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Archive for: April, 2008

Non-traditional trademarks in Polish case law

April 30th, 2008, Tomasz Rychlicki

Last updated on 11 January 2010.

This post was inspired by a question and request I have recieved from my nice friend. I must admit that the Polish case law is not too rich in decisions regarding the issue of non-traditional trade marks, however some judgments are worth mentioning.

Three-dimensional marks

The judgment of the Supreme Administrative Court (SAC) of 29 June 2005, case act signature II GSK 92/05.

The interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

This judgment concerned
R-116211

Trade dress

The judgment of the Provincial (Voivodeship/District) Administrative Court (VAC) in Warsaw of 2 March 2006, case act signature VI SA/Wa 1705/05.

I. According to article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
II. There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation.
III. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9 sec. 1 pt 1 and 2 of the Act on Trade marks, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions.

and the judgment of the Supreme Administrative Court of 20 February 2007, case act signature II GSK 247/06, in which the SAC rejected a cassation complaint brought by the K. Company.

It can not be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer.

This judgment concerned TERRAVITA trade mark R-142204.

I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark? We may discuss.

Single colour

The judgment of the Provincial (Voivodeship/District) Administrative Court in Warsaw of 3 August 2005, case act signature VI SA/Wa 1482/04. This judgment concerned separate Color RED Pantone 485 C for goods in class 30 such as confectionery, chocolate confectionery, sweets.

A single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.

The judgment of the Voivodeship Administrative Court in Warsaw of 31 October 2006, case act signature VI SA/Wa 1420/06. This judgment concerned separate Color RED Pantone C32, IR-803195.

1. While examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for.

2. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.

3. It is difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies.

Composition of colours

The judgment of the Supreme Administrative Court of 23 November 2004, case act signature GSK 864/04. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks. The sign was presented as double coulour composition (lower part in orange, top part in white).

According to article 4 sec. 1 and article. 7 sec. 1 of the Act on 31 January 1985 on Trade marks, undefined trademark, which is not represented in one form, does not possess any sufficient ability to distinguish goods.

The judgment of the Supreme Court of 3 June 2009, case act signature IV CSK 61/09. This judgment concerned inter alia trade mark registrations for color trade marks. For instance R-115842 and R-115843.

R-115842 R-115843

Combination of colors can be a protected trademark in Poland.

I will try to update this post everytime I got any interesting judgment. Stay tuned.

Drugs and trademarks in Poland

April 30th, 2008, Tomasz Rychlicki

Some tips for trademark owners and their plenipotentiaries are available in the recent post published at Class46 website.

Categories: Class46 post | Polish law | brands | trademark law.

Poland: trade marks for medicines

April 30th, 2008, Tomasz Rychlicki

All readers who are going to apply for trade mark registration for medicines in the Republic of Poland should consider not only the Act on Industrial Property Law and its related Regulations but also the procedure and requirements set by the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products (OFROMPMDABP — now that’s an abbreviation) if they want to avoid any headache.

OFROMPMDABP is a government agency competent for matters related to evaluation of quality, efficacy and safety of medicinal products, medical devices and biocidal products. Trade mark owners should be aware of the existence of the announcement (this is a PDF file in Polish language) issued by the President of the Office on 12 March 2008. This document applies to the process of medicinal product naming and the substitution of names that were already issued.

New name of a medicine product should differ from earlier registered product’s name in at least 3 letters and the new name can not include the sequence of more then two of the same letters. The applicant is required to issue a justified written statement in case of seeking a waiver from the above mentioned rules.
New name can not lead to likelihood on confusion (in print, spelling and pronunciation) with regard to earlier registered name.
New name can not give any promotion or advertising information related to application process.
Signs such as ® and “TM” can not be a part of a new name.

Categories: Class46 post | Polish law | medicinal product | trademark law.

Enforcing EULAs

April 29th, 2008, Tomasz Rychlicki

Selling botnets for particular attacks, black markets for stolen identities, and malware construction kits are all now par for the course for the increasingly commercial malware industry. Discovering that malware authors have actually turned to End-User License Agreements (EULAs) in an attempt to protect their own intellectual property, however, most definitely qualifies as something new, different, and beautifully ironic.

More details in the article available at arstechnica.com website.

What about the eforcement of such “agreement” and the US courts? I guess there is no dubt that such contract would be deemed as null and void. See holding in the case Weisbren v. Peppercorn Prods., Inc., 41 Cal. App. 4th 246, 262, 48 Cal. Rptr. 2d 437, 447 (1995), citing Lewis & Queen v. N.M. Ball Sons, 48 Cal. 2d 141, 150, 308 P.2d 713, 719 (1957).

