Archive for: November, 2008

Trade mark law, case VI SA/Wa 1510/08

November 26th, 2008, Tomasz Rychlicki

BWS Poland sp. z o.o. applied for trade mark registration for the word-figurative sign “SUNLINE TOKAJI FURMINT” Z-246957 on 26 February 2002, in class 33 for alcoholic beverages. The Polish company BARTEX-Bartol reported observations as to the existence of grounds that may cause a right of protection to be denied. BARTEX-Bartol claimed that Polish Patent Office (PPO) would undermine the protection of third-party rights, namely the Hungarian company Tokaji Kereskedőház Rt., because the sign that BWS applied for contained the name of the Hungarian Company. BWS explained that it imported wine from another Hungarian company and that the label “SUNLINE TOKAJI FURMINT” would not lead customers in confusion as regards the orgin of goods.

However, the Polish Patent Office issued a decision denying protection rights for a trade mark that BWS has applied for. The PPO held that granting protection rights would be against provisions included in articles 131(1)(iii) and 131(3) 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.

Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof.

(…)

Article 131(3) of the IPL
In the case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

BWS appealed to the Voivodeiship Administrative Court (VAC) in Warsaw. During the hearings, the company claimed that it imported the wine from the vineyard of Vagra Pincészet Kft, which sells Tokaji Furmit Sulina wine, and that the Hungarian company agreed the sign could be used by its Polish business partner. BWS argued that Tokaj and Furmit means the region and strain of grapes. BWS presented an opinion that it applied for trade mark protection for a specific word-figurative sign, and that it had no intention to prohibit anyone to use these names.

The Polish Patent Office emphasized that TOKAJI is geographical indication of this kind of alcoholic beverage, which is used by manufacturers in Hungary as had been already agreed with the European Commission (and procedures for the arrangements are discussed with Slovakia) – this is why the PPO is obliged to take such term into account as a GI. The PPO also pointed out that the company may distribute the wine under SUNLINE name and to use it toghether with TOKAJI word, but it is not allowed to gain exclusive rights in TOKAJI and FURMIT signs. The VAC in judgment of 25 September 2008, case file VI SA/Wa 1510/08, has fully agreed with PPO’s decision and dismissed BWS appeal. The judgment is not final.

Categories: Art. 131(1)(iii) IPL | Class46 post | EU law | Polish Act on Industrial Property Law | Polish Patent Office | Polish courts | Polish law | Voivodeship Administrative Court | geographical indications law | geographical name as trade mark | trademark law.

Some stats

November 25th, 2008, Tomasz Rychlicki

In Poland, all infringement cases in the field of industrial property, copyright and unfair competition are decided by civil courts. The number of cases in the first half of 2008, was as follows:
1. Circuit Courts (first instance):

  • Industrial Property, the courts’ statistic symbol 034 – total: 25 cases.
  • Copyright, the courts’ statistic symbol 033 – total: 117 cases.
  • Unfair competition, the courts’ statistic symbol 652 – total: 93 cases.
  • Cases under the scope of protection of trademarks and designs, the courts’ statistic symbol 653 – total: 89 cases.

2. Courts of Appeal (second instance):

  • Industrial Property, the courts’ statistic symbol 034 – total: 5 cases.
  • Copyright, the courts’ statistic symbol 033 – total: 34 cases.
  • Unfair competition, the courts’ statistic symbol 652 – total: 24 cases.
  • Cases under the scope of protection of trademarks and designs, the courts’ statistic symbol 653 – tota:l 24 cases.

Categories: Polish Act on Authors Rights and Neighbouring Rights | Polish Act on Combating Unfair Competition | Polish Act on Industrial Property Law | Polish courts | Polish law.

Industrial design and trade mark law, case VI SA/Wa 710/08

November 25th, 2008, Tomasz Rychlicki

On 10 April 2001 the Polish company Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J (this is the actual company name – the firm, which consist of names of partnes “Rosinski Andrzej Rosinski Michal Rosinska Joanna”, the name “packages production plant” and the type of legal entity they operate “general/partnership company”) applied for design registration for bottle with top. On 14 January 2003, the Polish Patent Office has registered the design, Rp-2543.

Rp-2543

In 2006, Unilever NV of Holland asked the PPO to annul its decision regarding Rp-2543. Unilever based its claims on provisions of article 117(2) 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 finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights will also constitute a ground for invalidation of the right in registration.

Unilever’s legitimate interest to request the invalidation was based the earlier 3D trade mark registration, R-134678, which was granted by the PPO in a decision of 28 January 1999. However, the problem with applying article 117(2) lays in the rules of Polish administrative procedure. The PPO is not allowed to decide if third parties rights are infringed.

R-134678

The PPO in its decision of 19 October 2007, act signature Sp. 187/06 invalidated the contested design. The Office recognized the similarity between the trade mark and the design based on arguments presented by Unilever’s patent attorney. The Polish company appealed. Its representative called into question the correctness of PPO’s decision in applying provisions of article 117(2). In his opinion the infringement issue should be decided by the civil court, not the administrative body which the Polish Patent Office is. However, the Voivodeship Administrative Court in Warsaw in a judgment in a judgment of 21 November 2008, case file VI SA/Wa 710/08, did not agree with the Polish company arguments. In court’s opinion the PPO has been given the opportunity to assess similarities between a registered trade mark and a design. PPO’s conclusions that there exist a significant similarity may entitle the Office to decide with regard to the infringement of third parties rights.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. It would clarify the interpretation of article 117(2) of the IPL.

