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Archive for: March, 2008

Press law, case IV KK 174/07

March 31st, 2008, Tomasz Rychlicki

The Supreme Court in its order of 27 July 2007 case file IV KK 0174/07 held that publishing news within Internet website which was available under szyciepoprzemysku.prv.pl domain name, is the deemed as equivalent to press publishing. They were charged by the Prosecutor for publishing the press without registration which was the breach of the provisions of Article 45 of the Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), published in Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendmets.

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.

All periodicals and newspapers must be registered at a local court and the registration form must contain: title of the publication, address of the editorial office, personal data of the editor-in-chief, the name and address of the publisher and frequency of publication. The Supreme Court stated that it is undisputed that the newspapers and magazines by the fact that they appear in the form of Internet transmission do not lose their characteristic of the press title, both when online communication is accompanied by the transfer of messages established on paper, printed, being their different electronic form which is available online and when the message exists only in electronic form on the Internet, but appears periodically, meeting the requirements referred to in Article 7(2) of the APL.

A daily is a general-information periodical print or a message transmitted via sound or sound and image published more frequently than once a week.

The Supreme Court once again stressed that the precondition for the recognition of mass media as the press, resulting from technical progress, depends on the periodic dissemination of publications and communications periodicals distributed via the Internet may take the form of newspapers or magazines, depending on the interval of appearance.

See also “Press law, case II K 367/08“.

Trade mark law, case II GSK 309/07

March 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 March 2007, case file VI SA/Wa 1998/06 ruled that the source of legal interest to seek a declaration on the lapse of the right of protection for a trade mark may be general rules of law that create the right of establishment of business activity (article 20 and article 22 of the Constitution of the Republic of Poland). However, any person requesting the Patent Office to make a decision on the lapse of the right of protection for the trade mark must prove, on pain of dismissal of such application, that the disputed trade mark limits business activity of an applicant, or it has negative impact the legal situation of the applicant. This case concerned ION R-110244 and ION WEST R-11020 trade marks.

The court deciding this case was aware that divergent views on the subject of legal interests are presented both in the legal doctrine and the case-law. One part of the legal doctrine and practising lawyers believes that a lack of legal interest justyfies the issuance of a refusal based on the formal reasons, and another part’s view is that in this case, the PPO should take the decision to discontinue the proceedings. The court cited the judgment of the Supreme Administrative Court of 7 September 1989, act signature SA/Ka 441/89 and its critical gloss written by Barbara Adamiak, published in OSP 1991/2/33.

The Supreme Administrative Court in its judgment of 25 January 2008 case file II GSK 309/07 ruled that the request for a referral to the Court of Justice regarding the question whether the article 12(1) of First Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the Laws of the Member States Relating to Trade Marks allows Member States to introduce into the national law an additional substantial prerequisite regarding the legitimate interest, limiting the class of persons allowed to seek for a declaration on the lapse of the right of protection for a trade mark that was failed to be put to genuine use to those who are able to demonstrate their interest and depriving such possibility the business entities having the actual interest, including economic one, is unfounded.

Trade mark law, case II GSK 305/06

March 28th, 2008, Tomasz Rychlicki

The Polish Patent Office in its decision of 15 March 2005 case Sp. 24/01 invalidated the trade mark R-116334 that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in Class 16 such as magazines and books with crosswords and charades, brochures, exercise books. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 May 2006 case file VI SA/Wa 1684/05. TECHNOPOL decided to file a cassation complaint.

R-116334

The Supreme Administrative Court in its judgment of 29 March 2007 case file II GSK 305/06 held that even if the provisions of Article 4(2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, allow for the protection of trade mark consisting of the compositions or combinations of colors, it does not mean that each of such compositions is capable of being registered.

4(1) For the purposes of this Law, a trademark shall be any sign capable of distinguishing the goods or services of a given enterprise from similar goods or services of another enterprise.
(2) The following, in particular, are considered as trademarks: words, designs, ornaments, combinations of colors, plastic forms, melodies or other acoustic signals, and a combination of such elements.

