Polish IP & IT law – copyright trademark computer internet telecomm » 2007

Archive for: October, 2007

Trade mark law, case VI SA/Wa 1470/07

October 30th, 2007, Tomasz Rychlicki

This case concerned the invalidation proceedings of MURBET R-155245 trade mark owned by Przedsiębiorstwo Wielobranżowe MURBET Andrzej Zaborski. The proceedings were initiated by the MURBET Gabrylewicz Spółka Jawna company from Ełk.

The Voivodeship Administrative Court in its judgment of 17 October 2007 case file VI SA/Wa 1470/07 held that the registration of a trade mark which infringes personal or property rights of third parties is unacceptable, and in light of case-law, in case of conflict between the company name (the firm), and a trade mark that registered with the “worse priority”, the priority shall be given to the earlier right. However, the exclusive rights to the company name (the firm) is not absolute. Its limits are set by the territorial and substantive coverage, the actual activity of person using the names. Only within these limits there may be a collision between identical or similar company name (the firm) and trademark.

R-222381

The VAC held that because of the distinct areas of the business activity of the person entitled to the company name and the holder of the right of protection to MURBET R-155245 trade mark, there is no risk of leading their consumers to confusion as to the identity of such business or the owner of the later trade mark. The owner of the questioned trade mark does not use the reputation associated with the earlier (identical or similar ) company name (the firm), then it is difficult to find the collision of these two rights, and consequently a breach of an earlier right to the company name by the registration of the later trade mark. The judgment is not final. See also “Trade mark law, case II GSK 400/08“.

Copyright law, the allowed personal use

October 29th, 2007, Tomasz Rychlicki

In a short press release published on 26 October 2007 in “Czas Świecia” (regional supplement to Gazeta Wyborcza newspaper) Marek Rydzewski, the spokesperson for Regional Police Headquater in Świecie, issued a statement while answering to a student’s question about legality and responsibility for photocopying books:

- Copying whole textbooks without a permission from persons who have rights to such work (usually those are authors or publishes) is prohibited.

False. I do not want to educate Polish Police but I think I owe my English readers short explanation about Polish copyright (I think the proper term should be Author’s right since Civil law system differs a lot from English and US approach).

Some voices appears that there are legal grounds to introduce restrictions of maximum amount of pages to be allowed to photocopy from one book (…). It seems that such statements are not justifiable. Rules established in art. 23 of the Act of Authors rights. (…) did not introduce any limits for the amount of photocopied text.

J. Barta, R. Markiewicz, Prawo autorskie i prawa pokrewne, Zakamycze 2004, p. 67.
Additionally, Mr Marek Rydzewski said that:

Also, the law does not allow for downloading books in electronic form from the Internet, except for those which are made available for such actions.

False. There is no rule in Polish law that “prohibits” downloading books from the Internet! For all of you who are interested in the original text of this short article here is a scanned file, JPG, 675 KB. I’ll see if they publish corrections. In passing I would like to write my short statement. Myabe it will sound strange for You but I think that photocopying a full book “kills” it somehow.

Internet domains, case XVII AmC 170/05

October 20th, 2007, Tomasz Rychlicki

The Register of Prohibited Clauses operated by the Office of Competition and Consumer Protection contains contractual clauses found unlawful by a legally binding judgements. According to the latest judgment of the Polish Court of Competition and Consumer Protection of 26 December 2006, case file XVII AmC 170/05, it won’t be so easy to get cybersquatters who are private persons before any ADR court. This case concerned two clauses of the Domain Names Regulations issued by NASK.

22.
In case a third party initiates a legal action in the Arbitration Court against the Subscriber claiming that the Subscriber has infringed the rights of that person by entering into or performing the Agreement, the Subscriber shall submit to that Arbitration Court a duly signed arbitration clause to the Arbitration Court in due time stated in the summon to sign this arbitration clause.

23.
The non-signing of the arbitration clause specified above shall result in the termination of the Agreement three months after the time stated to sign this arbitration clause, and this time limit shall be shortened to the date of the expiry of the calculating period based on the Price List if this date occurs before the end of the three month-period after the time stated to sign this arbitration clause

See also “Polish case law on domain names“.

Trade mark law, case III CSK 300/06

October 17th, 2007, Tomasz Rychlicki

The Supreme Court in its judgment of 22 February 2007 case file III CSK 300/06, held that each sign should be presented in a graphical way. This is understood in the case law as a visual perceptibility of the trade mark, i.e., a sign must be possible to be seen, even if it’s only a word trade mark, which is represented by writing letters. This case concerned the infringement of MIXEŁKO R-116044 trade mark owned by ALMAR spółka z ograniczoną odpowiedzialnością spółka komandytowa from Kraków.

