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Archive for: September, 2008

Trade mark law, case Sp. 304/05

September 26th, 2008, Tomasz Rychlicki

Eniro Polska applied for trade mark protection for PANORAMA FIRM in classes 16, 35 and 41 for goods and services such as telephone and address books, providing services to third parties concerning the promotion of goods and services, publishing services, assistance to third parties in the publishing business. The Polish Patent Office issued its decision on 6 September 1994 and granted the protection right, R-81181.

Panorama Firm-Marek Stefaniak from Sopot filed a request for invalidation of the right of protection for the PANORAMA FIRM mark, claiming that this sign had lost its distinctive character. The company from Sopot based its arguments on provisions of Article 169(1)(ii) 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.

1. The right of protection for a trademark shall also lapse:
(ii) on loss by the trademark of distinctive features for the reason that in consequence of the owner’s acting or negligence it has become, in the course of trade, a customary mark consisting exclusively of elements which may serve, in the course of trade, for indicating, in particular, the kind, quality, quantity, price, intended purpose of the good, the process, time or place of its manufacturing, the composition, function or usability of the good, in respect of the goods for which the trademark has been registered,
Both conditions must appear together, which means that the sign has to lose its distinctiveness and that the trade mark owner contributed to such process.

The Polish Patent Office, in its recent decision of 18 August 2008, act signature Sp. 304/05, rejected Panorama Firm-Marek Stefaniak’s request and ruled that Eniro Polska had proved that PANORAMA FIRM trade mark was in intensive use and that it was also broadly advertised and protected.

E-signature law, case I OPP 25/08

September 18th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its order of 24 July 2007 case file I OPP 25/08 held that the letter that was brought by electronic means must be signed in person by a party or its representative to become legally effective, because only such signature meet the requirements under Article 46 § 1 pkt 4 of the Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments.

In accordance with Article 5(1) of the Act of 18 September 2001 on Electronic Signature – ESA – (in Polish: ustawa o podpisie elektronicznym) Journal of Laws (Dziennik Ustaw) of 15 November 2001, No 130, item 1450, with subsequent amendments, the secure electronic signature verified by a qualified certificate which has legal effects specified in the Act, if it is filed during the validity of this certificate. The Chapter IX of that ESA contains provisions amending, inter alia, the Civil Code Article 60, Article 78 §1 and §2, allowing for state the will of a person in the cicil law relationship by the disclosure in electronic form. In addition, the Polish Act on the Informatization of Entities Performing Public Tasks – IEPPT – (in Polish: ustawa o informatyzacji działalności podmiotów realizujących zadania publiczne) of 17 February 2005, Journal of Laws No 64, item 565, in Article. 36 pt 3 and 5 introduced amendments of the provisions of the Administrative Proceedings Code, i.e. Article 57 § 5 pt 1 and Article 63 § 3a by allowing the opportunity to provide a request in the form of an electronic document. The above provisions apply only to the extent that the given Act governs.

The Polish Act on Complaint on the Infringement of the Right of a Party to be Beard in Court Proceedings without Undue Delay of 17 June 2004, Journal of Laws of 16 August 2004, and in the provisions of the PBAC, there are no equivalents of the abovecited provisions of the Civil Code and the APC and the definition of electronic signatures does not exists in these acts. According to Article 2(3) of the IEPPT, the provisions of this Act shall not apply to administrative courts in the administrative proceedings. Consequently, in this case the Supreme Administrative Court was not obliged to use in the e-mail correspondnce of certificates that are referred to in the ESA.

See also “E-signature law, case II SA/Gd 573/10“.

Copyright law, case I ACr 590/95

September 12th, 2008, Tomasz Rychlicki

The No Electronic Theft Act (Pub. L. No. 105-147, 111 Stat. 2678 (Dec. 16, 1997)) introduced changes into 17 U.S.C § 101. Definitions.

The term “financial gain” includes receipt, or expectation of receipt, of anything of value, including the receipt of other copyrighted works.

In Poland, we have judgment of the Appellate Court in Warsaw of 12 December 1995, case file I ACr 590/95, published in OSA 1997, No 3, item 16, at page 32, where the Court held that benefits are generally a part of the net profit achieved as a result of copyright infringement. The benefits are also the savings on expenses for copyright fees, if the copyright infringement was based on the use of work without a proper remuneration. Interesting approaches in two different jurisdictions. I just need to remind you that the Republic of Poland is not a common law country.

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

Trade mark law, case file II GSK 138/07

September 10th, 2008, Tomasz Rychlicki

Austrian company Red Bull GmbH has received trade mark protection right for its word mark based on international registration (IR-641378 A) on 19 March 1998 (notification of 17 September 1996), in almost all classes (3, 5, 12, 14, 16, 18, 20, 25, 26, 28, 29, 30, 32, 33, 34, 35, 39,41 and 42). Polish company – Przedsiebiorstwo Produkcji Lodów “KORAL” – applied for trade mark registration for RED BLUE word sign in class 30 (ice creams and other products) on March 2004, Z-277694. However, the Polish Patent Office recognized earlier priority of Red Bull’s trade mark and rejected the application.