The Court ruled that this sign lacks abstract distinctiveness, because the average recipient is not able to remember both the composition of colors and each color of the edges of sheets i.e. a color scheme, or colored side, due to the commonly used by publishers of books and journals practice of coloring sheets of the books and other periodicals. The lack of abstract distinctiveness excluded the possibility to examine its concrete distinctiveness. The Court noted also that regulations protecting industrial property should be applied by the Polish Patent Office and courts in such a way that their interpretation is consistent with the goals and content of the Directive 89/104, and the jurisdiction of the Court of Justice. This follows from the principle of pro-European interpretation of national law. Its essence is the interpretation of national law, which will achieve an outcome that is consistent with the content or purpose of the provision of Community law. National courts must interpret national law in conformity with Community law “as far as possible”. It means that pro-European interpretation of national law is fully admissible if national legislation does not specify clearly an issue, or if the provisions of Community law are more detailed than these afforded in domestic law.

Procedural law, case VI SA/Wa 1671/07

March 27th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 25 January 2008 case file VI SA/Wa 1671/07 held that if a party has failed to meet the deadline, it is required to prove in the application for retrial that the failure was without its guilt. This conclusion was based on the provisions of Article 243 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 subsequent amendments.

Article 243
1. Unless otherwise stipulated in this Law, where in the course of proceedings a time limit to perform an act requisite, under this Law, for continuance of the proceeding has not been observed, the Patent Office may, at the party’s request, restore the time limit, provided that the party provides a plausible explanation that non-observance was without fault on its part.

2. Subject to paragraph (4), the request referred to in paragraph (1) shall be submitted to the Patent Office within two months from the date on which the reason for non-observance has ceased to exist, however not later than within six months from the date of the expiry of that time limit. At the same time, the requesting party shall be required to perform the act in respect of which the time limit was fixed.

3. A time limit to submit the request referred to in paragraph (2) shall not be restorable.

4. Where a decision has been taken on discontinuance of the proceeding for the reason of failure to observe a time limit for performance of a specified act, that decision, at the party’s request for re-examination of the matter, may be reversed, provided that the party provides in the request a plausible explanation that the non-observance was without fault on its part, while performing, at the same time, the act in respect of which the time limit was fixed.

The Court ruled that the lack of guilt, according to settled case-law of the Supreme Administrative Court appears when the person concerned was not able to remove obstacles using the means normally available without jeopardizing the lives and health of its own and others. The lack of guilt as a condition for the application for restoration of a deadline (a retrial) is associated with the obligation to maintain diligence in carrying out procedural actions and cannot be used as an argument only when the completion of the later action has become impossible because of the obstacle that was difficult to overcome, and was not caused by a party. Thus, the restoration of a deadline may be granted only in an exceptional, emergency situation. For such a situation will not be considered loss of the consignment for unknown reasons, even if this was the first time in 28 years of practice of a patent attorney because the accuracy of the events and circumstances relied upon by the party is questionable. This has not been proven in any way

Categories: Art. 243 IPL | Polish Act on Industrial Property Law | Voivodeship Administrative Court.

Trade mark law, II GSK 298/07

March 19th, 2008, Tomasz Rychlicki

In 2000 the PHU Makroterm K. Wąchała & A. Wąchała applied for the registration of the figurative and word mark MAKROTERM in classes 6, 9, 11 and 42. The Makro Cash and Carry company, who applied for the registration of the figurative and word mark MAKRO in classes 1–45 on 22 March 2000, opposed to the registration. Upon finding the observations groundless, the case was then decided by the Polish Patent Office (PPO).

Makro Cash and Carry claimed that the disputable mark imitated the MAKRO mark, used its renown and infringed the company’s right to a company name. Makroterm in turn said there was no likelihood of confusion since the disputed mark did not use the renown of the MAKRO mark because of the fact that Macro Cash and Carry failed to prove the MAKRO mark had been renowned. The Makroterm representative also said the MAKRO mark had not been universally known.

The PPO overruled MAKRO’s opposition. It decided that in assessing similarity one should not focus solely on one element – the “makro” word. It also said the MAKROTERM mark was one word combining the “makro” and “term” words into an original name that moreover had been put in a colourful design. According to the Office both marks brought about different associations in the minds of the relevant public. It decided that the marks themselves differed and did not examine similarity in goods offered by the companies. The Office also pointed out that the provided advertising materials concerned only the MAKRO CASH AND CARRY mark. With regard to the infringement of the right to a company name it decided the name was a compound one so there could not have been any infringement.