Procedural law, case II SA/Po 37/09

October 12th, 2007, Tomasz Rychlicki

The Voivodeship Administrative Court in Poznań in its judgment of 15 July 2007 case file II SA/Po 37/09 held that for the effectiveness of the application for the restoration of a time limit in case of failure to comply with the time limit, it is necessary to bring this application to the competent authority within 7 days from the date the cause of failure to comply has expired

Categories: Art. 129 §2 APC | Art. 57 APC | Art. 58 APC | Voivodeship Administrative Court.

Electronic Services, case I KZP 19/07

October 11th, 2007, Tomasz Rychlicki

The Supreme Court, the Penal Chamber, in its judgment of 29 August 2007 case file I KZP 19/07 answered an inquiry asking whether the word “sprzet” ([a piece of] equipment, an appliance) covers only material technical devices composed of electronic elements. The court ruled that a “sprzęt” is a device made of electronic components that has been designed or adapted to give unauthorised access to protected services without prior authorisation from the service provider.

Charges brought against Pawel M. stated that from November 2, 2006 to November 3, 2006 in Z. in the Lubuskie Voivodeship in Poland, he used an illicit device for his own purposes and in order to obtain material benefits. He used the device to plug into a cable television service which subsequently enabled him to watch cable TV channels without paying the subscription fee. The device was a broken needle. The District Court (the court of first instance) ruled that the needle with the use of which the defendant plugged into the cable network is not an illicit device. The prosecutor appealled against the judgment and the issue was referred to a Regional Court in Z which concluded that this case needed an interpretation of the act itself and thus directed the issue to the Supreme Court.

At the beginning the Supreme Court had to interpret the term “sprzet” as used in Article 2(6) of the Act of 5 July 2002 on the Protection of Some Electronic Services Based on or Consisting of Conditional Access – PSESBCA – (in Polish: ustawa o ochronie niektórych uslug swiadczonych droga elektroniczna opartych lub polegajacych na dostepie warunkowym) Journal of Laws (Dziennik Ustaw) No. 126, item 1068 with subsequent amendments. This Act constituted a direct implementation of Directive 98/84 on the legal protection of services based on, or consisting of, conditional access. The Court cited M. Szymczak (ed.), Slownik jezyka polskiego (Dictionary of Polish) (Warsaw: 1999) vol.III, p.289 and almost identical definition in S. Dubisz (ed.), Uniwersalny slownik jezyka polskiego (Universal Dictionary of Polish), (Warsaw: 2003), Vol.IV, p.497.

The word “sprzet” is understood as:
1. utility objects such as furniture, mechanical devices, containers, etc.
2. in a collective meaning: objects used in a certain domain of life such as building equipment, farm equipment, fire-fighting equipment, rescue equipment, automobile equipment, sanitary equipment, sports equipment, tourist equipment, etc.
3. sowing, cutting plants, digging, picking fruit, etc.

The Supreme Court concluded that when considering the legal aspect of the term, the most useful meaning of “sprzet” is the collective one, i.e. objects used in a certain domain of life. Under Article 1 of the Act on the protection of some electronic services based on or consisting of conditional access, such a domain of life includes using services that are rendered electronically against payment and on the basis of conditional access. In other words, such objects as are used in electronics, i.e. electronic devices.

In the functional interpretation of the term, the Supreme Court stressed the fact that the rationale behind the Act reads that the aim of the bill on the protection of some electronic services that are accessible conditionally and services of providing conditional access is to protect service providers against the deprivation of their rightful remuneration by individuals who introduce to trade exchange and use prohibited technical devices and other technical solutions the purpose of which is to circumvent the protections.

What is also important is that the court found that the legislator did not intend to penalise only the unauthorised use of electronic services that are based on conditional access. The court also took into consideration a commentary on the Act which reads that illicit devices do not include appliances or software that have not been designed especially for circumventing protections of protected services. Thus such a device may not be a TV, a regular computer or a telephone. An illicit device can only be an appliance or software that changes the functioning of protection measures of a service that protects that service from unauthorised use.

The above case study clearly indicates that the Supreme Court supported the legislator who had originally opposed delegalising objects (and components of such objects) that might be used also in a legitimate manner. Although resolutions passed by the Supreme Court have a more limited power than court precedents in countries that embrace the commonlaw legal system, this particular resolution helps an avid reader to predict a possible future judgment of that court in cases that would aim to penalise technologies that by nature are “neutral” (such a technology being for example peer-to-peer). On the other hand, however, it is most alarming that the Supreme Court supported the Polish legislator in an interpretation that refused to penalise actions that are related to unauthorised activities, when they are not performed for commercial purposes.