Polish company (Koral company) requested a motion to declare the expiration of trade mark rights of Red Bull’s sign in class 30 claiming that Austrian company failed to put to genuine use of the registered trademark for the goods covered by the registration for a period of five successive years. The PPO agreed with “Koral” and declared the expiration of Red Bull’s trade mark in its decision of 30 October 2005 case file Sp. 199/04. Red Bull’s evidences of use that were based on the fact that Austrian company has put its trade mark on boxes with sweets which were later sent during different occasions to customers and business partners were found insufficient. The date on which five years period ended was set by the PPO on 9 July 2004 (the date on which the request for invalidation was filed). Both parties appealed to the Voivodeship Administrative Court in Warsaw. Polish company did not agree with PPO’s findings as regards trade mark rights’ expiration date and Austrian company claimed that PPO should consider reputation of its trade mark.

The VAC in its judgment of 7 September 2006 case file VI SA/Wa 557/06 held that reputation is not taken into account during proceedings for lapse of a right of protection. Arguments that Koral company has no standing were rejected by the Court because both parties were also involved in unfair competition proceeding before civil court. Once again, both companies filed a cassation complaint. The Supreme Administrative Court in its judgment of case file II GSK 138/07 ruled that the reputation of a trade mark is irrelevant when there is invalidation proceedings. This is not the stage. Reputation could be taken into account during the application proceeding for Koral company’s trade marks. A single fact of non-used Red Bull’s trade mark being an obstacle for registration was a sufficient condition for declaring its expiry.

Koral Company has also called into question the date of expiry of the right of protection. It was the reason for SAC to discuss the issue in extended chamber. The Court gave its opinion in judgment of 23 April 2008, act signature II GPS 1/08. See also “Trade mark law, case II GPS 1/08“.

Trade mark law, case VI SA/Wa 390/08

September 8th, 2008, Tomasz Rychlicki

RSX Company from Katowice applied for and was granted trade mark protection for word trade mark MERCI on 4 September 2003, R-146586. The sign covered substitutes for coffee and coffee-based beverages as provided in class 30.

August Storck KG, the manufacturer of MERCI chocolates from Germany, filed a request for invalidation of the right of protection of the RSX trade mark. August Storck has owned the MERCI word trade mark R-68903 protected in Poland since 1990, also in class 30 (cocoa, chocolate, sweets). The decision on registration was issued by the Polish Patent Office on 4 March 1992. August Storck also registered a MERCI word-figurative trade mark in Poland, based on the Madrid Agreement’s provisions, IR-0728855.

IR-0728855

The German company alleged during the invaidation proeceedings that between those two signs there exists a risk of collision. Originally, the Polish Patent office ruled that there was no chance of such risk, because the goods were different, namely, coffee and cocoa. Accordingly, the PPO rejected the opposition filed by August Storck.

The German Company appealed against the PPO’s decision to the Voivodeship Administrative Court (VAC) in Warsaw. August Storck’s representative alleged that PPO has incorrectly analyzed the goods in question. The VAC agreed with this argument in its judgement of 13 October 2006, case file VI SA/Wa 895/06 and it annulled the PPO’s decision. The court emphasized the fact that there was no doubt that coffee and cocoa belonged to the same group of goods and that they were sold in the same stores. Coffee is a component of many chocolate products. In the court’s opinion, the PPO wrongly considered that these goods were not homogeneous. DAC also found that PPO improperly accepted that coffee and cocoa may be produced by different undertakings.

The case went back to the Polish Patent Office. RSX argued that coffee is a specific drink and no-one would connect it with cocoa, since they are not complementary goods. The RSX representative pointed that in one class the goods may be heterogeneous, for instance chewing gum and chocolate. However, the PPO in its decision of 28 August 2007 (Sp. 65/07) annulled the disputed mark. The Office held that in accordance with article 9(1)(1) 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 later amendment, three conditions have to be fulfilled: the signs are identical or similar, homogeneity of goods, the possibility of leading a consumer into confusion as to the origin of goods. The PPO acknowledged in its decision that all three conditions were met.

This time RSX appealed the PPO’s decision. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 July 2008 case file VI SA/Wa 390/08 dismissed the complaint and ruled that PPO’s decision was this time correct. Coffee and cocoa are competitive products and the consumers overlap. Cocoa can be bought by a follower of coffee (not necessarily a person who drinks it), for example, as a gift for someone. Therefore, these are homogeneous goods.

Advertising law, new rules for pharmaceutical products

September 7th, 2008, Tomasz Rychlicki

In the article entitled “Przybędzie zakazów w reklamach leków“, the Polish newspaper Rzeczpospolita reports a recent legislative initiative regarding a draft regulation on advertising of medicinal products prepared by the Polish Ministry of Health. Monitors displaying ads may disappear from pharmacies. Advertising of any medicines will not be allowed in hospitals or pharmacies. The proposed draft especially concerns audio and audiovisual advertising. A similar ban exists in the current Regulation of the Minister of Health of 16 December 2002 on the advertising of medicinal products, Journal of Laws (Dziennik Ustaw) of 2002 No. 230, item 1936, however, it allows for advertising contained in radio and television programmes. There were assembled special monitors to broadcast TV spots in some pharmacies. Such exceptions will no longer be allowed , and the display of medicine advertising spots will become illegal.

