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Archive for: June, 2008

Advertising of pharmaceuticals, case II GSK 199/08

June 30th, 2008, Tomasz Rychlicki

Apteka przy Ratuszu – Centrum Farmaceutyczne (the pharmacy) in Białystok had published a brochure titled “Megaextracharges” (Megadopłaty) in which it has provided information about promotional prices of medicinal products that were available in “Apteka przy Ratuszu”. The Main Pharmaceutical Inspector (MPI) – the central organ of the Polish administration which has the authorithy to supervise compliance with the regulations of Pharmaceutical Law in the scope of advertisements – has ruled that such advertising is prohibited by the Polish Pharmaceutical Law and has ordered the owners of the pharmacy to cease distribiution of brochures and leaflets.

Article 52 of the Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo farmaceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with later amendments provides definition of advertising.

Advertising a medicinal product shall mean any activity consisting in informing about and encouraging to use the medicinal product

Article 53(1-2) of the PHL allows for limited advertising.

1. Advertising of a medicinal product must not be misleading, it shall show the medicinal product objectively and it shall inform about its rational application.

2. Advertising of a medicinal product can not consist of offering or promising of any benefits, in direct or indirect way, in exchange for product’s purchase or delivery of proofs that the product was purchased.

The owners filled a complaint before the Voivodeship Administrative Court (VAC) in Warsaw. The Court overruled the MPI’s decision and held that the disputed brochures provided information only about the possibility to buy cheap medicines which, in consequence, did not fulfil the definition of “advertising of a medicinal product” as provided in Article 52 of the PPL. The VAC did not find any circumstances of “encouragement to buy” in those promotional materials.

The MPI filled a cassation complaint before the Supreme Administrative Court. The SAC agreed with the Main Pharmaceutical Inspector and held that the lower court should assess not only the visual incentive to buy, but also the “actual intention”, while testing the differences between information and advertising.

The Supreme Administrative Court in a judgment of of 26 June 2008, case file II GSK 199/08 clearly noted that prices promotions encouraging to medicinal products purchases in a specific pharmacy are the advertising of a medicinal product and a company which applies it.

Trade mark law, case II GSK 252/06

June 30th, 2008, Tomasz Rychlicki

Imperial Tobacco Limited from the UK requested the Polish Patent Office (PPO) to decide in litigation procedure on the lapse of a right of protection for MOON R-91725 trade mark owned by Polish company Altadis Polska S.A. The British company based its legal interest on the fact the it has applied for recognition on the territory of the Republic of Poland of the protection for the international trademarks with the word element MOON IR-811335, IR-812000, IR-811953 and IR-811992, intended to designate goods in class 34 and desire to use in Poland, their MOON trade marks. Imperial also pointed out that MOON R-91725 trade mark was not used on Polish territory in the way that is required by law.

Altadis demanded the dismissal of the request. Polish company argued that Imperial has no legal interest in seeking the lapse of a right of protection for MOON R-91725 trade mark, because John Player & Sons Limited of Ireland is the company entitled to the international registration of trade marks.

The PPO dismissed the request and PPO’s decision was upheld by the Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 March 2006, case file VI SA/Wa 2048/05. The VAC bases its reasoning on the lack of legal interest. Imperial filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 February 2007 case file II GSK 252/06 held that the entrepreneur who plans to place on the domestic market identical or similar goods bearing a sign that is identical or similar to registered but unused trademark, has a legal interest in requesting the PPO for the decision on the lapse of a right of protection for the trade mark because of its non-use by the holder, provided, however, that such entrepreneur will demonstrate that its intention is real and genuine, especially if it’s a manufacturer of such goods and introduces them to a common market under the sign.

Industrial design law, case VI SA/Wa 543/08

June 28th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 10 June 2008, case file VI SA/Wa 543/08, wrongly named the design rights calling it “the right of protection” but the proper legal terminology is “the right in registration” according to article 105 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.

Article 105
1. For an industrial design a right in registration may be granted.

2. The right in registration shall confer the exclusive right to exploit the industrial design for profit or for professional purposes throughout the territory of the Republic of Poland.

3. The holder shall enjoy the right to prevent any third party from making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

4. The right conferred by the registration of an industrial design shall include any design which does not produce on the informed user a different overall impression. Article 104(2) shall apply accordingly.