The courts generally will not enforce an illegal bargain or lend their assistance to a party who seeks compensation for an illegal act. The reason for this refusal is not that the courts are unaware of possible injustice between the parties, and that the defendant may be left in possession of some benefit he should in good conscience turn over to the plaintiff, but that this consideration is outweighed by the importance of deterring illegal conduct. Knowing that they will receive no help from the courts and must trust completely to each other’s good faith, the parties are less likely to enter an illegal arrangement in the first place.

Categories: US law | computer crime | computer law | contract law | criminal law.

Poland: Nice Classification in proceedings

April 28th, 2008, Tomasz Rychlicki

On 15 April 2003 the Polish Patent Office (PPO) received a request filed by Kosmetyczno Lekarska Spółdzielnia Pracy IZIS from Warsaw to declare the lapse of protection rights for the AMBER R-98839 trade mark registered for Evyap Sabun,Yag,Gliserin Sanayi Ve Ticaret A.S., Istambuł (Turkey) in class 3 for goods such as bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. This trade mark was registered on 19 November 1997, with priority date as of 9 February 1994. The request was based on non-use of AMBER trade mark.

IZIS justified its legal interest in requesting the PPO to decide on the lapse of the right of protection because it is the manufacturer of products in class 3 (cosmetics: creams, cosmetics milks, lotions, tonics) that are labeled with AMBER sign and because of the fact that the Polish Patent Office rejected IZIS’s request of 10 April 2003 for invalidation of the right of protection of the disputed trade mark, and held that the AMBER R-98839 trade mark was an obstacle to the application for registration of IZIS word trademark AMBER – IZIS, Z-161082.

During the proceedings before the PPO the Turkish company submitted evidence of actual use of the disputed trade mark only in respect of soaps. On 5 April 2003 the PPO ruled on the lapse of the right of protection for AMBER R-98839 for goods in class 3 such as “cosmetics”. The Turkish company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC rejected the motion in its decision of 10 March 2008, case file VI SA/Wa 1811/07. The Court held that the term “cosmetics” covers a wide range of cosmetics products intended for various use: industrial, cleaning, protective or fragrance and beautification. The fact that soaps are within the scope of “cosmetics” did not justify the findings of an actual use of the disputed trade mark in respect for all cosmetics where the mark is actually used only in respect of soaps, which were, moreover, identified by the applicant in the description of goods right next to cosmetics. The court also noted that according to article 169(6) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Where a proceeding for the declaration of the right of protection lapsed is initiated, the burden of proof that the trademark has been used or that serious reasons for non-use of the trade mark exist shall be on the holder of the right of protection.

Or as the Court said, passivity during the burden of proof is the problem of the trade mark holder. In this case, the Turkish company during proceedings before the Polish Patent Office has not disclosed the existence of valid reasons for non-use, for any goods except soap. The company from Turkey filed a cassation complaint before the Supreme Administrative Court (SAC). The SAC in its judgment of 3 February 2009, case file II GSK 698/08 held that The Nice Classification of goods is not conclusive as to the nature of goods belonging to each of the classes. It has only an auxiliary nature during the process of formulation of lists of goods for signs that were applied for to the Patent Office as to organize the goods and services in accordance to its characteristics.

In case of a dispute before the Patent Office in proceedings for the declaration of lapse of the rights of protection for trade mark as regards to the part of the goods, as a result of non-use of a registered trade mark, it is required to assess the actual attribiution of the disputed goods to a category, regardless of how it the list of these goods was drawn up.

In SAC’s opinion, the Polish Patent Office, followed by the first instance court, have failed to analyze the similarity of the goods for which AMBER trade mark has been registered for and their attribution to a given category. Both the PPO and the VAC did not answer the most important question do soap and cosmetics belong to the same category of goods? It was required by the PPO to assess what is the actual attribution of the disputed goods to what category, regardless of how the list of these goods was done. If you lodge a complaint on the decision of the Polish Patent Office, the first instance court (the VAC) is obliged to review the decision in terms of its compliance with the substantive law and rules of conduct.

The Supreme Administrative Court annulled the contested judgment, and ordered the District Administrative Court in Warsaw to reconsider the case.

Poland: e-filing for trade marks applications

April 28th, 2008, Tomasz Rychlicki

There are recent changes in the procedure of filing trade mark applications before the Polish Patent Office. According to the Regulation of the Prime Minister dated 15 May 2008 on filing and processing of patent applications, applications for medicinal products and plant protection products, utility model applications, industrial designs applications, trade mark applications, geographical indications applications, topography of integrated circuits applications and keeping correspondence in electronic form, published in Journal of Laws (Dziennik Ustaw) of 23 May 2008, No 89 item 540, all applications should be filed in e-forms that are available through the PPO website and are prepared in software and in compatibility with formats used by the Polish Patent Office. The use of other computer programs to prepare filing applications requires the approval of the PPO. This Regulation will enter into force on 7 June 2008.

