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Archive for: January, 2009

Trade mark law, case III SA/Wr 499/08

January 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Wrocław in its judgment of 28 January 2009 case file III SA/Wr 499/08 held that the powers of sanitary authorities include the power to control of foodstuffs also in terms of their marking and labeling. According to article 120 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, the trade mark is protected as a whole regardless of its composition. So questioning the legality of a trade mark that was made by the State Sanitary Inspection, with the assumption that part of the label of foodstuff is a registered trademark, lead to an unacceptable invasion of the powers reserved by law for the Polish Patent Office. Indeed, such action of SSI would, in fact, “prohibit” the use of a trade mark, while the State Sanitary Inspection cannot encroach on the powers reserved by law for other state authorites.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.

2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.

3. Any references in this Act to:
(i ) trademarks shall also mean service marks,
(ii) goods shall mean, in particular, industrial or handicraft goods, agriculture products or natural products, such as, in particular, waters, minerals, raw materials, as well as, subject to Article 174(3), services,
(iii) counterfeit trademarks shall mean identical trademarks illegally used or trademarks which in the course of trade can not be distinguished from the trademarks registered for the goods covered by the right of protection,
(iv) earlier trademarks shall mean the trademarks applied for registration or registered basing on the earlier priority.

A situation where an entrepreneur has advertised tea, using only, image of cannabis-like leaves cannot be considered as advertising of narcotic drugs or psychotropic substances. In this case, it was not a promotion of any other substances prohibited by the law because, there was no name of any specific drug or psychotropic substance. Moreover, this issue goes beyond the competence of the State Sanitary Inspection.

The cassation complaint was rejected by the Supreme Administrative Court in its judgment of 31 May 2010 case file II OSK 832/09.

Polish patent attorneys, case III CZP 118/08

January 29th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 23 January 2009, case file III CZP 118/08, held that an advocate, legal advisor or patent attorney who is acting as a substitute representative cannot authenticate a copy of the basic power of attorney that was issued in the name of the primary proxy. The court also ruled that the defect in form of a pleading based on improper form of powers can be removed by a confirmation of a party that issued the primary POA. The court should assign the other party a reasonable time limit for supplementation of a pleading and POA.

Industrial design, case II GSK 612/08

January 28th, 2009, Tomasz Rychlicki

The Supreme Administrative Court (SAC) in a judgment of 27 January 2009, case file II GSK 612/08, held that it cannot deny the legitimacy to submit, in the opposition proceedings before the Polish Patent Office, a request for invalidation of a right in industrial design registration, to a person, who was charged with the allegation of committing the offense of assigning to itself the authorship of this exclusive right (plagiarism), if that person alleges and argues that the questioned right was granted in violation and against of legally binding regulations.

This judgment concerned the industrial design “Rozetka pod pieczęć i plastyczną oprawę dokumentów” (in English: Rosette under seal and plastic binding documents), Rp-632.

See also “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1601/08

January 28th, 2009, Tomasz Rychlicki

On July 4, 2002 Polish company Aldo sp. z o.o. applied for the right of protection for word-figurative mark ALDO S Z-252456 in classes 6, 19, 35, 37. The services indicated to operating a store and wholesalers with building materials. In 2005, The Polish Patent Office has issued a favourable decision and registered the submitted mark R-169096.

R-169096

German company Aldi Einkauf GmbH has opposed the registration. The opponent based its claims on two registrations. However, only the second of the presented trade marks ALDI R-173352 covered the contested class. This sign was also registered later in 2006 (the trade mark application was filled on June 11, 2002). After finding the opposition justified the The Adjudicative Board of the Polish Patent Office transformed it into the motion to cancel trade mark rights.

However, after parties submitted additional observations and after hearing oral arguments, The Board found that Aldi just started its business on the Polish market and does not offer or sell building materials so far. Aldo’s representative argued that the contested sign differs because of its figurative elements and due to small amount of letters and its ending there is no verbal similarity. Another argument presented that Aldo was using its sign since 1995 and there was no Aldi’s presence on the Polish market at this time. It was also noted that goods and services are aimed at the careful consumer so there is no risk in the association of the origin of such goods. Therefore, the PPO rejected the ALDI’s request in its decision of 26 February 2008 case act signature Sp.148/07. The PPO noted that contested wholesales services are alike but goods sold by Aldo are being offered in special shops where Aldi’s products are available in hipermarkets. The Board also held that both marks are not similar because they differ visually and they sound differently.

