connection to the form of a sign that was registered. This alteration however, cannot apply to elements that decide on the distinctiveness of the sign, or may not lead to changes in represented form as a distinctive whole. See the judgment of the Supreme Administrative Court of 24 May 2006 case file II GSK 70/06. The SAC confirmed the high degree of freedom to dispose of a trademark by its proprietor, and cited the judgment of the Supreme Administrative Court of 24 June 2008 case file II GSK 251/08. See “Trade mark law, case II GSK 251/08“. The SAC found that the VAC has not sufficiently analyzed of all substantive rules in the context of this case. However, both situation where the violation of substantive law may happen, i.e., violation of substantive law by its incorrect interpretations or inappropriate use, refer only to cases where the facts of the case were established in no uncertain terms. Otherwise, the alleged breach of substantive law is at least premature. This situation took place in this case, because the author of the complainant cassation alleged in the first place the violation of the proceedings by the VAC. The violation of proceedings was based on the refusal by the court of first instance to repeal the decision issued by the Polish Patent Office, in a situation when that PPO did not adequately explain the facts of the case and did not examine in a comprehensive manner the whole of the evidence.

Trade mark law, case VI SA/Wa 586/11

January 2nd, 2012, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark @ @lfanet Z-331247 applied for by @ALFANET Marcin Małolepszy from Borowo Kolonia for for goods and services in Classes 09, 37, 38, 42 and 45.

Z-331247

The PPO decided that the applied trade mark is similar to the word trade mark ALFANET R-145012 registered with the earlier priority for the Polish company ALPHANET sp. z o.o. for services in class 38. The PPO did not agree with the applicant that ALFANET sign has weak distinctive character. Although the ending “net” is not distinctive for services related to the IT industry, but combined with the word “alpha”, it creates a neologism, which can be deemed as a fanciful sign.

Mr Małolepszy filed a complaint against the decision of the PPO, arguing that grant of a right of protection for a trade mark in respect of specific goods should not constitute an autonomous ground for refusal to grant a right of protection for a trade mark in respect of the goods identical or similar to those of another undertaking for a sole reason that the trade mark contains an identical or similar sign which refers to personal interests, in particular the owner’s name.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2011 case file VI SA/Wa 586/11 dismissed the complaint and held that the argument that the applicant relied on is an exception to the rule of inadmissibility of the coexistence of similar signs, and as such can not be broadly interpreted, and it should be applied with caution, taking into account not only the ratio legis, but also the principles provided in the Polish Industrial Property Law, that relate to trade marks and their basic functions. Although the provisions of Article 135 of the IPL, in contrast to previous regulations, do not include the condition that the applied trade mark should not be misleading, but, in the opinion of the Court, the interpretation that would lead to the registration of two identical or similar trade marks for identical goods and/or services, could not be accepted.

Trade mark law, case VI SA/Wa 723/11

December 28th, 2011, Tomasz Rychlicki

In 2007, the Polish Patent Office registered the word-figurative trademark citibank handlowy R-190720, for the American company Citibank, N.A., a National Banking Association. In 2008, Citigroup Inc. applied for the word trade mark CITI HANDLOWY Z-337716.

R-190720

The Polish Patent Office refused to grant the right of protection, despite the fact that Citibank N.A. is the sole shareholder of the Citigroup Inc., and Citigroup Inc. provided a letter of consent from its parent company. The PPO decided that both signs would mark very similar goods and services and are directed to the same audience. There is also visuall similarity, caused by common elements. The PPO noted that it is not obliged to take into account the letter of consent issued by Citibank, N.A. Citigroup Inc. filed a complaint against this decision.

The Voivodeship Administrative court in Warsaw in its judgment of 9 December 2011 case file VI SA/Wa 723/11 dismissed it. The Court held that the PPO correctly examined all evidence and properly decided on the similarity of signs. The VAC noted that that letters of consent may be evidence in proceedings, but they do not bind the PPO. The VAC pointed to the judgment of the Supreme Administrative Court of 20 December 2007 case file II GSK 279/07. The SAC held that a letter of consent cannot be used as ground to register a trade mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104.

