Polish IP & IT law – copyright trademark computer internet telecomm » 2009

Archive for: October, 2009

Trade mark law, case VI SA/Wa 897/09

October 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 October 2009 VI SA/Wa 897/09 held that the company name (firm) serves as the identification and prominence of the entrepreneur in the legal and economic transactions. It is also a carrier of certain information about the characteristics and qualities of business conducted by such entrepreneur. An unauthorized interference with the function of a company name infringes on the right to the name. The company name, also of the civil partnership, is a personal interests/asset of the company and relates to its identity when it individualize such entrepreneur. The firm/company name is subject to protection of personal rights/intrests under Articles 23 and 24 of the Civil Code, in conjunction with Article 43 ^{10 of the Civil Code.}

R-143502

The Court ruled that the company name (firm) is the absolute personal right, effective erga omnes, and enjoyed by everyone including businesses and individuals that do business in the form of civil partnership. The right to a company name is formed with the entry of the entrepreneur in the business register, and in any event, when the company used for the first time in trade. Entrepreneurs may claim the right to the company name (the firm) after they have been registered in the Register of Entrepreneurs in the National Court Register or in the Economic Activity Records. The disclosure of trade name/company’s name is provided in the registry (National Court Register – Polish public register maintained by the selected regional courts and the Ministry of Justice which includes the register of enterprises). It has a declaratory nature. The Economic Activity Records are maintained by the municipality of the place of residence of the entrepreneur.

The Supreme Administrative Court in its judgment of 15 January 2008 case file II GSK 298/07 held that the right of the company name is infringed if the registration of a trade mark conflicts and interferes with the exercise of the right to company name. See “Trade mark law, II GSK 298/07“. This conflict is based on misleading as to the identity of entities (acting under the company name and using the trade mark) and therefore it may jeopardize the company name (firm). Such conclusions were reached by the Supreme Administrative Court in its judgment of 26 April 2006 case file II GSK 31/06.

This case concerned the invalidation proceedings of word-figurative trade mark PIOR R-143502 owned by Przedsiębiorstwo Usługowo-Handlowo-Reklamowe PRIOR, Rostkowska Janina, Rostkowski Jan, Kuc Małgorzata from Chorzów.

Copyright law, case P 31/07

October 28th, 2009, Tomasz Rychlicki

A person acting without the authorization of the rightholder, sold in order to gain material benefits, a copy of a design of single-family house XENIA. The design was owned by the Project Studio Archipelag. The District Prosecutor’s Office qualified his actions as a criminal offense under article 117(1) and article 115(3) of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No. 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No. 90, item 631, with subsequent amendments.

Art. 115. 1. Any person who usurps the authorship or misleads as to the authorship of all or part of the work or performance of another shall be liable to a term of imprisonment of up to 3 years, restriction of freedom or a fine.
2. Any person who, without mentioning the creator’s name or pseudonym, discloses the work of another either in its original or in a derived form, or a performance, or who publicly distorts a work, a performance, a phonogram or videogram or a broadcast, shall be liable to the same penalty.
3. Any person who, with a view to making a material profit in a manner other than that specified in paragraph 1 or 2, infringes the rights of the author or neighboring rights within the meaning of Articles 16, 17, 18, 19 paragraph 1, art. 191, 86, 94 paragraph 4 or article 97 or without performing his duties as mentioned in article 193 paragraph 2, 20 paragraphs 1-4, 40 paragraph 1 or paragraph 2, shall be liable to a term of imprisonment of up to one year, restriction of freedom or a fine.
(…)
Art. 117. 1. Any person who, without authorization or without respecting the conditions imposed, fixes or reproduces another’s work in its original version or in a derived form, or a performance, a phonogram or videogram or a broadcast, at the same time authorizing the disclosure thereof, shall be liable to a term of imprisonment of up to two years, restriction of freedom or a fine.
2. If the perpetrator of the infringement defined in paragraph 1 has made the infringement into a permanent source of income, or if he organizes or directs the offending activity referred to in paragraph 1, he shall be liable to a term of imprisonment of up to three years.

The Regional Court in Warsaw filed a question of law to the Constitutional Tribunal. The Court asked whether article 115(3) of the ARNR satisfy the requirement of preciseness, because it does not precisely define what behaviors are penalized by this provision. The court noted that the construction of the aforementioned provision is deemed by the Polish doctrine of law as defective, because the phrase “in a manner other than (…), infringes the rights” is devoid of characteristic of criminal offenses, which in turn makes it impossible to identify what behaviors shall be punished. This is contrary to a fundamental principle of criminal law – nullum crimen sine lege, which is also included in the article 42(1) of the Constitution. The definition of a crime shall be strictly construed and shall not be extended by analogy.

