Archive for: December, 2008

Trade mark law, case II GSK 400/08

December 29th, 2008, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1470/07“. The Supreme Administrative Court in its judgment of 28 October 2008 case file II GSK 400/08 held that the infringement of the right to the company name (the firm) as a condition for the invalidation of the registration of a trade mark, should not be prejudged by the registration of the same or similar trademark, as the name of another company.

R-222381

An important factor determining the infringement of personal or property rights of third parties, is the risk of leading a consumer to confusion as to the identity of the entrepreneur, and it determines the territorial and substantive scope of the actual activities of the entity using a given name, which is the subject of the trade mark, which has been granted the right of protection. This case concerned the invalidation proceedings of MURBET R-155245 trade mark owned by Przedsiębiorstwo Wielobranżowe MURBET Andrzej Zaborski. The proceedings were initiated by the MURBET Gabrylewicz Spółka Jawna company from Ełk.

Trade mark law, case VI SA/Wa 1208/08

December 27th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 18 October 2008 case file VI SA/Wa 1208/08 held that it is unacceptable to grant a right of protection for a sign that identical or similar to other trade mark, if it results in a right, the scope of which at least partially overlap with the scope of protection right with an earlier priority.

Z-295169

The Court held also that the problem of homogenity of the goods is a preliminary issue, which is decided before the examination of similarity of the goods because the use even of identical marks for dissimilar goods does not lead to the risk of confusion as to the origin of goods. This case concerned word-figurative trade mark application UNI-GRUNT Z-295169 applied for by Atlas Sp. z o.o. and UNIGRUNT R-86202 trade mark owned by PPG DECO POLSKA Spółka z ograniczoną odpowiedzialnością.

Trade mark law, case VI SA/Wa 1524/08

December 26th, 2008, Tomasz Rychlicki

The Polish Patent office invalidated the right of protection for NIZOPOL R-152880 trade mark owned by Zakłady Farmaceutyczne “POLFA-ŁÓDŹ’ Spółka Akcyjna. The request was filed by Johnson and Johnson Company who owns NIZORAL R-57978 trade mark. The PPO held that both signs are similar and share at the beggining the same 4 letters NIZO.

The Voivodeship Administratve Court in Warsaw in its judgment of 26 November 2008 case file VI SA/Wa 1524/08 invalidated the questioned decision and ordered its re-examination. Although the Court shared the view of the PPO that during the examination of the questioned word marks in the aural apect, the more attention should to be paid to the first letters and syllables, and a very small role of the endings of words should be recognized, citing J. Piotrowska, Renomowane znaki towarowe i ich ochrona (in English: Reputed trade marks and their protection), Wydawnictwo C.H. Beck, Warszawa 2001, p. 131, however, according to the VAC, the PPO did not consider at all the issues related to the degree of public attention. According to the VAC, even the ordinary and final recipient (and not only the professional) when during the purchase of products such as pharmaceuticals or cosmetic can be extremely careful in selecting the correct product because the product purchased is not the regular goods, but one that will (or may) have some consequences for his health. The recipient will also be a more likely with a similar purchase to seek and take into consideration the advice of an expert. A prudent consumer should pay particular attention to the name (and thus the mark) when purchased.

The PPO did not also made in this case, any assessment of other important factors affecting the risk of confusion, namely, did not address the issues related to the alleged occurrence in the course of trade any other similar signs/designations containing the prefix “nizo”. The PPO have to respond to arguments and the circumstances showed by the Polish company, since it is argued the legal doctrine, that the use of the same or similar trade mark by third parties could lead to a weakening of the impact of such sign, and thus – to reduce the risk of confusion, citing R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 91.

In this situation – according to the Court – it must be assumed that the PPO during the re-examination of the case should first consider the question of the similarity of the goods. The VAC noted that according to settled case-law, the assessment of the similarity between the goods or services should take into account all relevant factors relating to those goods or services. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary, citing T‑420/03, El Corte Inglés, SA v. OHIM.