Categories: conditional access | e-access | e-law issues | e-services | Polish Supreme Court.

Trade mark law, case II GSK 113/07

October 6th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 September 2007 case file II GSK 113/07 held that the administration body can change its opinion on the content of the proper conclusion, which should be issued in a specific type of cases, but it must carefully justify such a change, especially when changing the view of decisions taken in relation to the same applicant.

R-146742

The Court ruled that the case-law of the administration may therefore be subject to change, if the authority demonstrates in detail that there are reasonable grounds. This case concerned BROWN DD KING R-146742 trade mark owned by INTER SOUND Spółka z o.o. from Warszawa.

Trade mark law, case II GSK 269/06

October 6th, 2007, Tomasz Rychlicki

By decision of 11 August 2005, the Patent Office refused to grant a right of protection for word-figurative “R-Profit” Z-234207 trade mark applied for by Raiffeisen Bank Polska S.A. for goods in Class 36 such as banking services for small and medium enterprises. The Patent Office concluded after examination proceedings that this sign may not be registered because it is similar to PROFIT R-87400 trade mark, registered for Bank Polska Kasa Opieki SA, with priority of 3 November 1993 for goods in Class 36 such as management of interest bearing money investments in zlotys. The PPO also stated that, in this case, the issue of services could not be challenged, since both signs are designed for the same services to a wide audience, i.e. banking services. The PPO ruled that both signs cannot exist simultaneously in trade without the risk of consumers confusions. In the opinion of the PPO there was no doubt that the trade marks are also similar phonetically and semantically.

Z-234207

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2006 case file VI SA/Wa 542/06 dismissed the complaint filed by Raiffeisen Bank Polska S.A. and noted at the beggining that Article 315(1)(3) of the IPL, expresses the principle that the issue of the registrability of signs that were registered or applied for registration before 22 August 2001, is assessed on the basis of existing regulations. therefore the provisions of the Act of 31 January 1985 on trade marks are the basis for assessing the registrability of R-Profit trade mark, because it was applied for registration on 10 April 2001.

Article 315
1. Rights conferred in respect of inventions, utility models, ornamental designs, topographies of integrated circuits, trademarks and rationalisation projects, existing at the time of entry into force of this Law, shall remain effective. To these rights the previous provisions are applicable, unless the provisions of this Part stipulate otherwise.

2. Legal relationships established prior to the entry into force of this Law shall continue to be governed by the previous provisions.

3. Statutory requirements for the grant of a patent, a right of protection or a right in registration shall be assessed under the provisions effective at a date of filing of an application concerning an invention, a utility model, a trademark or topography of an integrated circuit with the Patent Office. However, the provision of Article 37(2) shall apply to patent and utility model applications pending at the date of entry into force of this Law.

In the opinion of the VAC that this case involved the same type of services. The Court agreed with the analysis of the list of services performed by the PPO that there exists homogeneity of services between in both lists of goods. In the opinion of the Court, the PPO has properly analyzed the similarity of “R-Profit” and opposing “Profit” signs. Both signs should be compared in aural conceptual and phonetic aspects, bearing in mind that “R-Profit” is a word-figurative trade mark. According to the VAC, even though this case concenrs word and word-figurative trade marks, one may say that there exists graphic similarity, as “R-Profit” and “Profit” differ only by the letter “R” and the core of the two characters – “Profit” is identical. The VAC ruled that the argument that services in question have different distribution channels does not preclude the likelihood of confusion, because an average consumer may think that the service is derived from an entity that combines the organizational relationship and legal rights with the owner of “Profit” trade mark.

Raiffeisen Bank Polska S.A. filed a cassation complaint. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 269/06 dissmised the case. The SAC held that the comparison of signs should be based on the general, overall impression, which compared trade marks have on the recipient, and thus if the dominant element in both signs are their common elements, there is a similarity between trade marks that is posing a risk of consumers confusion.

Trade mark law, case II GSK 127/07

October 5th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 20 September 2007, case file II GSK 127/07, unpublished, ruled that other requirements must be satisfied while starting the invalidation proceedings, and the other in the request on the lapse of a right of protection for a trademark. The right of protection for a trademark right may be invalidated in whole or in part, if it has been granted contrary to the statutory conditions (as defined in article 164 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments), and the lapse of a right of protection is dependent on the occurrence of other, well-defined conditions (articles 168 and 169 of the IPL). Also the implication of each of these decisions differs – at the ex tunc in the invalidation proceedings, and after fixed period or the occurrence of a particular situation constituting a condition of the lapse.