Makro Cash and Carry filed an appeal against the decision of the Polish Patent Office. It read that the Office had not assessed the similarity of goods offered by both companies and with identical goods the criteria for assessing similarity of marks are much stricter. Makro Cash and Carry also said the Polish Patent Office assessed only the differences but it should have assessed similarities.

Makroterm in turn underscored that the universal recognition of the MAKRO sign had not been adequately demonstrated and that the mark had been recognized by a half of the relevant public. It also questioned the research commissioned in 2006 by the MAKRO company.

The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 22 March 2007, case file VI SA/Wa 1325/06, rejected the appeal. The Court held that the PPO had already compared the marks with regard to all three planes and decided that the marks bore fundamental differences. It decided that the “makro” word was a common one and had little distinctive value. Apart from that it found the “term” word much more distinctive, which together with colourful design of the MAKROTERM mark made both marks different.

MAKRO filed a cassation appeal to the Supreme Administrative Court (SAC). The Supreme Court in the judgment of 15 January 2008, case file II GSK 298/07 fully agreed with the earlier judgement of the Voivodeship Court and the decision of the Polish Patent Office. It also decided there was no similarity between the marks that would lead to a confusion neither on the phonetic, nor conceptual, nor figurative plane. The mark also had not infringed the appellant’s right to the name of his company.

Copyright law, case VI ACa 1259/06

March 17th, 2008, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 17 October 2007 case file VI ACa 1259/06 held that the Polish Act of 16 February 2007 on Protection of Competition and Consumers – APCC – (in Polish: Ustawa o ochronie konkurencji i konsumentów), published in Journal of Laws (Dziennik Ustaw) No. 50, item 331, with subsequent amendments, define an entrepreneur very broadly. According to the Court, this definition will even cover such entities whose activity is not associated with a typical business. Therefore, there was no reasons to deny such a status to the Polish Association od Writers and Composers (Stowarzyszenie Autorów – ZAiKS), a collecting society. This argument was confirmed by the Supreme Court in its judgment of 7 April 2004 case file III SK 22/04, published in OSNP 2005/3/46. The Court had no doubt that ZAiKS is active in providing professional services, in a structured and continuous manner, on its behalf, in the field of collective management of assigned copyrights, and thus it participates in business transactions. In applying the provisions of the APCC, “commercial purpose” as the last of the important parameters of economic activity means to obtain certain benefits for the operator of such activities. The use of such obtained benefits is, however, indifferent.

The European Court of Justice in its judgment of 27 March 1974 Case C-127/73 BRT v. SABAM published in ECR 1974, p. 313, ruled that the association of authors can be deemed as an entrepreneur, because an association whose object is to exploit and manage copyrights for gain “pursues a business activity consisting in the provision of services in respect of composers, authors, and publishers”.

It was undisputed that ZAiKS grants licenses for fee, and it also collects appropriate fees for the management of assigned rights. Therefore it has a measurable financial benefits from its activities. The fact that these benefits are fully allocated to the statutory objectives does not mean, in light of the abovementioned comments that ZAiKS work has nothing to do with the commercial objectives. The Court ruled that the Society of Authors ZAiKS being a non-profit organizations, is also a legal person providing services to the public, because it is organizing public access to creative activity, and licenses the use of this creativity. Therefore, ZAiKS is an entrepreneur as defined in the APCC.

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

Unfair competition law, case III CZ 12/07

March 15th, 2008, Tomasz Rychlicki

The Supreme Court in its order of 8 March 2007 case file III CZ 12/07 held that both the claims that are defined in the provisions of Article 18 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), published in Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments, are of financial nature. These are the claim to relinquishment of prohibited practices, and the claim to make one or repeated statement of appropriate content and form.

Categories: Art. 18 CUC | Polish Act on Combating Unfair Competition | Polish courts | Polish Supreme Court.