In the opinion of the Court when re-considering the issue again with regard to the risk of misleading consumers, the Patent Office will be obliged to consider how the risk of confusion is likely to affect the power of the effectiveness (common knowledge) of the opposed earlier mark, in the light of the model of the average consumer that was established in the Community case-law. In this situation the PPO should also consider the issue of the possible risk of confusion, taking into account the intened use of both signs.

Trade mark law, case VI SA/Wa 2113/08

December 23rd, 2008, Tomasz Rychlicki

Skandinaviska Farginstitutet AB the owner of NCS Natural Color System R-129085 trade mark filed opposition against the decision of the Polish Patent Office on the grant of the right of protection for COLOR SYSTEM R-171995 trade mark for AGENCJA PROMOCYJNA “COLOR SYSTEM” Iwona Emilia Hachlica. The PPO dismissed the opposition.

R-129085

The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2008 case file VI SA/Wa 2113/08 affirmed this decision. The VAc held that the overall assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the trade marks at issue must be based on the overall impression, taking account in particular, their distinctive and dominant components/elements. The Court ruled also that the registration of the trade mark in a given form does not afford the exclusivity in relation to particular elements of this trade mar, apart from situations where a part of the sign is a reputed/renown trade mark.

Trade mark law, case VI SA/Wa 214/08

December 21st, 2008, Tomasz Rychlicki

On 7 February 1996, the American company Tiffany & Broadway Inc. Div. of Texpol has applied before the Polish Patent Office (PPO) to register the word-figurative trade mark “TIFFANY & BROADWAY, Inc.” R-153643 in class 3 for goods such as hair care preparations, washing and cleaning preparations, teeth cleaning preparations, shoe polish, skin-care preparations, dish washing preparations, deodorants, perfumes, eau de Cologne, in class 5 for goods such as dietetic substances adapted for medical use and food for babies, in class 8 for goods such as cutlery and razors, in class 16 for paper tablecloths, in class 18 for trunks and suitcases, umbrellas and parasols, saddlery, belts, gallantry made of leather and imitation leather as well as for goods in classes 24, 25, 28, 30, 32, 33, 34, 35, 36, 38, 41, 42, 43, 44, 45. The PPO granted the application on 1 April 2004. In this case the term of 8 years of trade mark application proceedings was not a joke at all.

The cancellation proceedings were started by another American company – Tiffany & Co. from New York – based on article 8(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 subsequent amendments.

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;

The New York’s company claimed that its trade marks had a reputation and were famous and that the Tiffany & Broadway registration was made in bad faith, leading to the watering down (early Polish translation of dilution concept) of Tiffany’s trade marks. The PPO agreed and invalidated the contested trade mark. Tiffany & Broadway appealed to the Voivodeship Administrative Court (VAC) in Warsaw. The company noted that Tiffany & Co. did not provide evidence of any business activity in Poland and that none of New York’s company trade marks had been registered in Poland. According to Tiffany & Broadway article 8(1) does not provide protection for famous marks, or marks that should be protected despite the absence of registration. The PPO responded that although it is true that the goods that are signed by Tiffany & Co trade marks are available in Poland only in the secondary circulation/market, but its trade marks are renowned and associated and perceived by consumers with luxury goods, among other things, thanks to the novel and the movie “Breakfast at Tiffany’s“.

The Voivodeship Administratice Court in Warsaw dismissed the appeal in its judgment of 24 October 2008, case file VI SA/Wa 214/08. The Court held that there is no doubt regarding the reputation of TIFFANY trade mark. There are very few so strong and famous brands. In the court’s opinion the Tiffany’s trade mark is very attractive and it has huge advertising value. Tiffany has also proved its international reputation and it was not obliged to prove its existence specifically in Poland, because, in the Court’s view, the reputation is international/world wide – across borders. The VAC held that Tiffany & Broadway was aware of the existence of Tiffany’s reputation and trade mark registration for Tiffany & Broadway could lead to dilution of Tiffany’s trade marks.