Personal data protection, case II SA/Wa 1009/11

December 28th, 2011, Tomasz Rychlicki

A Polish farmer who owns an agriculture tourism farm and is advertising his services and business on a personal website, has found negative comments about his services at one of the Internet forum websites. He asked the administrator of the forum to remove his personal data. Some posts have been removed, but the farmer has demanded the removal of all statements and comments, and the access to personal data of forum’s users. He requested the Inspector General for Personal Data Protection (GIODO) to order the forum administrator to remove all comments and to disclose all necessary personal data. The GIODO refused to issue such a decision and ruled that the farmer himself published such information as his name and address on his website in connection to the conducted economic activity. According to the GIODO, the processing of information on the farmer’s name on the Internet forum website, has its justification in Article 23(1)(v) of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments.

1. The processing of data is permitted only if:
1) the data subject has given his/her consent, unless the processing consists in erasure of personal data,
2) processing is necessary for the purpose of exercise of rights and duties resulting from a legal provision,
3) processing is necessary for the performance of a contract to which the data subject is a party or in order to take steps at the request of the data subject prior to entering into a contract,
4) processing is necessary for the performance of tasks provided for by law and carried out in the public interest,
5) processing is necessary for the purpose of the legitimate interests pursued by the controllers or data recipients, provided that the processing does not violate the rights and freedoms of the data subject.

According to the GIODO, the purpose of the legitimate interests is based on providing a service that allows for posting on the internet forum. The dissatisfied farmer filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 16 November 2011 case file II SA/Wa 1009/11 dismissed it and decided that personal data published on a website that advertises agritourism services, are closely related to his business activities, and therefore subject to much weaker protection. These services may be subject to different assessments of people using them, there may be also some negative comments. The Court noted that the farmer could file a civil suit for the infringement of his interests against persons who wrote such comments.

Access to public information, case II SAB/Wa 295/11

December 18th, 2011, Tomasz Rychlicki

The Association of Leaders of Local Civic Groups (SLLGO) requested the Polish Prime Minister Donald Tusk to disclose the correspondence, including e-mails, of members of the Council of Ministers and their assistants, that concerned the revision of the Polish Act of 6 September 2001 on access to public information – API – (in Polish: Ustawa o dostępie do informacji publicznej) Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments. The Prime Minister refused, arguing that e-mails are not public information, because it is internal correspondence. The SSLGO filed a complaint for failure to act.

The Voivodeship Administrative Court in Warsaw in its judgment of 1 December 2011 case file II SAB/Wa 295/11 agreed with the SSLGO and decided that e-mail correspondence in this case was not private, but it should be deemed as public information and properly disclosed as it was requested by the Association, because it concerned the amendment to the API. The Court noted that such e-mails related to public affairs, this issue was previously mentioned by the Voivodeship Administrative Court in its judgment of 16 January 2004 case file II SAB 364/0.

Press law, case SK 42/09

December 16th, 2011, Tomasz Rychlicki

The Constitutional Tribunal in its judgment of 14 December 2011 case file SK 42/09 held that criminal sanctions for failure to register a daily newspaper or a periodical, as provided in Article 45 of the Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendments, are unconstitutional.

Anybody who publishes a daily newspaper or a periodical without registration or with registration suspended is subject to a fine penalty or the restriction of liberty.

This judgement indicates that the Polish legislator should consider a separate regulation for a printed press, and other rules for periodicals published, in particular, in the Internet. The Court pointed out not only the issue of criminal sanctions for the publication of press without registration, but also the issue of the obligation to register the press, which is still available in the APL.

See also “Press law, case IV KK 174/07“, “Press law, case II K 367/08” and “Press law, case VI Ka 409/07“.

Trade mark law, case VI SA/Wa 334/11

December 13th, 2011, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. This judgment is not final yet. A complaint can be brought to the Supreme Administrative Court.

