Polish IP & IT law – copyright trademark computer internet telecomm » 2008

Archive for: July, 2008

Personal rights, case I ACa 385/2006

July 31st, 2008, Tomasz Rychlicki

Update on Februrary 27, 2010.
I reported on a final judgment in Justyna Steczkowska’s case in my post entitled “Personal rights, case I ACa 1176/09“.

My post that was written in Polish language is too long and probably boring for most of you. It concerns Justyna Steczkowska’s naked pictures taken during her holiday at Turkish Rivera and being published by “Super Express”, which is one of many Polish tabliods. I also wrote about some comments that were posted by Polish lawyers regarding the right of privacy issue and I wanted to write a comparative note about American and Polish legal systems but I am way too busy for such undertaking. I can only tell you that Maciej Ślusarek, an attorney representing Justyna Steczkowska, will have easier case in Poland as opposed to the US legal reality. Mr. Ślusarek previously won a case against “Super Express” publisher and editor-in-chief. It was a very important judgment of the Appellate Court in Warsaw of 29 September 2006, case file I ACa 385/2006. Mr. Ślusarek represented another Polish singer Edyta Górniak. The Court held that there is a need to distinguish the persons carrying out the public functions, if a person due to the character of those functions might be subjected to public control and the openness of their life is justified by the important society interest, from the commonly known persons, who are not subjected to such intense public control. The distinction included in court’s ruling is of course of great importance for protection limitations established for such persons.

The protection of personal image/publicity rights is provided in the Polish Civil Code in article 23. This provision outlines the personal image as one of the personal property/interests – an intangible personal right. Furthermore, a person who would like to claim an infringment of his/her rights might also exercise the civil protection of personal image afforded by provisions of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631 with subsequent amendments.

Article 81.
1. The dissemination of an image shall require the permission of the person presented in that image. Unless there is a clear reservation, such permission shall not be required if such person has received the agreed price for posing.
2. The permission shall not be required for the dissemination of the image:
1) of a commonly known person, if such image has been made in connection with his/her performance of public functions and, in particular, political, social or professional functions,
2) of a person constituting only a detail of a whole, such as a meeting, a landscape, or a public event.
(…)
Article 83.
The provisions of Article 78, paragraph 1 shall apply respectively to claims brought due to the dissemination of the image of the person presented in it and the dissemination of correspondence without the required permission of the person to whom it was addressed; such claims may not be asserted after the lapse of twenty years from the death of that person.

Additional protection is also provided in the Act of 26 January 1984 on Press Law, the Criminal Code and the Act of 29 August 1997 on Protection of Personal Data. The protection of privacy and publicity may also derive from the Constitution of the Republic of Poland of 2 April 1997.

Article 47
Everyone shall have the right to legal protection of his private and family life, of his honour and good reputation and to make decisions about his personal life.
(…)
Article 54
1. The freedom to express opinions, to acquire and to disseminate information shall be ensured to everyone.
2. Preventive censorship of the means of social communication and the licensing of the press shall be prohibited. Statutes may require the receipt of a permit for the operation of a radio or television station.

And, of course, from the European Convention on Human Rights of 4 November 1950.

Trade mark law, case II GSK 506/07

July 30th, 2008, Tomasz Rychlicki

Reemtsma Cigarettenfabriken GmbH from Hamburg registered the trade mark BOSS LIGHTS R-136520 in class 34 for goods such as tobacco, tobacco products, smokers’ articles, cigarettes, cigarillos, matches. The owner of the following trade marks: BOSS R-66417, registered for goods in classes 9, 14, 18, 25 and 28, HUGO BOSS R-66418, registered for goods in classes 9, 14, 18, 25 and 34, BOSS HUGO BOSS R-156696, registered for goods in class 34 and the word-figurative mark BOSS R-82792 filed before the Polish Patent Office a request for the invalidation of the right of protection for the trade mark BOSS LIGHTS. The PPO found that there was a likelihood of consumer confusion with reference to the origin of goods in the market turnover. The PPO also held that the registration of the BOSS LIGHTS trade mark violated the prior rights of HUGO BOSS Trade Mark Management GmbH & Co. KG, including its company name.

Reemtsma Cigarettenfabriken appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 4 September 2007, case file VI SA/Wa 2195/06 sided with the PPO’s decision. Reemtsma Cigarettenfabriken referred to the last instance and it has filed a cassation complaint before the Polish Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, gave an interpretation and clarified what is a famous (renown or reputed) trade mark and how to prove the fame of a trade mark. The SAC agreed with the view that famous trade mark has a reputation and that, besides its recognition, it must also be characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC repealed the contested judgment and sent the case back to the VAC for reconsideration. See also “Trade mark law, case VI SA/Wa 1483/08“.

Trade mark law, case II GSK 98/07

July 6th, 2008, Tomasz Rychlicki

On 8 November 2004, the Polish Patent Office received a request from JOOP GmbH on the invalidation of the right of protection for JUUPI! R-103654 trade mark owned by “AQUAREL” Kosiorek Spółka Jawna. The applicant has based its legal interest on the fact that questioned sign is similar to JOOP! R-64463 trade mark, registered on his behalf with an earlier priority, and to international trade mark registration JOOP! IR-739262.