The German company filed a complain before the Voivodeship Administrative Court in Warsaw. In its complaint Aldi Einkauf still claimed that the disputed trade mark may lead to association with its brand. The German company alleged that the PPO wrongly assessed similarities. Aldi’s representative argued that the verbal aspect has greater importance in word-figurative trade marks. The letter “S” is separated from the word Aldo. Therefore, this expression will be perceived by the public as a dominant. However, the Voivodeship Administrative Court in Warsaw in its judgment of 11 December 2008 case file VI SA/Wa 1601/08 dismissed Aldi’s complaint. The VAC held that PPO provided a proper and complete assessment of the disputed signs. The Adjudicative Board compared them globally, and also referred to the verbal elements. The difference of even a single letter is a sufficient factor to distinguish these signs, in visual, phonetic and aural perspective — said judge Ewa Marcinkowska, (the rapporteur). The judgment is not final yet. The cassation complaint may be filed before the Supreme Administrative Court.

Personal rights, case II CR 419/89

January 25th, 2009, Tomasz Rychlicki

The Supreme Court in a judgment of 19 October 1989, case file III CR 419/89, published in OSP 1990, book 11-12, p. 377, ruled that the circumstances excluding the unlawfulness of an infringement of personal rights/interests include inter alia actions that are allowed under the law, i.e. an action that is permitted by an applicable legal regulation and an action taken in the defense of a legitimate interest.

Advertising of alcohol products in Poland

January 25th, 2009, Tomasz Rychlicki

Current regulations on alcohol advertisement are included in the Act of 26 October 1982 on upbringing in sobriety and counteracting alcoholism (Polish: Ustawa o wychowaniu w trzezwosci i przeciwdzialaniu alkoholizmowi). There are very important definitions included in article 2.

(2) promotion of alcoholic beverages – a public tasting of alcoholic beverages, free distribution of accessories associated with alcoholic beverages, organising the sale of alcoholic beverages with prize-awarding and contests based on purchase of alcoholic beverages, as well as any other forms of encouraging publicly to purchase alcoholic beverages, excluding competitions based on the purchase of alcoholic beverages,

(3) advertising of alcoholic beverages – the public dissemination of trade marks of alcoholic beverages or graphic symbols related to them, as well as names and graphic symbols of entrepreneurs producing alcoholic beverages not being different from names and symbols of alcoholic beverages, which serve to popularise trade marks of alcoholic beverages; any information used for trade purposes, exchanged between firms engaged in the production of, wholesale trading and retail trading in alcoholic beverages, shall not be deemed to be advertising,

(4) sponsorship – direct or indirect financing or co-finance of the activities of individuals, legal persons or organizational units without legal personality for the dissemination, establishing or enhance the reputation of the name, manufacturer or distributor, the trade mark or other sign to individualise of the entrepreneur, its business, product or service

(5) information on the sponsorship – presenting information that includes the name of the sponsor or his trade mark in connection with the sponsorship.

According to article 13₁ of the Act, Advertising of alcoholic beverages shall be prohibited in Poland, except for beer.

Advertising of which shall be permitted provided that
(1) is not directed at minors,
(2) does not depict minors,
(3) does not combine the consumption of alcohol with fitness, or driving,
(4) does not include claims that alcohol has medicinal properties, is a stimulant, tranquillizer or a means of resolving personal conflicts,
(5) does not encourage the excessive consumption of alcohol,
(6) does not present abstinence or moderate consumption of alcohol in a negative way,
(7) does not highlight the high alcoholic content as being a positive quality of alcoholic beverage,
(8) does not have associations with (a) sexual attractiveness, (b) relaxation or recreation, (c) study or work, (d) success or professional life.

2. Advertising and promotion of beer, referred to in paragraph 1 can not be pursued:
(1) in television, radio, cinema and theater hours between 6am and 8pm, with the exception of the advertising provided by the organizer of professional sports in the course of this event;
(2) on video cassettes and other media;
(3) in the press for young people and children;
(4) on the covers of newspapers and magazines;
(5) on advertising posts and billboards and other fixed and movable surfaces used for advertising, except that 20% of the advertising surface will placed with visible and legible inscription indicating about the harmful use of alcohol or to ban of the sale of alcohol to minors;
(6) with the participation of minors.