Article 42
1. Only a person who has committed an act prohibited by a statute in force at the moment of commission thereof, and which is subject to a penalty, shall be held criminally responsible. This principle shall not prevent punishment of any act which, at the moment of its commission, constituted an offence within the meaning of international law
2. Anyone against whom criminal proceedings have been brought shall have the right to defence at all stages of such proceedings. He may, in particular, choose counsel or avail himself – in accordance with principles specified by statute – of counsel appointed by the court.
3. Everyone shall be presumed innocent of a charge until his guilt is determined by the final judgment of a court.

The Court also pointed out that the scope of criminal penalties set by provision of article 115(3) of the ARNR are in fact too broad and unduly limits the rights and freedoms. Furthermore, this provision is particularly generous to authors, performers, producers of phonograms and videograms and broadcasting organizations. Namely, any breach of their rights, creates criminal liability.

The Constitutional Tribunal in a decision of 21 October 2009, case file P 31/07, discontinued the proceedings because of the inadmissibility to issue a judgment. The decisions was based on the fact that the request contained defects in the form.

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

Patent law, case VI SA/Wa 2279/08

October 27th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 27 May 2009 case file VI SA/Wa 2279/08 ruled that the Polish Patent Office is not an authority that mechanically approves patents granted by the EPO. The Court held that if the dispute between the applicant and the Polish Patent Office related to the nature of the invention, as is was in this case, by refusing to grant a patent, the Patent Office in principle cannot merely on its own conviction as to the subject of the patent application. The PPO should seek to gather sufficient evidence to support its position. Such evidence could include witness-expert testimony. The absence of a comprehensive hearing of evidence and basing the questioned decisions mostly on its own belief in the recognition, what is the subject of the patent application, and such a situation took place in this case, justified the infringement of Articles 7, 77 § 1 and Article 107 § 3 of the APC, as having a significant impact on the outcome of the case.

Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall 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.

(…)

Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.

(…)

Article 107.
§ 1. A decision should contain: the name of the public administration body, the date of issue, the name(s) of the party or parties, the legal authority referred to, a ruling, a factual and legal justification, an advisory notice as to whether and how an appeal may be brought and the signature, name and position of the person authorised to issue the decision. Any decision which may be challenged by a petition to the civil court or a complaint to the administrative court should contain an advisory notice that such a petition or complaint may be brought.
§ 2. Other regulations may contain other elements which a decision should contain.
§ 3. The factual justification of the decision should contain the facts that the body regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law.
§ 4. If the decision fully reflects the demands of the party then there is no need to provide a justification for the decision, but this does not apply to decisions in contentious cases and decisions given on appeal.
§ 5. A body can also dispense with a justification of a decision in such cases if under current statutory regulations there is a possibility of dispensing with or limiting the justification because of the interests of State security or public order.

The Court ruled that the PPO should make a thorough analysis of the concept of “technical character of the invention” and should indicate why it interprets it very narrowly, taking in this respect the view of the EPO. The PPO should also consider whether the European patent has been granted for the same solution, and examine the merits of different assessment of the invention in Poland. During the re-hearing of the case the PPO will will take the position whether the applied solution has been sufficiently disclosed, and if so, only then will further examine its patentability, given that one of the elements of assessing the patentability of the invention is a technical solutions. Due to the lack of legal definition of a “solution of a technical nature” in assessing a technical nature of the present invention the PPO is obliged to indicate what in the opinion of the PPO is deemed as “technical solution”. The PPO will assess the technical nature of the claimed invention and will refer to the applicant’s arguments, if the interpretation of that concept made by the PPO would continue to differ on how this concept is understood to the applicant.

Trade mark law, case Sp. 211/08

October 25th, 2009, Tomasz Rychlicki

On 7 September 2007, the Polish Patent Office granted the right of protection for word-figurative trade mark “PERŁY I ŁOTRY” R-194932 applied for by HARPEL II Wojciech Harmansa for goods in Class 16 and 35. The PPO received a request for the invalidation of the right of protection that was filed by Sinonis Grzegorz Majewski who owns “PERŁY I ŁOTRY SHANGHAJU” R-164275 trade mark registered for goods in Class 09 and 41. Majewski applied for the registration on 2 February 2001. Majewski and Harmansa were members of a music band called PERŁY I ŁOTRY SHANGHAJU, but after some misunderstandings in the band, their paths diverged.

The Adjudicative Board of the Polish Patent Office in its decision of 7 April 2009, case file Sp. 211/08 invalidated the right of protection for “PERŁY I ŁOTRY” R-194932 trade mark in part in Class 35, recognizing the similarity of services.