The request was based on provisions of article 165 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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.

Article 165
1. A request for invalidation of the right of protection shall not be admissible:
(i) on the ground that it conflicts with an earlier trademark or the personal or economic rights of the requesting party have been infringed, where the requesting party has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use,
(ii) after the expiration of a period of five years from the grant of the right of protection, where the right in question was granted in breach of the provisions of Article 129, however in consequence of its use the trademark has acquired a distinctive character,
(iii) on the ground that it conflicts with a well-known trademark, where the party entitled to the well-known trademark has acquiesced, for a period of five successive years of the use of the registered trademark, in the use of the latter while being aware of such use.

2. Paragraph (1) shall not apply, where the holder of the right has acquired the right in bad faith.

The PPO dismissed the request. The Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 rejected the appeal filed by JOOP GmbH and upheld the decision of the PPO. JOOP filed a cassation complaint.

The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 held that “being aware of the use of the mark” means that the applicant, who requested for the invalidation based on provisions of article 165 of the IPL, had knowledge about the use of that trade mark by its proprietor. One cannot extend the scope of this statutory condition for “the possibility” or “the duty” to finding out or getting acquitant that such mark is being used by its proprietor. The Court ruled that it’s impossible to accept the existence of a general legal obligation that could be put on entrepreneurs to “track the competition” in order to be aware of the use of different trade marks on the market.

Trade mark law, VI SA/Wa 1962/07

July 6th, 2008, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653449

In support of its legal interest Biosystem S.A. explained that it is one of more than 30 domestic companies, specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spreaded and used among various companies and as the result of negligence of the owner and licensee these signs cannot fullfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

The PPO decided that the Polish company has no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste.

The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed by article 20 of the Constitution and Article. 6 of the Act of 2 July 2004 on freedom of economic activity.

Biosystem appealed. The Voivodeship Administrative Court in its judgments of 15 April 2010 case file VI SA/Wa 1959 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the begining of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office shall not be enforceable.

The VAC decided on other PPO’s decisions on IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07.

Copyright law, case V CK 391/02

July 1st, 2008, Tomasz Rychlicki

The Supreme Court in its judgment of 7 November 2003 case file V CK 391/02, published in OSN 2004, No 12, item 203, ruled that introduction to the work, which was an academic textbook, non-substantive amendments, and changes that were merely stylistic or were made during proofreading, is not a manifestation of creative activity and does not justify the granting of the person who made such amendments, the status of a co-author.

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

Trade mark law, case I KZP 8/08

July 1st, 2008, Tomasz Rychlicki

The Polish Supreme Court (SC), the Criminal Law Chamber sitting in extended bench of seven Justices, in a jugment of 30 June 2008, case file I KZP 8/08, answered the question whether the Polish legislator’s intent was to leave acts of purchasing counterfeit goods with impunity or should such deeds be deemed as fencing according to articles 291 and 292 of the of the Criminal Code – CRC – (in Polish: Kodeks Karny) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 88, item 553, with later amendments.

This case concerned Małgorzata N. (publication of full personal data is not allowed in Polish criminal proceedings unless otherwise decided by a court) who was accused by the prosecutor of helping to sell clothes which were unlawfully bearing Everlast, Adidas, Puma and Nike registered trade marks. Charges were based on the article 291 of the CRC.

1. Whoever acquires property obtained by means of a prohibited act, or assists in its disposition, or receives such property or assists in the concealment thereof shall be subject to the penalty of deprivation of liberty for a term of between 3 months and 5 years.
2. In the event that the act is of a lesser significance, the perpetrator shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to one year.

The court of the first instance (Regional Court) has ruled that Małgorzata N. was guilty of buying contested clothes in unfound place and time, and at the same time knowing that those products unlawfully bore registered trade marks. The Court sentenced the defendant for 50 daily rates of fine, each worth 40 PLN.

Małgorzata N. appealed. Her attorney argued that the court of the first instance erred in the interpretation of article 291 of CRC which should be only applied in a case of the first purchase as it was decided by the Supreme Court in the judgment of 24 May 2005, case file I KZP 13/05, regarding the issue of “introducing to market” and the interpretation of article 305(1) of the 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, before amendments of 2007.

Anyone marking goods with a counterfeit trademark for the purpose of introducing them on the market or introducing on the market goods bearing such trademark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years.

The Supreme Court defined the term “introduction to market” as a passing on of goods labelled with a fake trade mark for the first time by a producer or importer of those goods. A subsequent sale of such a product should not therefore be recognized as “introduction to market” and could not therefore be the subject of criminal proceedings. According to defendant’s attorney the PSC’s interpretation excluded Małgorzata N.’s guilt because further turnover of such goods was beyond the scope of penalisation.

Article 305(1) was amended of 31 July 2007 to adjust its provisions to every situation of “market turnover”:

Anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years.

The SC hold that any behaviour which is not understood as “introduction to market” as defined in article 305(1) of the IPL (after amendments from 2007) and consisting of further market turnouver of goods bearing counterfeited trade marks is not a misdemeanour defined by article 291 and 292 of the PPC because it does not fulfil a trait of “property obtained by means of a prohibited act”.