The Polish Ministry of Health wants to limit the advertising of beer. According to the proposal, the advertising and promotion of beer can not be pursued in TV, radio, cinema and theatres between 6am and 11pm. There is also important news related to the Euro 2012 championships: fans at stadiums will not be allowed to buy drinks with an alcohol content of over 4.5%.

Categories: advertising law | alcohol advertising | Polish law.

Advertising of pharmaceuticals, case II CSK 289/07

January 24th, 2009, Tomasz Rychlicki

According to one of the older judgments of the of the Supreme Court – Civil Chamber of 2 October 2007, case file II CSK 289/07, published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2008, No 12, item 140, p. 54, a public advertisement of promotional prices (price cuts) of drugs that is made by comparing these reduced prices with the higher prices, suggesting periodic drug sales at a lower price, is a prohibited public advertising of medicines as referred to in article 57(1)(i) and (iii) of the Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo farmaceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with subsequent amendments.

1. Advertising of the following medicinal products, addressed to the general public, shall be prohibited:
i) dispensed exclusively on doctor’s prescription
(…)
iii) included, according to separate regulations, on the lists of the reimbursable medicines and authorized for issuing without prescription, with the proper name identical with the name mentioned on these lists.

It is also the act of unfair competition as provided in article 16(1)(i) of the 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.

In the field of advertising the act of unfair competition shall be, in particular, the following:
1) advertising contrary to provisions of the law, good practices or offending human dignity,

The Court ruled that assessment whether advertising can be deemed as misleading should refer to the model of the average recipient of this kind of advertising – the consumer of advertised products or services.

In this case, it was the average consumer of pharmaceuticals, to which advertising newspapers and leaflets were directed. As the Supreme Court noted in its judgment of 3 December 2003, case file I CK 358/02, the model of the average consumer, who is reasonably well informed and reasonably observant and circumspect, is now used widely adopted in the Republic of Poland as it is in the European Union.

However, the model of an average consumer could not be defined and considered in isolation from the conditions of this specific case and the realities concerning recipients of specific products to which the advertising is directed. Therefore, one could not ignore the fact that such consumers are often very ill persons, often with reduced capacity of perception and limited ability of reasonable and critical evaluation, as well as they are often elderly, which is also a significant group of consumers of medicines. These are typically the person more susceptible to suggestion and less critical. These people are targeted by pharmaceutical advertising and, while assessing the possibility of confusion, the characteristics of this kind of audience should be taken into account as a model of the average consumer.

Trade mark law, case VI SA/Wa 1620/08

January 22nd, 2009, Tomasz Rychlicki

On 22 January 2003 the Spanish company Aceites del Sur-Soosur, S.A. applied to the Polish Patent Office to register the word trade mark LA ESPANOLA Z-260063 in class 29 for goods such as edible oils and fats. The PPO rejected this trade mark application, justifying its decision case file DT-51/08 on the basis of Article 129(1)(ii) and Article 129(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 subsequent amendments.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character

Article 129(2)(ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The representative of the Spanish company claimed that Aceites del Sur-Soosur had a long tradition in the production of such goods and is well-known in many countries, and that there is also a CTM registration for the word-figurative trade mark LA ESPANOLA CTM no. 000132092, however, the PPO found that the sign indicated the word origin of goods from Spain. In its original language it means “the Spanish” or “Spain”. And in PPO’s opinion Spain is also famous for production of goods of this type, such as oils.

Aceites del Sur-Soosur filed a complaint before the Voivodeship Administrative Court in Warsaw but the VAC in its judgment of 18 November 2008, case file VI SA/Wa 1620/08 fully agreed with the Polish Patent Office and stressed the fact that such sign, while presented without any graphic element, has purely-for-information status, which points to the place of origin of goods imported from Spain. This decision is not yet final.

Protection of traditional nourishment in Poland

January 22nd, 2009, Tomasz Rychlicki

On 5 January 2009 recent amendments of the Act of 17 December 2004 on registration and protection of agricultural names and products, foodstuff and traditional products (in Polish: ustawa o rejestracji i ochronie nazw i oznaczen produktów rolnych i srodków spozywczych oraz o produktach tradycyjnych), published in Journal of Laws (Dziennik Ustaw) No 10, item 68, with subsequent amendments, came into force. A product is now deemed to be a traditional food only if it is associated with the culture and traditions of Poland and its communities. The method of production is considered as traditional if it was used for at least 25 years.