Trae mark law, case II GSK 380/07

March 5th, 2008, Tomasz Rychlicki

The Polish Patent Office refused to recognize the right of protection for CHECK-UP IR-0595827 registered under the Madrid Agreement Concerning the International Registration of Marks for Zabaione GmbH and used to designate the goods in class 25, such as clothing for men, women and children and bars for clothes. The PPO ruled that the questioned sign is similar to CHECK-IN IR-0552746 trade mark registered with an earlier priority from 19 June 2002, for Hohe-Modelle Maria Hohe GmbH & Co., intended for marking of the goods in Class 25 such as outerwear for ladies and children.

The PPO ruled that to fulfill the provisions of Article 132(2)(ii) of the IPL, it is necessary to accumulate of the several factors: the signs must be similar to each other, the goods for which trade marks are meant should be homogenous, and as the consequence of the similarity of the signs and the goods, there is a risk of confusion as to the origin of the goods covered by those trade marks.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2007, casefile VI SA / Wa 145/07 dismissed the complaint filed by legal predecessor of Zabaione GmbH. In the opinion of the VAC, the Polish Patent Office correctly refused to recognize the right of protection for a trademark CHECK-UP, pointing to its similarity to CHECK-IN trade mark and the similarity of the goods in class 25, and acknowleded that it may lead to the risk of misleading the public. According to the Court, the PPO correctly assessed the similarity of signs, and rightly pointed out that the trade marks are similar to each other both visually and phonetically because of the first parts of the two signs. Both trade marks are composed of two elements, and have the same first part, “CHECK” and accordingly the suffix “UP” in the applicant’s character and the suffix “IN” in the opposed sign interconnected by a hyphen. According to the Court, the signs are also similar in the aural aspect – they are pronounced very similarly. Different suffixes are not sufficient to prove diversity of both signs. These are components are of secondary importance. The court shared the view of the PPO that the recipient pays more attention to the first elements of signs, and less to the endings, because visually the first letters and syllables attract the most attention and are better remembered. The average customer usually does not examine in detail all the elements of the trade mark, but it perceives a given sign as a general impression.

The VAC agreed with the applicant that the two signs have completely different meaning in English, however, the similarity of signs shall be always from the perspective of the average consumer. The knowledge of English in Polish society is not yet sufficiently widespread. For a person who does not speak English language these signs are fanciful.

The Court shared the opinion of the PPO that both signs are intended to designate similar goods in class 25 and the goods are complementary. According to the Court, a customer who knows goods under the brand CHECK-IN, may think the same company introduces a new range of clothing for men, women and children, branded with CHECK-UP trade mark. The Court emphasized the fact that Article 132(2)(ii) of the IPL uses the term “identical or similar goods”, i.e. the similarity of the goods is not identical as their identity. Similarity occurs in the case of goods of the same kind of similar purpose and conditions of sales. Clothes, for which both trade marks are deisgnated are undoubtedly similar goods regardless of their differences in assortment. The average customer can therefore assume that they are produced by the same manufacturer. An outerwear manufacturer of high quality and original clothes designed for specific audiences, could in fact release a new line of clothing of average standard intended for a wider audience, marking it with CHECK-UP trade mark.

Referring to the applicant’s argument that the two signs benefit from protection in Switzerland and Germany, the Court emphasized that protection of trademarks in each country and the guarantee that effective protection is not absolute. The registration under the Madrid Agreement does not mean that a trade mark is protected automatically in each Member State. The applicant is seeking trademark protection on the Polish territory, so Polish law is applicable to the assessment of the trade mark registrability. The Company decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 28 February 2008, case file II GSK 380/07 dismissed the cassation. The SAC noted that the Company has not provided any arguments concerning the erroneous interpretation of Article 132(2)(ii) of the IPL. It did not indicated whether there was the breach of any regulations on administrative proceedings. If there is no infringement of the proceedings, it can not be argued that there is a breach of substantive law, in this case, Article 132(2)(ii), just because the plaintiff thinks the facts are different. The SAC ruled that if the cassation complaint is based on allegation of improper application of a given provision of substantive law, the arguments included in such a complaint should explain why the accepted legal basis for settlement of the contested provision has no relation to the facts established, and what other provision the court should apply.