5. The right conferred by the registration of an industrial design shall be limited to the kind of products, in respect of which the protection has been applied for.

6. Subject to Article 111, the term of a right in registration shall be 25 years counted from the date of filing of an industrial design application with the Patent Office, the said term being divided into 5-year periods.

Procedural law, case VI SA/Wa 2091/07

June 27th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 20 March 2008 case file VI SA/Wa 2091/07 held that the restoration of a deadline/time limit is an institution aimed at protecting individuals against the consequences of failure to fulfill the term. It applies only to procedural time limits and to deadlines to perform proper actions in the proceedings, for example, the deadline for lodging an appeal. Article 252 of the IPL excluded the application of the provisions of the APC in matters governed by the IPL.

Article 252
Subject to Article 253, the provisions of the Code of Administrative Procedure shall apply accordingly to cases not regulated by this Law.

The Court ruled that it is possible for a party to file a request for the re-examination of the case even if that case ended with the decision that has beneficial consequences for the requesting party. In the opinion of the Court there are no provisions forbidding to challenge decisions favorable to the party. See also “Procedural law, case VI SA/Wa 934/10“.

Trade mark law, case II GSK 185/08

June 23rd, 2008, Tomasz Rychlicki

Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa objected to the trade mark application for SPIRYTUS REKTYFIKOWANY PL 1784, R-134685, filed by POLMOS LANCUT SA. Polmos in Warszawa claimed priority of an earlier trade mark – SPIRYTUS REKTYFIKOWANY, R-63628.

R-63628

SPIRYTUS REKTYFIKOWANY was bought by Polmos in Warsaw during an auction held by the Polish Ministry of the Treasury. All Polmos companies agreed in 1999 that they would not use trade marks owned by others in the Polmos “group”.

The Polish Patent Office (the PPO) decided that the contested mark had no distinctive character and it only indicated a specific kind of alcohol and method of production. Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa lodged a complaint before the District Administrative Court in Warsaw seeking to annul the PPO’s decision. However, the Court sided with the PPO’s findings and rejected the complaint. The Court held that both signs were word-figurative marks and should be perceived and examined as whole.

R-134685

Polmos in Warszawa filed a cassation complaint before the Supreme Administrative Court in Warsaw. It supported its position with an argument that SPIRYTUS REKTYFIKOWANY acquired secondary meaning and had a good reputation bacause of the use during the course of trade. The Supreme Administrative Court in its judgment of 18 June 2008, case file II GSK 185/08 did not agree with such statements and rejected the complaint. The Court found that Polmos in Warszawa was seeking exclusive rights in the spirytus rektyfikowany sign, which was a purely informative term to be found in Polish dictionaries and official norms.

This case is the leading example of problems with trade mark portfolios of companies that were privatized in Poland after 1990. Polmos was state-owned monopoly, controlling the Polish market of spirits and other alcohols from middle ’20s until 1990, when it was divided and privatized into several independent companies.

Trade mark law, case VI SA/Wa 517/08

June 20th, 2008, Tomasz Rychlicki

The recent judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 6 June 2008, case act signature VI SA/Wa 517/08 acknowledged that the Nice Classification should be used as an auxiliary tool to decide about of the same kind of goods which is also in the accordance with article 2(1) of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Subject to the requirements prescribed by this Agreement, the effect of the Classification shall be that attributed to it by each country of the Special Union. In particular, the Classification shall not bind the countries of the Special Union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks.

HIRSCH-POL Sp. z o.o., filed before the Polish Patent Office (PPO) a request for partial cancellation of the trade mark rights for PRYMUS R-144135 trade mark owned by Krzysztof Moska and registered for classes 01, 02, 04, 16, 17, 19, 35 and 39. HIRSCH-POL Sp. z o.o. was claiming the priority of an earlier registered trade mark PRYMUS R-136008 in class 2. The PPO dismissed the request. HIRSCH-POL logged a complaint to the Voivodeship Administration Court in Warsaw.

The Court overruled the contested decision, finding that the PPO did not establish the scope of a protection for the PRYMUS sign and the Nice Classification is only an auxiliary tool to decide whether goods are of the same kind. Following the judgment, the PPO cancelled Moska’s trade mark in classes requested by HIRSCH-POL. This time Mr Moska lodged a complaint before the VAC, claiming violation of administrative procedure’s rules and violation of the rule of “certainty and confidence of State’s bodies”. The Voivodeship Administration Court in Warsaw held that the contested sign may lead to consumers’ confusion with regard to the origin of goods and that its previous conclusions which applied to the Nice Classification were correct.