According to article 22a of the Act, at the national level, the Minister of Agriculture and Rural Development after consultation with the Council for the Traditional and Regional Names of Agricultural Products and Foodstuffs may set the adjustment period to continue to use the name for the entity which has made a reservation for someone else’s application for the registration of protected designations of origin or geographical indications. Such a situation is only possible if the entity has brought its products to the market in accordance with the law and continues to use the name for a minimum of five years.

Categories: Polish law.

Trade mark law, case Sp. 451/07

January 22nd, 2009, Tomasz Rychlicki

On 1 April 2003, the Polish company Scooter sp. z o.o. from Bytom applied to the Polish Patent Office for the word-figurative trade mark CITY ROCK Z-262984 for goods and services in classes 9, 12, 21, 24, 25, 35, 36, 40, 41, 42, 43. After almost three years, the PPO granted the right for protection R-173752 in its decision of 6 March 2006.

R-173752

Hard Rock Holdings Limited from the UK filed a request for invalidation of the right of protection based on provisions included in article 131(2)(i) 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.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
and article 132(2)(ii):
2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark 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,

The request for invalidation was limited by the UK company to goods in classes 9, 25, 41 and 43. Hard Rock Holdings provided earlier trade mark registrations HARD ROCK CAFE R-97170, Hard Rock CAFE R-126149, Hard Rock CAFE R-140353. The company claimed that there existed visual, aural and conceptual similarity between the disputed signs which might lead to consumers to confusion. Hard Rock Holdings argued that HARD ROCK CAFE trade marks had a reputation and were used as a cult brand for restaurants in many countries. The president of the Polish company, acting without a professional representative, claimed that the signs were not similar.

The Polish Patent Office dismissed the request in its decision of 6 November 2008 act signature Sp. 451/07. According to the PPO, there was no risk of confusion between the trade marks. The PPO also stressed the fact that the word “rock” cannot be proprietarized by one entrepreneur because it indicates the genre of music. As regards the reputation, the PPO said that it is difficult to talk about HARD ROCK CAFE’s reputation because it has been present in Poland since 2007 an,d for the time being, only in Warsaw, while the contested trade mark was applied for much earlier, in 2003.

Trade mark law, case Sp. 27/06

January 19th, 2009, Tomasz Rychlicki

On 9 February 2000, the Polish Patent Office granted the right of protection for the word trade mark PICKENPACK R-118206 applied for on 27 September 1996, the Polish entrepreneur Katarzyna Warzocha from Koniecpol, for goods in classes 29 and 30 such as frozen meat products, fish, poultry and game, frozen fruits and vegetables and frozen flour products.

R-118206

German company Pickenpack-Hussmann & Hahn Seafood GmbH from Lüneburg owned an international registration for the word-figurative trade mark PICKEN PACK IR-520553 in class 29 for goods such as meat, fish, poultry and game as well as cooked fruit and vegetables, cooked take-away dishes mainly consisting of meat, fish, potatoes and/or other vegetables; all these goods are deep frozen. The registration was granted in the Republic of Poland on October 2008. German company filed before the Polish Patent Office a request to declare the lapse of trade mark protection based on provision of article 169(1)(i) 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:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons for its non-use exist,

Katarzyna Warzocha argued that she started to use the contested trade mark in the previous two years during talks with contractors interested in her offer. She provided information that the PICKENPACK trade mark had been used for frozen products, advertising flyers, business cards and offers of cooperation. Katarzyna Warzocha claimed that the goods labelled with this trade mark were present at the Polagra fair in the years 2001-2005. She also declared that she was able to provide statements of companies, which took supplies of frozen products poduced by her company. German company argued that this was not real evidence of actual use. On 6 November 2008, the PPO postponed the hearing in this case act signature Sp. 27/06 to supplement the evidence.