Trade mark law, case VI SA/Wa 1236/11

December 6th, 2011, Tomasz Rychlicki

LEK, tovarna farmacevtskih in kemicnih izdelkov filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word trade mark KETOGEL R-190416 registered for Polpharma S.A. for goods such as pharmaceuticals. LEK argued that KETOGEL is similar to its word trade mark KETONAL. The PPO dismissed the opposition, and LEK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1236/11 dismissed it. The court noted that in case of the assesment of similarities between trade marks, the number of syllables, their sound and touch have the importance in deciding on phonetic similarity. Visual similarity is assessed in terms of number of words or letters in general, the number of words or letters of the same type, their shape, layout and color. Consequently, a sign containing an altered distinctive element, even if there is some resemblance to other parts, will not be similar. The Court took into account the specificity of the pharmaceutical market, and excluded the likelihood of confusion in this case.

Trade mark law, case VI SA/Wa 1319/11

November 28th, 2011, Tomasz Rychlicki

Designer drugs are well-known as “dopalacze” in Poland (in English: boosters). They were freely available on the Polish market because of the legal loophole in the Polish Act of 29 July 2005 on Counteracting Drug Addiction. In 2010, after different mainstream media reported on several cases involving health problems caused by such drugs, the Polish Government ordered a nationwide crackdown on shops selling designer drugs, memory enhancers or noothropic substances.

In 2008, the Polish company KONFEKCJONER Sp. z o.o., one of the biggest suppliers of these products, tried to register the word trade mark DOPALACZE.com Z-345673 in Classes 30, 33, 34 and 39, but the Polish Patent Office refused to grant the right of protection. KONFEKCJONER filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2011 case file VI SA/Wa 1319/11 dismissed it, and held that the word trade mark DOPALACZE.COM was intended to designate, inter alia, herbal substitutes for coffee, alcoholic beverages, tobacco and smokers’ articles, and delivery of goods and parcels. The recipients of these goods and services are generally understood as the broadest public possible, and the “average consumer” is reasonably well informed and reasonably observant and circumspect. The Court ruled that the sign in question may suggest that the consumption of goods bearing this trade mark may cause specific narcotic effect. There was a sufficiently serious risk that consumers receive wrong message regarding the goods. Although, products such as coffee, cigarettes, tobacco, function as goods that add energy, they are treated as stimulants or tranquilizers, however, such a trade mark may suggest that the goods have been strengthened to induce a certain narcotic effect. Smokers’ articles are deemed as ancillary to the aforementioned goods for which the registration was sought, the same applies to delivery of parcels and goods.

Trade mark law, case VI SA/Wa 1291/11

November 23rd, 2011, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark LAW24.pl applied for the Polish law firm Komarnicka Korpalski Kancelaria Prawna sp.j for services in Class 35 such as advising on business and business management consultancy, in Class 36 such as financial consultancy and financial and accounting activity, and in Class 42 such as legal services.

Z-341137

The PPO pointed out that the sign was applied for broadly defined legal services, and it cannot be registered because it lacks sufficient distinctive character, therefore it cannot be the subject of exclusive rights as others would have been deprived of the possibility to use it. The PPO noted that the applied trade mark is a company name, but there are different regulations regarding company names and the names of individuals. The PPO ruled that the right to the company name is not absolute, effective in relation to all (erga omnes). The PPO stated that the case of each applied trade mark is always considered individually on its specific conditions, so the argument that there is plenty of registered trade marks that include the word “law”, and the PPO should also grant the right of protection in this case, was rejected The PPO did not agree with the argument that recent visits to the website could prove that the trade mark in question has acquired secondary meaning. According to the PPO, the applicant has not submitted any evidence documents to confirm it. Komarnicka Korpalski Kancelaria Prawna filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 31 August 2011 case file VI SA/Wa 1291/11 dismissed it. The Court agreed with the PPO and held that Internet address identifies a legal or natural person, but this identification is not equivalent, that the services provided by such person are marked with the same deisgnation.

Copyright law, case III CZP 61/11

November 19th, 2011, Tomasz Rychlicki

The Polish Supreme Court in its order of 26 October 2011 case file III CZP 61/11 held that manufacturers and importers of photocopiers, scanners and other similar reprographic equipment, that allow for the production of copies of the whole or part of the published copyrighted work, are obliged to provide to the competent organization for collective copyright management (collecting society), information and documents, that relate to all contracts for the sale of these devices.