The proposal also includes the types of advertising of medicinal products: i.e. advertising which is targeted to the general public or persons who are entitled to issue medical prescriptions or persons engaged in the marketing of medicinal products. The Ministry of Health has stresses that such specification will clearly defined market rules and will have a positive effects on fair competition.

Advertising in visual form must contain a warning.

Before use, read the label, which includes indications, contra-indications, data on side effects, dosage and information about the medicinal use of the product, or consult your doctor or pharmacist.

The warning has to be included in any part of advertising, on a flat surface which is not less than 10 percent of total surface area of the ad. The text must be distinguished from the background and it be legible. A warning in an audiovisual advertising has to be placed in the lower parts of the plane, which is not less than 20 percent of the total surface area. It must also be clearly legible in the Polish language and appear on the screen for not less than 5 seconds.

Trade mark law, cases Sp. 428/07 and Sp. 442 /07

September 6th, 2008, Tomasz Rychlicki

The Polish newspaper Rzeczpospolita reports recent cases (act signatures Sp. 428/07 and Sp. 442 /07) brought before the Polish Patent Office by German company Klöckner Moeller GmbH, which opposed the registration of the PowerControl trade mark by the Lestar Company from Opacz. Both parties are involved into a dispute as to whether the PowerControl mark is a sign of fanciful character and whether it has sufficient ability to distinguish the goods of one undertaking from the another.

The Polish company from Opacz applied for a trade mark registration for PowerControl in 2001, in class 9 (cables and electrical wires, electrical controls of light, signals and switching and in class 35 (sale of various goods in a shop with wiring articles). The PPO has issued a favourable decision and registered this trade mark in 2006, R-174685.

R-174685

The patent attorney who is representing the company from Germany declared that one can not claim such simple words (power and control) as a trade mark, it gives the owner a monopoly on the use. The sign creates a cluster of words whose meaning is known in Poland. There are thus distinctive capabilities which are required for a brand. And it must identify the goods of an entrepreneur. But the Polish company argued that a sign which is composed of foreign words can be considered fanciful in Poland. Therefore PowerControl is able to distinguish goods, especially technical equipment.

The Polish Patent Office has not yet resolved the dispute.

Trade mark law, case II GSK 1110/08

September 6th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in its recent judgment of 24 July 2008, case file VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeal against the Polish Patent Office (PPO) decision of 19 March 2007, cases files Sp. 68/04 and Sp. 69/04, regarding the invalidation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes.

The invalidation proceedings were started by Tiffany & Co. from New York. The New York’s company alleged not only the similarity of signs but also a breach of its over-150-year reputation applied to jewellery products. During one of the hearings before the Polish Patent Office, Tiffany & Co. provided evidence of a witness as regards the reputation and universal knowledge of Tiffany & Co. brand. The witness stressed that, although in post-war Poland the Tiffany brand was not present on the Polish market, the press (women’s magazines and other publications) wrote about the Tiffany & Co. as the provider of luxurious jewellery. The court has affirmed the PPO’s findings that the TIFFANY trade mark has the reputation even if it was not registered in Poland. Judge Olga Żurawska-Matusiak decided that renowned signs or snobbish signs (sic!) do not need to be widely known to the public. It is a sufficient factor if they are known to the relevant public, to whom such signs are addressed, those are consumers who are interested in buying luxury goods. If there exists an international reputation of a sign – it also includes Poland.

Tiffany & Broadway Inc. Div. of Texpol Corporation filed a cassation complaint to the Supreme Administrative Court (SAC). The Supreme Administrative Court in a judgment of 8 July 2009, case file II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark is the one that has a high ability to automatically trigger associations with the product for which it was registered. It is quite obvious that this ability will be weaker, adequately to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.

The SAC annulled the questioned judgment and remitted the case to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

Unfair commercial practices, case DOK-6/2008

September 4th, 2008, Tomasz Rychlicki

In December 2005, the OCCP instituted antitrust proceedings against ZAiKS and the Polish Filmmakers Association (SFP), suspecting that – in order to maximise their profits – these organisations had made an agreement and fixed uniform charges for using audiovisual works and refused to negotiate their rates.

Penalties for a total of more than $ 1.2 million Polish złoty were imposed by the Office of Competition and Consumer Protection (UOKiK) on The Association of Authors (ZAiKS) and the Polish Filmmakers Association (APF) because of their agreement “to eliminate competition between them”.

UOKiK has found that since 2003, ZAiKS and SFP, seeking to guarantee itself the highest profits, have operated under the unlawful antitrust agreement. SFP and ZAiKS concluded an agreement which established a uniform, rigid rates for the use of audiovisual works (such as DVD movies) and refused to negotiate them – announced Malgorzata Krasnodębska-Tomkiel (the President of the UOKiK) at a press conference in Warsaw.

The decision of the President of the Office of Competition and Consumer Protection of 29 August 2008, case file DOK-6/2008 The official press release is available at uokik.gov.pl website, in Polish language.