Trade mark law, case Sp. 538/07

December 20th, 2008, Tomasz Rychlicki

On 3 March 2005, the Polish company “KILARGO” Spólka z o.o. from Chechlo I applied for the word-figurative trade mark Sweetlips for goods in class 30 such as ice creams. The Polish Patent Office has granted the right for protection on 18 September 2006. The registration was opposed by Lidl Stiftung & Co.KG. The company claimed that Kilargo’s registration was granted in violation of article 132(2)(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 later amendments.

A right of protection for a trademark shall not be granted, if the trademark:
… is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark

Lidl Stiftung has provided evidences of an earlier trade mark – SWEETKIDS – which was applied for on 7 May 2004, in class 30 for goods such as chocolate and confectionery products, in particular chocolate bars, chocolate candies, candies. On 22 December 2006, the PPO has issued a decision on granting the right or protection to SWEETKIDS R-185112 trade mark.

R-178936

The Polish Patent Office in its decision of 22 October 2008 case Sp. 538/07 did not find similarities between disputed trademarks, or goods they are intended to mark, since ice creams are specific products to sweets. In PPO’s view the “sweet” part is to be found in many trade marks that have been already registered and therefore it has hardly distinctive capabilities. The decision is final.

Trade mark law, case Sp. 233/07

December 19th, 2008, Tomasz Rychlicki

On 25 July 2001, Polish entrepreneur Leokadia Matuszewska from Wroclaw performing her business under the firm MADERA has applied for trade mark registration for word-figurative sign SHARP in class 9 for goods such as diving cylinders, divers’ suits, diving suits, diving gloves, diving masks, life jackets, diving apparatus, breathing apparatus, except for artificial respiration, breathing apparatus for underwater swimming, life buoys, signalling buoys, in class 25 for goods such as anti-sweat underwear, sweat-absorbent underclothing, ski boots, football shoes, caps, leg warmers, gymnastic shoes, bathing caps, bath sandals, bathing suits, bath robes, bathing trunks, cyclists’ clothing, water ski suits, beach shoes, sports shoes, waterproof clothing, headbands, socks, briefs, shorts, clothing for gymnastics, and in class 35 for goods such as business and service transactions agency, trade contractors’ agency in the field of skiing equipment and accessories, table tennis equipment, lawn tennis equipment and squash equipment, snowboard, windsurfing, ant-swear clothing, socks, sports shoes, shoe impregnants, clothing, tents, tourist fuels and fittings, bicycles and bicycle accessories, mountain tourism, swimming and diving apparatus and equipment, paragliding and equipment, organization of exhibitions for commercial or advertising purposes, trade fairs, marketing in this field. On August 4, 2005, The Polish Patent Office has granted the right of protection for Sharp R-167147 trade mark.

Japanese company Sharp Kabushiki Kaisha has filed a request for invalidation of the right of protection claiming it was granted in violation of article 8(1) and (2) 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 subsequent amendments.

A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
(ii) it infringes the personal or economic rights of third parties;

The request had to be based on the old act because the trade mark application was filed while the old act was in force. The Polish Patent Office in its decision of 3 July 2009 case Sp. 233/07 invalidated the registration.

Unfair competition, case V CSK 162/08

December 14th, 2008, Tomasz Rychlicki

The Supreme Court in its judgment of 14 October 2008 case file V CSK 162/08 interpreted the provisions of Article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 13.
1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.
2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation to adequately mark the product.

The SC held that an act of unfair competition within the meaning of Article 13(1) of the CUC is also based on introduction to the market by a third-party of products copied in the manner specified in that provision.

Industrial design law, case VI SA/Wa 1827/08

December 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 December 2008 case file VI SA/Wa 1827/08 ruled that the protection of an industrial design may only apply to the appearance of an object – its external appearance, not to its internal structure. The Supreme Administrative Court in its judgment of 16 December 2009 case file II GSK 238/09 dismissed the cassation compliant.