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

Criminal law, case II Ka 269/11

November 14th, 2011, Tomasz Rychlicki

Maria S. was charged by the Prosecutor based on the provisions of Article 278 § 2 of the Polish Criminal Code – CRC – (in Polish: Kodeks Karny) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 88, item 553, with subsequent amendments.

Article 278. § 1. Whoever, with the purpose of appropriating, wilfully takes someone else’s movable property shall be subject to the penalty of deprivation of liberty for a term of between 3 months and 5 years.

§ 2. The same punishment shall be imposed on anyone, who without the permission of the authorised person, acquires someone else’s computer software, with the purpose of gaining material benefit.

Such situation happened because, during the investigation, the Police found on her laptop two shareware programs Win ZIP 8.1 and Win Rar 3.0. This software was valued 113,89 PLN each, and the period of time to buy a license already expired. Maria S. explained that she wasn’t aware that she had illegal software installed. She argued that both programs were installed by computer service technicians during the repair of her laptop. This statement was confirmed by a witness expert testimony. The expert said that both programs were installed at the same time, when the operating system was also configured. The expert noted that this is typical practice of computer services personnel who install software needed to install other programs, and do not remove it after the completion of repairing. At the time of installation of both programs, they were legal.

The Regional Court in Biłgoraj acquitted Maria S. of all charges. The Court found that she did not act in order to gain material benefits and she had no full awareness that her behavior lead to the obtainment of computer programs without the consent of the person entitled. The Prosecutor appealed. He argued that Maria S. was guilty because she wasn’t careful enough, and she did not buy both licenses immediately.

The District Court in Zamość in its judgment case file II Ka 269/11 upheld the verdict. The Court ruled that issues of normal or increased diligence or care that should appear in case of expired trial or shareware software, do not belong to the category of the constituent elements of the alleged offense.

Personal interest, case XXIV C 1035/10

November 14th, 2011, Tomasz Rychlicki

The “Nigdy Więcej” (Never Again) Association and the “Zielone Światło” (Green Light) Foundation organized a social action entitled “Nazism never again on Allegro”. It was a protest against a Polish auction website Allegro.pl which allowed to buy and sell different Nazi gadgets and memorabilia. The Foundation together with a writer, artist and social activist Jerzy Masłowski prepared an illustration with Allegro.pl logotype in which in which two L letters were changed and shaped as the SS symbol. This illustration was used on postcards that were handed out to different people during the street-action that happened near Metro Świętokrzyska in Warsaw on 21 March 2010.

Stop Allegro

On 20 April 2010, the Foundation received a cease and desist letter from QXL Poland – the owner of Allegro. The Company requested the removal from all public places of all publications, photographs, posters and billboards, and other materials that included the altered trade mark. QXL demanded destruction of all the above mentioned materials and asked the Foundation to publish an apology on its website, as well as in the pages of Gazeta Wyborcza newspaper. The Foundation refused to comply.

Z-342240

QXL Poland sued the “Zielone Światło” foundation and Jerzy Masłowski for the infringement of personal rights. During the trial, the Foundation argued that it has conducted correspondence with Allego with regard to products with fascist symbols or products referring to fascist ideology, that were offered at different auctions. However, it has not brought the intended effect, because Allegro.pl did not remove these items from its website. For this reason, the Foundation organized the street action. The Foundation argued that from 8 June 2010, the provisions of Article 256 of the Criminal Code were amended.

Art. 256.
§ 1. Whoever publicly promotes a fascist or other totalitarian system of state or incites hatred based on national, ethnic, race or religious differences or for reason of lack of any religious denomination
shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.

§ 22 The same punishment shall be imposed on anyone, who for the purpose of dissemination, produces, records or import, acquire, stores, possess, presents, transports or transfers a print, record or other item of the content specified in § 1 or being a carrier of the fascist, communist or other totalitarian symbolism..

§ 3 A crime is not committed by a perpetrator of a forbidden act specified in § 2, if he or she commits the said act in the course of artistic, educational, collectible or scientific activity.