The PPO had also published (DOC file) an English version of table of fees established in the Regulation of the Council of Ministries dated 26 February 2008 amending the regulation on fees relating to the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits.

Single fees (fees are in Polish złoty – to check rates use google.com services or exchange rates provided by the National Bank of Poland):

For trademark application up to three classes of goods according to applicable classification of goods and services – 550,00*
for each class in excess of three – 120,00
for declaration of priority – for each priority claimed – 100,00
For electronic filing of trademark application up to three classes of goods according to applicable classification of goods and services – 500,00*
for each class in excess of three – 120,00
for declaration of priority – for each priority claimed – 100,00
For request for conversion of international registration into national application – 550,00
For request for conversion of Community trademark application into national application – 550,00
For transmittal of Community trademark application – 120,00
For division of application – for each additional application – 550,00
For request for postponement of the payment of a fee – 60,00
For request for restoration of a time limit or the excuse of non-observance of a time limit because of exceptional circumstances occurred – 80,00
For request for re-examination of the matter:
in connection with an order issued** – 50,00
in connection with a decision taken – 100,00
For publication of the mention of grant of right of protection – 90,00
For issuance of a duplicate of certificate of protection: – 100,00
For excerpt from the register: with current legal status with modified or removed information added – 60,00
100,00
For preparation of priority document – 60,00
For request for making a change in the register – for each change made – 70,00
For request for replacement of national registration with international registration – 50,00
For request for transformation of trademark into collective trademark, collective guarantee trademark or trademark protected with one collective right of protection – 500,00
For request for filing a request by the Patent Office of the Republic of Poland for entry in the international register of a change concerning international trademark registration – 200,00
For notice of opposition 1000,00
For request for taking a decision in litigation proceedings – 1000,00
For request for lodging a complaint to Administration Court – 1000,00
For request for international registration – 600,00
For request for registration renewal – 200,00
Additional fee for late submission of request for registration renewal – 300,00
For request for sending communications to addresses additionally indicated (Article 241(2)) – for each additional address – 200,00

* In case of collective trademark, collective guarantee trademark or trademark filed for collective right of protection – the amount of the fee is subject of increase of 100%
** this does not apply to requests for the exemption from the payment of a fee

I have previously informed P.T. readers about higher fees for trade marks’ applications in Poland in a post entitled “Poland: higher fees for trade marks“.

April 28th, 2008, Tomasz Rychlicki

Nadia Plesner is an illustrator and she creates nice artworks. On October 2007 she started “Simple Living” campaingn to raise awareness of the ongoing genocide in Darfur and to raise money for the helping organization “Divest for Darfur”. Louis Vuitton’s laywers have contacted Nadia claiming that one of hers illustrations (see this post’s subject) allegedly infringes LV “intellectual property”. There is one Polish motive in this case. Nadia told Louis Vuitton’s lawyers about Polish artist’s work done with Lego bricks. Ms Plesner wrote about Zbigniewa Libera and his LEGO Concentration Camp. JPG file, 105 KB.

Categories: brands | copyright law | copyright misuse | trademark law.

Untraceable.R5.XviD-iNQONTROL

April 25th, 2008, Tomasz Rychlicki

I saw Untraceable. I read a review which is available in the article at www.washingtonpost.com website. I know this is “Hollywood style” so I ask you to treat this post with a pinch of salt. The best and the most funniest parts?

BOX
But why’d he pick Restom, when he had 434 other dishonest, yellowtied douche bags to choose from?

MARSH
Good question.

Box throws her a smile, unused to the compliment.

MARSH (cont’d)
I know because I asked it myself.
(beat)
The Director testified before him once. Restom sits on the House Judiciary Committee. He’s a huge supporter of Net Neutrality. All traffic treated equally. No restriction on content.

BOX.
You’d think the piece of shit would be for that.

MARSH
Yeah, you would.

Was it hidden propaganda against Net Neutrality? Nah, I do not want to act like people searching for some conspiracy theories so I found better part.

Elmer is led into the room by the other Officer. Box sees stacks of DVD’s everywhere, all bearing handwritten labels.

BOX (cont’d)
You like movies, huh?

ELMER
Who doesn’t?

BOX
Me. You burn your own, huh?

Box pops a DVD in a player and hits play.

BOX (cont’d)
That’s illegal.

Elmer smirks. Box hits pause, freezing the FBI WARNING about illegal copying. He throws Elmer a dead-serious glance.

The movie ends with a very important question that was asked during final chat.

Where can I download this movie?