Wzór Przemysłowy Rp-9201

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9201. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case II GSK 361/06

December 12th, 2008, Tomasz Rychlicki

On 9 July 1998, the Polish company called “Przedsiebiorstwo Uslug Technicznych INTEL Spólka z o. o.” (PUTI) applied for trade mark reigstration for word-figurative sign “i INTEL” in class 37 for services such as: electric appliance installation and repair, fire alarm installation and repair, burglar alarm installation and repair, installation and repair of extinguishing and smoke ventilation systems, installation and repair of access control systems, and in class 38 for industrial television. The Polish Patent Office has granted the protection rights in its decision of 9 December 2002. On 21 July 2003, Intel Corporation has filed an opposition against the PPO’s decision. Since the trade mark application was filed while 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 subsequent amendments, was in force, so the opposition had to be based on its article 8(1) and (2) and article 9(1)(i) and (ii).

Article 8
A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of society coexistence;
(ii) it infringes the personal or economic rights of third parties;

Article 9
(1) Registration of a trademark for goods of the same kind shall not be permissible where:
(i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;
(ii) it is similar to a trademark that is well known in Poland as a trademark for goods of another enterprise to an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

To support its opposition, Intel Corp. has provided arguments that a sign is applied for or registered in contrary to the principles of society coexistence if it seeks to use or to undermine the reputation of other trade mark, regardless of the nature of the goods or services to which it refers. Intel Corp. successfully argued that Intel is word trade mark which is well-known and reputable. It is widely recognized and valued as a synonym for the highest quality products branded by this sign (or its derivatives) in the IT sector. The widespread knowledge of that trade was also confirmed in the Polish Patent Office’s decision in early 1994. The features and the highest quality of Intel brand products have also to be attributed to the Intel Inside trade mark because of its equally vast, global popularity and strong positive associations among customers. Intel R-93693 and Intel Inside R-86431 trade marks were registered in Poland in priority, respectively of 8 November 1990 and 18 June 1991.

“i Intel” is a sign which has a distinctive part consisting of Intel sign which is similar to Intel Copr. trade marks. It leads consumers to think that there is an association between Intel Corporation and a disputed sign, consequently, there is a risk of confusion as to the origin of goods or services which are identified by the disputed mark. According to Intel Corp., the use of the contested trade mark by PUTI was based on the reputation and the widely recognized quality of Intel trade mark. PUTI registration was made in favour of its marketing business and for the economic benefits of the Polish company. This kind of behavior also brings the risk of confusion among consumers as to the identity, trade and economic links and between Intel Corporation and PUTI. In addition, Intel Corporation has filed the explanatory memorandum arguing that “i Intel” sign violates the applicant’s personal rights. The firm (protected as personal rights under the Polish Civil Code) is the name under which Intel Corporation conducts its business, it is also the reputation of a company, to which the applicant has worked since 1968 (the establishment of Intel Corporation in the U.S.).

Since fields of business activities of PUTI and Intel Corp. did not overlap, The Polish firm argued that Intel Corp. had not demonstrated that the disputed trade mark makes difficult for Intel to use its company name. PUTI has also argued that the opposition should not be based on article 9 of the PTA since the disputed trade mark is designated for services not goods. PUTI argued that it has been using the name “Przedsiebiorstwo Uslug Technicznych INTEL” in 1989 and 1990, which was before Intel Corporation had registered its trade marks in Poland.

The Polish Patent Office invalidated “i Intel” trade mark in its decision of 19 October 2005. It was proved before the PPO that PUTI was founded on 23 July 1997 as a limited liability company, and previously (from 1 November 1983) it had operated on the market in the form of a civil company and the name Intel had been used for the first time in its firm in 1994. In PPO’s opinion, PUTI’s use of “i Intel” sign with ® before trade mark registration was granted was also a proof of taking the advantage of reputation of Intel Corp. trade marks, which was contrary to the principles of society coexistence that were defined in this case as a matter of fairness trade.