The Foundation concluded that its action was a response to long-term omission of Allegro. The action was organized to draw the attention of relevant authorities and the public at auctions that poses a danger to others. It sought to protect an important public interest, and therefore was not unlawful. In addition, the Foundation argued that according to the legal doctrine the criticism aimed at improving the reality is not illegal, even if it is excessively expressive in description and in negative assessment, as well as it’s impolite way of expression and presentation of arguments, if it is justified by the importance of issues raised and the literary form that was used. Moreover, the scope of permissible criticism depends on the weight of social affairs, and in case of doubt, freedom of expression takes precedence, and in some cases even offensive criticism is acceptable. If the case requires so, the criticism might be very offensive, and it may even seek to destroy the enemy, for example, in the dispute against pedophilia or against the view that is glorifying Stalin. The Foundation argued also that a request for legal protection raised by Allegro cannot ban the Foundation and other individuals from expressing their critical opinions of the plaintiff’s conduct. Such behavior constitutes an abuse of the subjective right as decided by the Appeallate Court in Lódź in its judgment of 25 May 2006, case file I ACa 15/06, published in electronic database LEX, under the no. 512493.

On 9 November 20011, a lawyer representing the Foundation presented a legal opinion issued by Prof. Wojciech Sadurski. Prof. Sadurski wrote that there was no violation of personal interests. In the opinion of the author, the case brought by QXL Poland illustrates the conflict between two types of claims related to absolute rights protected by the law. The claims relating to freedom of expression, and intellectual property claims relating to the protection of trade marks owned by QXL Poland. Citing the case law of the Polish Constitutional Tribunal, prof. Sadurski argued that freedom of speech is superior to other constitutional rights and freedoms. He noted that limiting the right to freedom of expression by issuing a ban on speech, would violate the essence of the constitutional right to freedom of speech. Prof. Sadurski cited Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008), however he pointed out that the Foundation does not conduct any commercial activity, and the risk of consumers’ confusions is clearly excluded. Please bear in mind that such opinions are treated by the Courts as private documents, not as the expert witness evidence/testimony. The case is pending and the next hearing is scheduled on 6 February 2012.

QXL Poland filed also a request for preliminary injunction. The District Court in Warsaw in its order of 20 January 2011 case file XXIV C 1035/10 dismissed it during a closed-door court session (in camera). However, the Appeallate Court in Warsaw in its decision of 5 May 2011 case file I ACz 671/11 decided to secure the claim of QXL. The Court prohibited the Foundation and Jerzy Masłowski from transmitting and disseminating on their websites of any publications or materials containing the questioned trade mark.

Trade mark law, case VI SA/Wa 396/11

November 8th, 2011, Tomasz Rychlicki

EAST SEA POLAND Spółka z o.o. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark BIEN DÔNG R-204010 registered for services in Classes 36, 39 and 43, and owned by AEROCENTER TRAVEL Trinh Huy Ha.

R-204010

EAST SEA claimed that this mark is descriptive, because in the translation from Vietnamese to Polish language, it is the name of the South China Sea – Biển Đông. This name is the official designation of the geographic area used in the Socialist Republic of Vietnam and as such it should remain free to use on the market. The company argued that this trade mark may lead to consumers’ confusion, in particular those of Vietnamese nationality, as to the nature or characteristics of services provided by the owner, because the sign in its content relates to the maritime area, which is associated with maritime transport, and not to the services that it was registered for. EAST SEA argued that the Bien Dong designation may be misleading as to the place where services are provided, as the owner provides its services in Poland and not in Vietnam. It is worth mentioning that EAST SEA applied for three trade marks that include BIEN DONG words.

Z-290648

AEROCENTER TRAVEL argued that the Bien Dong is strictly abstract expression for the average Pole who doesn’t know what it means in Vietnamese. The Company disagreed, that this is false or fraudulently marked geographical origin of their services, since none of the customers going to the office in Warsaw would expect it to be in Vietnam at the South China Sea.