My simple answer is www.thepiratebay.org and the trailer is available for free and without the risk of being prosecuted. :)

See this movie on YouTube:

US copyright and legal acts

April 25th, 2008, Tomasz Rychlicki

This is with regard to my post entitled “The law is not for the People!“. 17 U.S.C § 105. “Subject matter of copyright: United States Government works” provides that:

Copyright protection under this title is not available for any work of the United States Government, but the United States Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest, or otherwise.

The issue is a little bit complicated. Some questions and problems were already mentioned in the House Report, H.R. Rep. No. 94-1476, 94th Cong. 2d Sess. 58-59 (1976).

Section 105. U.S. Government Works

Scope of the prohibition

The basic premise of section 105 of the bill is the same as that of section 8 of the present law—that works produced for the U.S Government by its officers and employees should not be subject to copyright. The provision applies the principle equally to unpublished and published works.

The general prohibition against copyright in section 105 applies to “any work of the United States Government,” which is defined in section 101 as “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” Under this definition a Government official or employee would not be prevented from securing copyright in a work written at that person’s own volition and outside his or her duties, even though the subject matter involves the Government work or professional field of the official or employee. Although the wording of the definition of “work of the United States Government” differs somewhat from that of the definition of “work made for hire,” the concepts are intended to be construed in the same way.

A more difficult and far-reaching problem is whether the definition should be broadened to prohibit copyright in works prepared under U.S. Government contract or grant. As the bill is written, the Government agency concerned could determine in each case whether to allow an independent contractor or grantee to secure copyright in works prepared in whole or in part with the use of Government funds. The argument that has been made against allowing copyright in this situation is that the public should not be required to pay a “double subsidy,” and that it is inconsistent to prohibit copyright in works by Government employees while permitting private copyrights in a growing body of works created by persons who are paid with Government funds. Those arguing in favor of potential copyright protection have stressed the importance of copyright as an incentive to creation and dissemination in this situation, and the basically different policy considerations applicable to works written by Government employees and those applicable to works prepared by private organizations with the use of Federal funds.

The bill deliberately avoids making any sort of outright, unqualified prohibition against copyright in works prepared under Government contractor grant. There may well be cases where it would be in the public interest to deny copyright in the writings generated by Government research contracts and the like; it can be assumed that, where a Government agency commissions a work for its own use merely as an alternative to having one of its own employees prepare the work, the right to secure a private copyright would be withheld. However, there are almost certainly many other cases where the denial of copyright protection would be unfair or would hamper the production and publication of important works. Where, under the particular circumstances, Congress or the agency involved finds that the need to have a work freely available outweighs the need of the private author to secure copyright, the problem can be dealt with by specific legislation, agency regulations, or contractual restrictions.

The prohibition on copyright protection for United States Government works is not intended to have any effect on protection of these works abroad. Works of the governments of most other countries are copyrighted. There are no valid policy reasons for denying such protection to United States Government works in foreign countries, or for precluding the Government from making licenses for the use of its works abroad.

The effect of section 105 is intended to place all works of the United States Government, published or unpublished, in the public domain. This means that the individual Government official or employee who wrote the work could not secure copyright in it or restrain its dissemination by the Government or anyone else, but it also means that, as far as the copyright law is concerned, the Government could not restrain the employee or official from disseminating the work if he or she chooses to do so. The use of the term “work of the United States Government” does not mean that a work falling within the definition of that term is the property of the U.S. Government.

The problem of states’ copyright claims to legal acts was discussed in the American case-law. There are two judgments dealing with this problem that are worth reading. The judgment in County of Suffolk v. First Am. Real Estate Solutions, 261 F.3d 179 (2d Cir. N.Y. 2001) and Veeck v. S. Bldg. Code Cong. Int’l, 293 F.3d 791 (5th Cir. en banc 2002), US Supreme Court certiorari denied by, Motion granted by S. Bldg. Code v. Veeck, 2003 U.S. LEXIS 5186 (U.S., June 27, 2003). Bill Patry has some brilliant comments as usually.

Categories: 17 U.S.C. | US law | copyright law.

Poland: it is all about the date

April 23rd, 2008, Tomasz Rychlicki

The judgment of the Polish Supreme Administrative Court (SAC) of 23 April 2008, case file II GPS 1/08.

According to Article 169(1)(i) of the Act on Industrial Property Law, the date of lapse of the right of protection for a trade mark is set on the last day of a period of five successive years, counting from the first date of non-use.

Article 169(1)(i) 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 Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with later amendments.

1. The right of protection for a trade mark shall also lapse:

(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years, unless serious reasons of non-use thereof exist; …

The Polish Supreme Administrative Court has been asked the following important question: should the date of lapse of the right of protection for a trade mark be the last day of a period of five successive years (as mentioned in article 169(1)(i) of the IPL) or the day when the motion to declare the expiration of trade mark rights was filled, if the period of five successive years of non-use of a registered trade mark was longer then five years?