Advertising of pharmaceuticals, case VII SA/Wa 556/08

June 19th, 2008, Tomasz Rychlicki

US Pharmacia has commissioned a TV spot for Stoperan – a diarrhoea drug. The ad’s message promised an immediate effect and cure. The Main Pharmaceutical Inspector – the central organ of the Polish administration which has an authorithy to supervise compliance with the regulations of Pharmaceutical Law in the scope of advertisement, has ruled that this advertising spot was contrary to the charactersitics of the drug, because Stoperan works in 1-3 hours and achieves a therapeutic effect after 48-72 hours. In short, it does not cure, though it overcomes the cause.

US Pharmacia has appealed against the MPI’s decision, claiming that it has ceased the broadcasting and screening of the contested ads. The new version had the questioned parts removed and replaced by other to which the MPI did not submit any objections.

However, the Voivodeship Administrative Court has ruled that the MPI had the right to order the cessation of a medicinal product’s advertisement where it was contrary to the current legal regulations and US Pharmacia has violated the provisions of article 55 and 56 of the Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa Prawo farmaceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2004 No. 53, item 533, with later amendments.

Article 55
Advertisements of medicinal products should not be misleading, should objectively present a medicinal product and inform of its rational application.
(…)
Advertisements of a medicinal product addressed to the general public also cannot include any contents that would:
(…) assure that taking a given medicine guarantees an appropriate effect, it is not accompanied by any undesirable effects or that effect is better or the same as in the case of another method of treatment or treatment with the use of another medicinal product;
(…)
Article 56
It shall be prohibited to advertise medicinal products:
1) not authorized to turnover on the territory of the Republic of Poland;
2) containing information inconsistent with the approved Characteristics of the Medicinal Product.

The judgment of the Voivodeship Administrative Court in Warsaw of 17 June 2008, case file VII SA/Wa 556/08 is not final. The parties have a right to file a cassation complaint to the Supreme Administrative Court.

Trade mark law, case VI SA/Wa 1791/07

June 19th, 2008, Tomasz Rychlicki

In March 2005 the Polish Patent Office (PPO) issued a decision in which it granted a trade mark right for the word-figurative MILEA trade mark R-162082 in classes 3, 5 and 16 to Ogólnopolskie Centrum Dystrybucji HURT-SERWIS Spółka z o.o.. Nivea Polska Spółka Akcyjna – the owner of NIVEA trade mark and German company Beiersdorf AG opposed this registration in classes 3 and 5. The opponents claimed that MILEA mark was confusingly similar to the NIVEA R-23977 mark for which trade mark rights have been held since 1933 and which acquired the status of a well-known trade mark, having a good reputation in the Republic of Poland. Accordingly the owner had registered MILEA mark in bad faith to take the advantage of fame and repute of the earlier mark.

This case concerned provisions of article 132(2)(iii) 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.

A right of protection for a trade mark shall not be granted, if the trade mark
… is identical or similar to a well-known trade mark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trade mark. The above provision shall apply to well-known trade marks accordingly.

The PPO examined both marks in the visual, aural and conceptual aspects and did not find any similarity. The owner of the mark claimed that goods for which both marks are registered differed. The PPO and the Court did follow such argumentation. The Court also ruled that present consumers are better educated and well-informed, which in consequence does not lead to confusion as regards the origin of goods. Based its findings on the fact that both marks are not similar the Court did not find any circumstance of bad faith in the owner’s action.

Judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 24 February 2008, case file VI SA/Wa 1791/07.

Trade mark law, case II CSK 428/06

June 18th, 2008, Tomasz Rychlicki

The Supreme Court Civil Chamber in its judgment of 7 March 2008, case file II CSK 428/06 ruled that the fact that the company has been operating on the Polish market for several years, has a rich tradition, and its trade marks are well known because of the long-term mass production, continuous use and continuous presence in the market, advertising, and customers and that they will associate the sign and its manufacturer with a product, cannot determine the method of accepting these signs to the category of reputed trade marks.

