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

Archive for: November, 2008

Patent law, case VI SA/Wa 1594/07

November 30th, 2008, Tomasz Rychlicki

On 1 February 1995, Koninklijke Philips Electronics N.V., Holandia filed a patent application No. 378756 “method of converting a series of m-bit information words to a modulated signal, method of producing a record carrier, coding device, decoding device, recording device, reading device, signal, as well as a record carrier”. This application was based on the International patent application PCT/IB85/00070.

The Polish Patent Office acting under Article 49(2) of the IPL noted that the evidence and materials may indicate the existence of obstacles to obtain a patent on solution as mentioned above. According to the PPO the application did not comply with the requirements of Article. 10 of the Act of 19 October 1972 on innovation, because its characteristic features mentioned in claims 1 to 28 do not apply to a solution of a technical nature. After the exchange of correspondence and documents regarding amendments to the mentioned above application, the Polish Patent Office issued a decision on discontinuance of proceedings. Philips filed request for re-examination of the matter, however this decision was upheld by the PPO. Philips decided to file a complaint.

The Voivodeship Administrative Court in its judgment of 7 December 2007 case file VI SA/Wa 1594/07 held that the contested decisions violated the law to an extent to justify their repeal. The VAC ruled that it should be assumed that the condition of rigor for discontinuance of proceedings of the patent application occurs only when the applicant is totally passive to the calls addressed by the Patent Office and in general it do not answer any calls during the proceedings. The Court agreed in principle with the applicant that there should be the possibility of discontinuance of proceedings in part. Since the patent application may cover several inventions connected with each other in such a way that they constitute one clear idea of the inventor, the PPO must take a position as to any claimed invention, also to decide on discontinuance of proceedings if the legal requirements included the IPL will be met and there will be no obstacles to the recognition that the matter included in the application in the relevant section is a divided case.

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.

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 was filed to the Supreme Administrative Court. It will clarify the interpretation of article 117(2) of the IPL. See “Industrial design and trade mark law, case II GSK 481/09“.

Procedural law, case II GSK 350/06

November 24th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 April 2008 case file II GSK 350/06 held that the duties of the Polish Patent Office to take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public cannot be “transferred” to the litigation proceedings in patent cases based on provisions of Article 256(1) 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.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

4. (repealed)

This is because the Article 255(4) of the IPL includes provisions that fully cover this regulation and precludes the possibility of complementary use of the provisions of Article 7 and 77 of the 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.

Article 255
4. The Patent Office shall settle cases in litigation procedure within the scope of the request and shall be bound by the legal ground invoked by the requesting party.

The Court also ruled the such findings do not preclude, of course, the activity of the Polish Patent Office to collect evidence, provided that they fall within an already pending case in litigation proceedings.

Internet domains, case II C 1091/04

November 22nd, 2008, Tomasz Rychlicki

The Regional Court for Warszawa-Mokotów in its judgment case file II C 1091/04 ruled that according to Article 385¹ § 1 the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments, the provisions of a contract concluded with a consumer, which have not been individually agreed with him, shall not be binding thereupon, if his rights and duties have been stipulated in conflict with public decency and in flagrant violation of his interest (wrongful contractual provisions). According to Article 385³ § 1 of the CC, in the case of doubt, the wrongful contractual provisions should be, in particular these which exclude the jurisdiction of the Polish courts, or have the case decided by a Polish or a foreign conciliatory court or another authority, or force a decision in the case to be made by the court which has no local competence. According to the court’s decisions, the obligatory referral of a domain name dispute to a court of arbitration is a wrongful contractual provisions. For this reason Article 23 of the Domain Names Regulations issued by NASK, does not relate to or is not binding for consumers.

22. In case a third party initiates a legal action in the Arbitration Court against the Subscriber claiming that the Subscriber has infringed the rights of that person by entering into or performing the Agreement, the Subscriber shall submit to that Arbitration Court a duly signed arbitration clause to the Arbitration Court in due time stated in the summon to sign this arbitration clause.

23. The non-signing of the arbitration clause specified above shall result in the termination of the Agreement three months after the time stated to sign this arbitration clause, and this time limit shall be shortened to the date of the expiry of the calculating period based on the Price List if this date occurs before the end of the three month-period after the time stated to sign this arbitration clause. If the NASK has been informed during the time period specified above by the Arbitration Court about the delivery of the signed arbitration clause to that Court, the Agreement shall not be terminated.