The Polish Patent Office dismissed the opposition and EAST SEA POLAND decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2011 case file VI SA/Wa 396/11 dismissed it and held that the Polish Industrial Property Law – in principle – does not preclude the registration in Poland as a national trade mark, the word that is taken from the language of another country in which language this word is devoid of distinctive character or it is descriptive for the goods or services for which the registration was sought, unless recipients/consumers in the State in which registration is sought, would be able to read the meaning of this word.

Personal interest, case IV CSK 665/10

November 7th, 2011, Tomasz Rychlicki

Writing under a pseudonym, Dariusz B. posted a comment on the website “Gazeta online Elbląg 24″. In his post Dariusz B. wrote to the Mayor of the Elbląg town, that he has photographs of people who sit in the city council, and he described the content of these pictures as a “sex scandal”. He noted that the Mayor’s spokesman ignored this case, so he wanted to know what should he do next with such photographs. Other anonymous Internet users posted comments under the post that has been written by Dariusz B. One of them has disclosed who is the author of the post, and also expressed a negative opinion about the post, by calling it a blackmail. This person also suggested that Dariusz B. has used the media for his own purposes in order to manipulate press journalists. The intentions of Dariusz B. and his honesty, were also undermined. The post of Dariusz B. was described as a blatant violation of the law for which he should bear criminal responsibility. “Gazeta online Elbląg 24″ is a service available for free. It is operated by the Municipality of the Elblag town. The comment in which personal data of Dariusz B. was disclosed was written from a computer that had the IP address belonging to the organizational unit of the Elblag town. The unit operates wireless Wi-Fi, whose range includes several publicly accessible areas of the building and parking lot adjacent to it. It was not possible to identify the person who posted this comment. The Police, at the request of Dariusz B. commenced an investigation and failed to establish who was the author of the comment, even when the Municipality of Elblag has disclosed all data, including IP addresses. Dariusz B. sued the Municipality of Elbląg for the infringement of his personal interests. The District Court and the Appellate Court dismissed the suit. Dariusz B. filed a cassation complaint.

The Supreme Court in its judgment of 8 July 2011 case file IV CSK 665/10, published in electronic database LEX, under the no. 898708, held that critical comments of the content of post and the very fact of its posting, or disclosure of the name and surname of Dariusz B., was not a violation of his personal interest. However, it was a violation of personal interests (dignity and reputation) when such action has been called illegal activity, fraudulent and manipulative, a blackmail and provocation, which undoubtedly discredited Dariusz B. in public opinion, especially as a social activist, who was active at another online forum. Such statement, not supported by the facts, was unlawful. In the case of an infringement of one’s personal interests, the court may award pecuniary compensation to a person whose personal interests have been infringed, an approriate amount as pecuniary compensation for the wrong suffered or may, on his demand, adjudge an appropriate amount of money to be paid for a social purpose chosen by him, irrespective of other means necessary to remedy the effects of the infringement. Not only the person who directly caused the damage shall be liable, but also any person who has induced or helped another person to cause the damage, including those who consciously took benefit from a damage caused to another person. However, the Court ruled that there was no normal causal link between the actions of the Municipality of Elblag, and the damage suffered by Dariusz B., and such a link occurs only when the action is directed to accomplish the tortious activity.

By opearating a website “Gazeta online Elbląg 24″ and a discussion forum, the Municipality of Elbląg was deemed as the Internet services provider. However, such ISPs, are responsible for the violation of personal rights performed by others only when they knew that the post violates these interests and they did not immediately prevent the access to the post. Therefore, the ISP is not obliged to control the content of posts written by users on a free discussion forum website. Taking into account the nature and purpose of services based on making available free of charge of a discussion website, and considering also that there were no general rules for the management of such services and systems, the Court held that there were no grounds to impose a general obligation on the ISP to provide tools to identify users of such a website. The Court ruled that the anonymity of persons using the publicly available online news website, is a generally accepted principle and essence of this type of service. It provides freedom of expression, which is the goal of such websites. Consequently, the Court held that the ISP that created and provides free access to the website with a discussion forum, has no obligation to ensure the ability to identify the users who maded posts on this website.