The selection of reputable trade marks is made by using a different criterion than the one which help to distinguish a group of well-known trade marks. The Reputation of the trade mean its attractiveness, the value of advertising and the ability to stimulate the sales of goods marked. It is therefore a criterion referring to the particular quality of a mark rather than to the degree of knowledge about such sign. It expresses the opinion that a reputable sign, which – unlike trade marks used as the indication of origin – implements a “clean” function of attracting customers. In the absence of legal definition, a reputed trade mark should therefore be assess according to the abovementioned criteria, rather than by knowledge in the market that provides the basis for a well known trade marks.

Trade mark law, case VI SA/Wa 262/08

June 17th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 30 April 2008 case file VI SA/Wa 262/08, published in LEX under the no. 512901, held that the interests of all market participants must also taken into account when examining the registrability of a trade mark. The grant of the right of protection for a trade mark cannot lead for the monopolization by one entrepreneur of signs that are in the public domain. This case concerned the examination proceedings of the word trade mark polbar Z-278236 that was applied for by Akademia Rolnicza from Lublin. The word “polbar” is used as the name of the hens’ breed.

Trade mark law, case VI SA/Wa 845/05

June 9th, 2008, Tomasz Rychlicki

Valentino filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for Valentino R-137628 trade mark that was registered in classes 35 39 for Orzechowski Wiesław Firma ASTRO from Gdynia. Valentino argued that Astro infringed on the principles of social coexistence, as it sought to use the reputation of the trademarks and trade names owned by Valentino. Granting the right of protection, thus placing on the same field of economic activity a very similar trade mark would threaten the interests of Valentino, and it would be also contrary to the institution of a trade mark.

IR-645346

The PPO dismissed the opposition and ruled that Valentino did not prove the reputation of its trade marks and due to the different classes there is no risk of consumers confusion, however the goods and services are complementary. The PPO noted also that the questioned trade mark differs from these owned by Valentino because elements such as V, Val, or Zone are exposed which makes them the dominant elements in these trade marsk, and they attract the attention of the public, turning their attention from the less visible Valentino word. Valentino filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 8 November 2005 case file VI SA/Wa 845/05 overturned the decision and held it unenforceable. The VAC ruled that the most visible element in all trade marks in this case is the word Valentino, and verbal elements have the dominant position. The Court also noted that reputation of a trade mark is not dependent on the borders of individual countries or regions. The PPO should examine the evidence submitted by Valentino and it should assess the impact of the existence of a foreign reputed trade mark for its operation in Poland because Valentino could be uninterested of its expansion into the Polish territory, and in the situation if it were interested it could be overtaken by unauthorized entry. The Court agreed also that there was an infringement of the company name.

Trade mark law, case VI SA/Wa 1626/05

June 8th, 2008, Tomasz Rychlicki

Toyota Corp. filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection for lexus R-140774 trade mark that was registered for Lubuska Wytwórnia Wódek Gatunkowych “POLMOS” w Zielonej Górze for goods in Class 33 such as alcohols. Toyota argued that this registration was made in bad faith as parasitic use of the reputation of its renown trademarks. The PPO dismissed the opposition and Toyota filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 March 2006 case file VI SA/Wa 1626/05 overturned the questioned decision and held it unenforceable. The VAC ruled that the reputation of a trade mark means nothing more than its attractive strength, the value of advertising and generally positive perceptions of consumers. The protection of reputed trade marks may occur outside the similarity of the goods. Furthermore, as it was noted in the judgment of the Voivodeship Administrative Court of 8 November 2005, case file VI SA/Wa 845/05, the reputation of a trade mark is not dependent on the borders of countries or regions.

Trade mark law, case VI SA/Wa 805/05

June 3rd, 2008, Tomasz Rychlicki

The Voivodeship Court in Warsaw in its judgment of 22 February 2006, case file VI SA/Wa 805/05 held that trade marks that are meant as signs for clothes (among other things for pants) resemble to each other to the extent that it may lead into the confusion of a consumer as regard to origin of goods in the regular course of trade, as defined in the article 9 sec. 1 pt 1 and pt 2 of the Act of 31 January 1985 on Trade marks, Journal of Laws (Dziennik Ustaw) No 5, item 17 with subsequent amendments.

US TM 1139254

Such situation happened because both trade marks include horizontal seams crossing down the pocket which in its shapes reasemble seagull’s (eagle) wings, and where such element is simultaneously predominant for both signs.