Consequently, the termination of the contract based on these provisions could be regarded as invalid. The court also noted that such provisions could be challenged even in the course of a professional trade, as affecting the principle of contractual freedom and the right to a court.

See also “Polish case law on domain names“.

Telecommunications law, case C-227/07

November 18th, 2008, Tomasz Rychlicki

The Court of Justice of European Communities in its judgment in case C‑227/07, Commission of the European Communities v. Republic of Poland, held 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.

Advertising law, case VII SA/Wa 1449/08

November 17th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgments of 11 November 2008 case file VII SA/Wa 1449/08 and 1450/08 decided cases regarding legal rules for building billboards. This issue does not concern trade marks directly, but may be helpful for to understand nuances of Polish law.

Jet Line is a company which specializes in installing large advertising billboards. The company has reported to the governor of Zachodniopomorskie province that it intends to erect two billboards at the port of Szczecin. The Governor has made an opposition which was also upheld by the The General Inspector of Building Control (GIBC). In GIBC’s opinion, billboards are constructions which, because of its size and being permanently linked to the ground, require a building permit as it is required by the Polish law in the Article 28 of Building Law Act of 7 June 1994 – BLA. The company appealed this decision claiming that it is inconsistent with article 29(2)(6) of the BLA.

The building permit is not required for installation of advertising boards and equipment, except those located on structures listed as national monuments under the provisions on the protection of monuments and the care of monuments, and with the exception of light and illuminated advertisings located outside built-up areas within the meaning of the rules on road traffic

The court held that the legislature did not exclude free-standing advertising constructions permanently associated with the ground from provisions included in Article 29 of the BLA. Therefore the court exempted from the obligation to get a building permit all kind of the equipment designed for the construction of advertising, regardless of whether they are free standing, or mounted on existing buildings.

Categories: advertising law | Voivodeship Administrative Court.

Trade mark law, case II GSK 385/08

November 14th, 2008, Tomasz Rychlicki

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. The Court held that every entrepreneur has the right to designate its products and services, with a trade mark, if it does not remain in conflict as to the form, duration and territorial aspect, with the absolute right that was previously obtained by another entity. An entrepreneur has a legal interest in the request for invalidation of the right of protection for a trade mark on the basis of circumstances provided in the request and conditions included in such a motion if the right of protection was granted in violation of the statutory requirements. The relevance and application of these conditions shall be assessed in proper proceedings. Therfore the SAC returned the case to VAC for reconsideration.

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

Trade mark law, case Sp. 332/07

November 8th, 2008, Tomasz Rychlicki

The Polish Patent Office in its recent decision 18 September 2008 case no Sp. 332/07 of has partially invalidated VOGUE trade mark registered for Advance Magazine Publishers Inc. from USA. The invalidation proceedings were started by Polish entrepreneur Mariusz Lipski from Szczecin, performing his business under the firm “Vogue”. Mr Lipski applied for invalidation of VOGUE trade mark R-68616 in class 18 (leather and imitations of leather, and goods made of these materials) and in class 25 (clothing including footwear, elastic-sides and slippers). Mr Lipski based his legitimate interest on the fact that he was charged in criminal proceedings for the use of VOGUE trade mark. Mr. Lipski has also based his request on constitutional provsion of freedom of economic activity. On 16 June 2008 after filing a request for invalidation of the right of protection Mr. Lipski has also applied for trade mark protection for VOGUE sign Z-342213 in class 25 for goods such as clothing for gymnastics, waterproof clothing, clothing made of leather imitation, garments, household slippers, football boots, beach shoes, jackets, coats, etc.

Advance Magazine Publishers’ representative claimed that VOGUE trademark is used in class 18 and 25 by publishing a magazine with fashion regarding those products. However he also acknowledged the fact that VOGUE magazine is not published in Polish language.

The PPO took into account the request for invalidation and ruled that VOUGE trademark should be partially invalidated. The PPO held that publishing of a fashion magazine can not be an evidence of the use of the mark for such goods as clothing, shoes, or products made of leather. It has to be demonstrated and proved that a mark was placed on the goods and introduced on the Polish market.