Trade mark law, case II GSK 251/08

January 18th, 2009, Tomasz Rychlicki

The Supreme Administrative court in its judgment of 24 June 2008 case file II GSK 251/08 ruled that due to the fact that the trade mark MILKA that was invoked against the trade mark MIKLA R-148766 registered for goods in Classes 12 and 30, is a word trade mark, its use can manifest itself in a way that was chosen by the owner, which means that the holder may impose it on goods but not in any contradiction of the conditions afforded by the right of protection. The trade mark holder may, therefore, by marking the goods for which the sign received protection, to use a word trade mark by incorporating it in other registered trade mark, or to join it with the elements known and belonging to other sign.

Trade mark law, case

January 17th, 2009, Tomasz Rychlicki

The Polish company Arenda Biuro Obrotu Nieruchomosci from Warsaw filed before the Polish Patent Office a request for invalidation of the right of protection of the trade mark ARENDA WOJCIECHOWSCY R-178655, which was registered in classes 35, 36, 37 and 42. The company from Warsaw claimed that there was a risk of confusion between the trade mark ARENDA WOJCIECHOWSCY and the trade mark ARENDA R-94766, which was applied for with an earlier priority on 3 November 1994 and registered on 27 March 1997 for services in class 36 for real estate agency and brokerage.

R-178655

ARENDA S.C. from Czestochowa argued that claims based on article 132(2)(ii) of the IPL were unfounded because an assessment of the overall impression excludes the risk of confusion as regards the disputed trade marks

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark 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 association with the earlier mark,

The company argued that both signs have different graphics, which clearly distinguishes them. Another argument was that the PPO had already registered six different trade marks with the ARENDA element.

R-94766

Despite the fact that, in the Polish language, “arenda” formely meant “lease” or “tenancy”, the PPO had invalidated the right of protection for a trade mark in part – in class 36 in its decision of 27 October 2008 act signature Sp. 487/07.

Trade mark law, case I ACa 1047

January 15th, 2009, Tomasz Rychlicki

The Appellate Court in Wrocław in its judgment of 30 December 2008 case file I ACa 1047 published in LEX under the no. 519268, held that descriptive signs which present information about the goods, its characteristics, not its origin from the designated entrepreneur, lacks distinctive character. The descriptive elements may be one of the components of the trade mark, such as fitting of a particular word or symbol indicating a characteristic of the goods. Then the sign is assessed as a whole and not only through the prism of one component – a descriptive word, but also other accompanying elements. To acquire the distinctive character, all the symbols (signs) used in the course of trade as a descriptive trade marks, must also include a word which would develop in the collective consciousness of the consumers of the product a clear association between the sign and a product, distinguishing it as originating from a given entrepreneur.

Categories: acquired distinctiveness | distinctive character | Polish Appeallate Court.

Product information, case VI SA/Wa 2119/08

January 15th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment case file VI SA/Wa 2119/08 ruled on products information and labelling. The Polish company BIZ from Swiebodzice appealed the decision of the Trade Inspection ordering it to change information placed on products (tiles) that were imported form Spain where all descriptions were only available in Spanish. The Company claimed that it presents its clients with all information needed in Polish language during sales. However, the Court ruled that according to article 3(1) and 6 of the Act of 27 July 2002 on specific terms and conditions of consumer sale and amendments to the Civil Code (in Polish: Ustawa o szczególnych warunkach sprzedazy konsumenckiej oraz o zmianie Kodeksu cywilnego) published in Journal of Laws (Dziennik Ustaw) no 141 item 1176, all information should be provided in given conditions.

1. The seller selling his products in the Republic of Poland shall provide clear, understandable, not misleading information in Polish, necessary for proper and full use of the consumer good sold. In particular, the following information shall be provided: name of the product, description of the manufacturer or importer and country of origin of the product, safety label and kite mark required by separate provisions, information whether the product is approved for general sale in the Republic of Poland, as well as, according to the type of the product, specification of energy consumption and other data mentioned in separate provisions.
(…)
6. The information or documents referred to in paragraphs 1 and 5, should be drawn up in the Polish language, or, if the type of information allows it, in a comprehensible form. The requirement to use the Polish language does not apply to names, trademarks, trade names, indications of origin and customarily used scientific and technical terminology.

The seller is explicitly required to provide information, sufficient for the proper and full use of the goods sold. Such information should be in Polish language or in a comprehensible graphic form and placing a substitute of product’s information in the form of the European standards is not enough, because it will be only legible for oriented, but not the average consumers.

Categories: consumer protection law | Polish courts | Voivodeship Administrative Court.