PUTI appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2006 case file VI SA/Wa 126/06 dismissed the appeal. The court held that trade marks of Intel Corp. that were registered with the earlier priority are renowned in Poland in relation to the persons involved in electronics, computers, electrical and electronic equipment of various kinds, and PUTI’s application for the contested trade mark was intended to use the reputation of Intel Corp. trade mark portfolio. In court’s opinion the Polish Patent Office has had to compare these trade marks with the disputed sign in aural verbal and visual aspects and it has reasonably concluded that there is a clear likeness between them, and given that the signs are used for determining goods, which are compatible with regard to services to which the disputed trade mark is intended use, so there was a condition for the inadmissibility of the disputed trade mark registration within the meaning of article 9.

PUTI filed a cassation complaint before the Supreme Administrative Court. However, the Court dismissed the case in its judgment of 15 May 2007 case file II GSK 361/06. SAC explicitly held that Intel is well-known trade mark on the Polish market (strong sign) and its reputation was not questioned even by the Polish company. Consequently, it should be considered that the danger of confusion between trade marks by customers, is the greater, the more well-known (or as the Court also said – standardized) is a trade mark with an earlier priority, because customers’ memory directs them in a particulary easy way, to trade marks which are well-known on the market.

Unfair competition law, case I CKN 1319/00

December 7th, 2008, Tomasz Rychlicki

Lego system A/S, Lego Trading A/S, Kirkbi A/S from Denmark and Lego Polska spólka z o.o. sued Polish companies “COBERT” spólka z o.o. and “COBI” for unfair competition (the delict of imitating a product) based on regulations included in article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 13.1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.

2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation adequately to mark the product.

COBERT is a manufacturer of plastic bricks. These bricks are structurally compatible with LEGO’s bricks and externally; some of them are very similar to LEGO’s. There is a “Cobi” trade mark impressed on each brick. The right for protection was granted by the Polish Patent Office on 6 September 1993 (R-77743). Each packaging is printed in colour and in addition there is a clearly visible “Cobi” sign in six different places of the packaging. There is also a sign of the manufacturer, with an indication of his exact address. The court of first instance noted that colours and themes of packaging for COBERT bricks are different than those used by LEGO. Those findings were acknowledged by the court of appeal. The court also held that the average customer can not be confused as to the origin of these bricks. According to the Court, the plaintiffs did not show any evidences that would allow them to base its claims on the so-called “unnamed delict” as afforded by regulations included in Article 3(1) of the CUC.

The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.

LEGO filed a cassation complaint before the Polish Supreme Court in which it requested the Supreme Court to overrule the court of appeal’s jugdment and to order the court of appeal to hear the case again or to change the appealed judgment by the SC and to issue a ruling as to the facts and costs of proceedings. The SC dismissed the cassation complaint. The Court noticed that parties had provided both extensive and exhaustive arguments about the conditions leading to qualify an act as unfair competition delict. Those arguments included economic, legal, even ethical issues. However, the Court held that imitation of others’ products is not reprehensible and blameworthy per se. The progress of civilization is possible thanks to the past legacy. Therefore, the development and improvement of each product is in the public interest. The Supreme Court found that CUC regulations are designed to ensure the accuracy of the behavior and activities of business entities in conditions of free competition and access to the market on an equal footing.

The Polish Supreme Court in its judgment of 11 July 2002 case file I CKN 1319/00 found that implementation of the constitutional principle of economic freedom also justifies the search for balance between market freedom and the freedom of goods circulation and the objectives of the CUC. The court found that the ban on other’s products imitation would lead to the emergence of unlimited monopoly against exploitation of technical solution (technology) and would prevent or at least hindered from entering the market for other companies engaged in the same or similar business activity. In Court’s view that was based on the principle of economic freedom and the rules of fair competition, such ban would be in contradiction with the law. The mere imitation of goods of another business, imitation of goods that are not enjoying any special protection by exclusive rights, does not conflict with the pursuit of competition and does not justify the interpretation of article 13 or 3 of the CUC that it is a delict of unfair competition, even if copies are in the same size as the original brick. As regards the packaging the SC held that comprehensive and clear indication of the manufacturer which is placed on a product packaging, and permanent placement of a trade mark on each product, which are put on the market, excludes the possibility of consumer confusion as to the identity of the manufacturer or the product.