See also my posts entitled “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Categories: Art. 117 IPL | Class46 post | Polish Act on Industrial Property Law | Voivodeship Administrative Court | case law | industrial designs | invalidation of a right in registration | non-traditional trade marks | personal rights | product packaging.

Poland defeated

November 18th, 2008, Tomasz Rychlicki

Judgement of the Court of Justice of European Communities in case C‑227/07, Commission of the European Communities v. Republic of Poland.

1. Declares that, by failing to transpose correctly Article 4(1) of Directive 2002/19/EC of the European Parliament and of the Council of 7 March 2002 on access to, and interconnection of, electronic communications networks and associated facilities (Access Directive), the Republic of Poland has failed to fulfil its obligations under that Directive;

Categories: Directive 2002/19/EC | EU law | Polish law | telecommunication law.

Trade mark law, case II GSK 385/08

November 14th, 2008, Tomasz Rychlicki

The Polish newspaper Rzeczpospolita in the article entitled “Lodowy spór o głowę Murzynka ” reports a recent judgment of the Supreme Administrative Court, regarding principles of mercantile honesty and legal interest in trade mark invalidation proceedings.

On 26 June 1996 the Polish company “Sniezka” Chlodnia from Czestochowa applied for figurative trade mark in class 30 for goods such as ice creams. The graphic represented a black boy’s head. On 10 September 2001, the Polish Patent Office granted the right of protection R-132332.

R-132332

On 31 July 1998, the Lodmor company from Gdansk applied for word-figurative trade mark “calypso lody smietankowe waniliowe LODMOR” Z-190131 in class 30 for goods such as ice creams, ice cream powder, ice cream binders. The PPO rejected Lodmor’s application justyfing its decision on priority of the “Sniezka” company’s trade mark.

Z-190131

Lodmor filed a request for trade mark invalidation. The company from Gdansk claimed that “Sniezka” illegally appropriated a sign of a black boy’s head, which was put on Calypso ice creams in the ’70s and ’80s by companies that were part of the Union of the Freezing Industry (Lodmor is a legal successor of one of them). The PPO has invalidated “Sniezka” trade mark in 2006. The Office ruled that this sign was registered in contrary to principles of merchant’s honesty because the mark was already used for a long time by other entrepreneurs.

“Sniezka” company appealed. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 17 October 2007 case file VI SA/Wa 1005/07 held that Lodmor had no legal interest in filing a request for trade mark invalidation. The court annulled PPO’s decision. VAC held that the concept of legal interest in invalidation proceedings can not be derived from the fact that one company applies for a trade mark protection and there is an obstacle in the form of earlier registration. Such conclusion would lead to negation of principles that are the basis for granting rights for trade mark protection. In this case the interest involved only economic issues.

Lodmor filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 October 2008, case file II GSK 385/08, agreed with Lodmor’s arguments that VAC only referred to the trade mark application and it did not consider Lodmor’s legal interest. The SAC already issued decisions and opinions as regards the breach of principles of mercantile honesty and the bottom line of each ruling was that, in specific circumstances, a legitimate interest of a competitor may be found, as it was in Lodmor’s case. Therfore the SAC returned the case to VAC for reconsideration.

Categories: Art. 164 IPL | Art. 20 Constitution | Art. 29 TMA | Art. 30 TMA | Art. 315 IPL | Class46 post | Polish Act on Industrial Property Law | Polish Act on Trade marks | Polish Constitution | Polish Supreme Administrative Court | Voivodeship Administrative Court | case law | legal interest | likelihood of confusion | similarity of signs | trademark law.

Industrial design, case VI SA/Wa 1054/08

November 10th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1054/08, ruled that the requirement for the issuance of a preliminary decision by other authority or a court, is one of the conditions for stay of the administrative proceedings pursuant to article 97 § 1 point 4 of the Polish Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, but while looking for the justification that there exists the preliminary issue in a given case, one has to establish a causal connection between the settlement of the case and the preliminary issue. The lack of such connection makes the stay of proceedings under article 97 § 1 point 4 of the APC unacceptable. The issue of the infringement of the exclusive right referred to in article. 284(6) of the IPL, and civil claims relating thereto are decided by a civil court under civil procedure and the question wheather the use of industrial design that violates personal rights or property of third parties within the meaning of article 117(2) of the IPL, which come with the Polish Patent Office duties (the condition for invalidation of the rights in registration) are separate issues. Therefore, there is no reason to assume that the preliminary issue occurs in this case because the civil court is a proper one to settle the matter of the infringement of an exclusive right.

This case concerned the industrial design “Butelka cylindryczna” (in English: cylindrical bottle), Rp-5873.

Wzór Przemysłowy 5873

See also my post entitled “Polish case law on industrial designs“.

Categories: Art. 117 IPL | Polish Act on Industrial Property Law | Polish Patent Office | Polish courts | Polish law | Voivodeship Administrative Court | industrial designs | invalidation of a right in registration.