Personal data protection, case II SA/Wa 297/09

October 21st, 2009, Tomasz Rychlicki

An individual had a telecommunications services agreement with a Company, but failed to comply with the payment and the Company has assigned the claim to another entity. The debtor requested by the assignee filed a complaint to the Inspector General for Personal Data Protection. It found that the operation of the company not been in conflict with the provisions of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments. The debtor filed a complaint against this decision

The Voivodeship Administrative Court in Warsaw in its judgment of 26 August 2009 case file II SA/Wa 297/09 held that the transfer of the debt is inseparably connected with the transfer of personal data of the debtor. Such situation is in accordance with Article 509 § 2 of the Civil Code

Article 509. § 1. The creditor may, without the debtor’s consent, transfer the receivable debt upon a third party (assignment) unless that would be at variance with statutory law, a contractual stipulation, or the nature of the obligation.
§ 2. Together with the receivable debt, the rights connected therewith shall pass to the acquirer, in particular, the claim for the interest in arrear.

All related rights together with the debt claim are transferred to the acquirer, and thus the right to dispose of the debtor’s personal information in order to implement the debt. The acquirer becomes autonomous possessor of the debtor’s personal data. The acquirer becomes the controller of personal data and processes personal information for its own account and risk. The acquirer enjoys the same rights and obligations relating to the processing of personal data as the previous controller.

Unfair competition, case III CZP 58/09

October 19th, 2009, Tomasz Rychlicki

The court of first instance held that the basic relationship linking the parties was the agreement of sale of goods defined as to its kind/sort, and therefore, the ownership of the goods sold by the plaintiff to the defendant passed in the moment of their release. Therefore, the fees for marketing services and logistics were taken for actions which the defendant has taken in relation to his goods. The Court also ruled the breach of article 15(1) point 4 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 15
1. An act of unfair competition is the introduction of difficulties for other entrepreneurs to access the market through:
1) the sale of goods or services below their purchase cost in order to eliminate other entrepreneurs,
2) the enticement of third parties to refuse to sell to other entrepreneurs or to purchase goods or services from other entrepreneurs,
3) materially justified differences in the treatment of some customers,
4) collection of charges other than commercial margins for accepting goods for sale,

According to the Court the fees charged to the plaintiff limited its access to the market. If it had not give his consent, the defendant wouldn’t establish a cooperation. The Court did not found any evidence to charge fees for marketing services and for the common commercial policy.

The defendant appealed and the court of second instance having some doubts decided to request the Supreme Court to answer the question whether article 18(1) point 5 of the CUC creates an independent basis to the claim by the buyer for an improperly obtained benefits.

Article 18
1. Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,

The Supreme Court in a resolution of 19 August 2009, case file III CZP 58/09, held that pursuant to article 18(1) point 5 of the CUC, the party may – regardless of other claims arising from the contract – to recover improperly obtained benefits from the collection of non-commercial premium charges for the acceptance of goods for sale.

Trade mark law, case VI SA/Wa 1144/08

October 17th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 25 September 2008 case file VI SA/Wa 1144/08, published in LEX under the no. 513878, held that the descriptive character of a trade mark is the fact that the sole and direct information presented is information which indicates the characteristic of the goods. These signs that only by an indirect way of inference can be deemed as a designation of such characteristics do not have the descriptive character. This case concerned the examinations proceedings of “telepizzeria” Z-284471 trade mark that was applied for by BONO A. MAZUREK Spółka Jawna.

Patent law, case VI SA/Wa 2566/08

October 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 June 2009 case file VI SA/Wa 2566/08 held that it is up to the Polish Patent Office (PPO) to reconsider the matter in its entirety and refer to the statements and allegations contained in the request for the reconsideration of the case, taking into account the above guidance and administrative procedures by which the PPO is bound.

Looks like no big deal, right? But if you could read the whole judgment, which unfortunately is not available in English, you would understand that the Polish Patent Office will have to issue an opinion, and will have to justify and explain it appropriately, on the subject what is an invention and what is a computer program and why the PPO does not grant patents to so-called “digital” solutions.

In this context, I look forward to the EPO decision in G 3/08 case and to the SCOTUS’ judgment In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).

Trade mark law, case VI SA/Wa 121/09

October 13th, 2009, Tomasz Rychlicki

On 9 October 1996, the Polish Patent Office registered the trade mark XAVIER LAURENT R-92393 for goods in class 3 such as personal deodorants. The trade mark is currenty owned by the Polish company HOUSE Spółka z o.o. from Zielona Góra. The International Trade Corporation Limited, the owner of XL XAVIER LAURENT IR-763083 trade mark filed a request for invalidation of the right of protection for XAVIER LAURENT R-92393 trade mark.

The ITC claimed it has been active in the cosmetics industry fo the long time and the most popular goods are these marked with the Xavier Laurent brand. The company had a national distributor of its products in Poland which on March 1994 applied to the Polish Patent Office for the trade mark registration of XAVIER LAURENT sign and later on it has assigned the right of protection for XAVIER LAURENT R-92393 to HOUSE. The ITC based its request on article 8(1) and (2) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with subsequent amendments.

A trade mark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence.
2) it infringes the personal or economic rights of third parties;

The request was also mentioning article 6septies of the Paris Convention for the Protection of Industrial Property. The Polish Patent Office dismissed ICT’s request and the company filed a complaint to the Voivodeship Administrative Court in Warsaw. On 5 May 2009, the VAC in a judgment case file VI SA/Wa 121/09, ruled that article 8(i) of the TMA must be interpreted broadly and concerns not only the form of trade mark, but also other subjective elements. The basis for invalidation may be, therefore, not only the characteristics of a trade mark itself, but also the reprehensible conduct of the applicant/owner. For the correctness of such interpretation of provisions of article 8(i) speaks the provisions of article 31 of the TMA that expressly provides for the invalidation of the registration rights acquired as a result of bad faith behaviour.

The VAC also held that article 161 of the IPL specifies the entity protected by this provision as “a person entitled to the exclusive use of the mark in a foreign country.” The protection provided for in article 161 may be used by any entity (entrepreneur) from abroad, which will demonstrate that at least in one Member state a specific trade mark is its “property”, especially it has the right of exclusive use that came from the relevant decision of public authorities (patent organ) in that country. The VAC anulled the Polish Patent Office’s decision from 2008 and decided that the decision was not subject to execution. The Judgment is not final yet.

Industrial design, case VI SA/Wa 189/09

October 10th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 9 October 2009, case file VI SA/Wa 189/09 interpreted the provisions of Article 103 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.

1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

The VAC ruled that it is not about the mere fact of the disclosure of the design, but whether it was possible for an unlimited number of persons from the circles specialised in the sector, to which the design belongs, to actually get acquainted with the given design.

This case concerned the industrial design “Tkanina meblowa” (in English: furniture fabric), Rp-12269.

Wzór Przemysłowy 12269

Trade mark law, case I ACa 16/10

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in its judgment of 25 September 2009 case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict.

I know that I should mention the opinion of the Advocate General Poiares Maduro of 22 September 2009 in joined cases C‑236/08, C‑237/08 and C‑238/08, Google France, Google Inc. v. Louis Vuitton Malletier, Google France v. Viaticum, Luteciel and Google France v. CNRRH, Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis.

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).

This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking.

Display Flash Poland filed an appeal complaint. The Appellate Court in Warsaw in its judgment of 14 July 2010 case file I ACa 16/10 dismissed it. The Court held that using as a keyword a word identical or similar to registered trade marks on the Internet does constitute infringement of the right of protection provided that the said act was committed without the consent of the holder and, in addition to the foregoing, the average Internet user experiences difficulty in determining whether the goods or services designated or found on the basis of a keyword are in fact assigned to the trade mark proprietor or a company commercially affiliated to it.

Internet domains, case X GC 1245/03

October 6th, 2009, Tomasz Rychlicki

The District Court in Łódź, X Commercial Division in its judgment of 22 June 2004, case file X GC 1245/03 decided the first Polish domain name case in Microsoft versus Robert Rudecki. The judgment was issued in absentia. The case concerned microsoft.pl and microsoft.com.pl domain names.

See also “Polish case law on domain names“.

Internet domains, case I ACz 364/08

October 1st, 2009, Tomasz Rychlicki

The Appellate Court in Białystok in its order of 6 May 2008, case file I ACz 364/08 ruled that, the registration and use of the Internet domain name which is the same as someone else already existing domain, may be regarded as an act of unfair competition. The definition is provided in the Article 3(1) 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 3
1. 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.

The court also noted that although the act of unfair competition takes place only when the arguing entrepreneurs can be regarded as competitors. However, there are not excluded situations where a website under a disputed domain name will be providing goods or services different from those associated with a given name on the non-virtual market. Also in such situation a person may request for the protection against violations of the rights to the domain name, especially when it is registered in order to block a domain by a competitor, if it identifies an inactive website or a webpage or a website which is not updated nor offering any goods. Registration of such domains leads to a substantial impediment to market access for other entrepreneurs, which is in violation of Article 15 of the CUC. Such actions, however, have also an economic overtone, and therefore they concern the economic rights. The Court held that a claim filed in order to establish that someone is entitled to Internet domain names, and that actions of such a person will not infringe on the right of protection for a trade mark, and are not deemed as acts of unfair competition, are claims ensuing from property rights

See also “Polish case law on domain names“.