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Archive for: November, 2009

Trade mark law, case II GSK 155/09

November 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 5 September 2008 case file VI SA/Wa 1061/08 dismissed the complaint against the decision of the Polish Patent Office on the refusal to grant the right of protection to MLEMIX MAZURSKI Z-275675 trade mark. Spółdzielnia Mleczarska MLEKPOL from Grajewo filed cassation complaint.

Z-275675

The Supreme Administrative Court in its judgment of 15 October 2009 case file II GSK 155/09 held that the statutory conditions to obtain a right of protection for trade mark set out in Article 132 of the IPL must be met on the date of a trade mark application, and not on the date of the issuance of the decision of the Polish Patent Office that ends the case.

Industrial design, case VI SA/Wa 1053/08

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 November 2008 case file VI SA/Wa 1053/08 ruled that according to the provisions of Article 117(2) of the IPL, the finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall also constitute a ground for invalidation of the right in registration. The Patent Office should make a decision in litigation procedure.

Wzór Przemysłowy Rp-8064

This judgment concerned the industrial design “Butelka” (in English: bottle), Rp-8064. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 1376/09

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 November 2009 case file VI SA/Wa 1376/09 ruled that the objections with regard to the lack of novelty and individual character of the industrial design may be raised only when we are dealing with the industrial design as defined in the provisions of Article 102 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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 subsequent amendments.

1. Any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design.
2. Any industrial or handicraft item, including, in particular, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs, shall be considered to be a product.
3. The following shall also be considered to be a product:
(i) a product which is composed of multiple components, which can be replaced permitting disassembly and reassembly of the product (complex product),
(ii) a component part, if, once incorporated into the complex product, it remains visible during normal use of the latter, the use being understood as excluding maintenance, servicing or repair work.
(iii) a component part, if it may, by itself, be subject of commercialisation.
4. In case of a design applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of paragraph (3)(i), assessment of novelty and individual character shall only be made in consideration of its visible features.

Wzór Przemysłowy 12053

This case concerned the industrial design “Przeciwpożarowa klapa odcinająca” (in English: fire severing flapper), Rp-12053. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case XXII GWzt 3/09

November 27th, 2009, Tomasz Rychlicki

The plaintiff in this case was Theatermogul ehf, owner of the CTM CAVEWOMAN no. 005051545 which was registered in Class 41 for services such as theatrical performances and orchestral services, production of radio and television broadcasts and programmes. The plaintiff also owned several Polish registrations, such as KOBIETA JASKINIOWIEC, JASKINIÓWKA, W OBRONIE KOBIETY–JASKINIOWCA, W OBRONIE JASKINIÓWKI, JASKINIOWIEC, and W OBRONIE JASKINIOWCA, which are mostly translations and variations of English signs. The defendant produced a show by Sigitas Parulskisa in an adaptation by Cezary Harasimowicz entitled CAVEWOMAN-Kobieta jaskiniowa, which was widely advertised and repeatedly shown in Poland and abroad.

The plaintiff argued that it had never allowed the use of its trade marks, and called for cessation of the infringement. However, the defendant only partially complied with this request, changing the title of the show to ‘Kobieta pierwotna’ but leaving in its advertising, tickets, and website a note that this show was previously called CAVEWOMAN-Kobieta Jaskiniowa. The defendant was also still using the website www.kobietajaskiniowa.pl.

The Court for the Community Trade Marks and Community Designs in its judgment of 4 June 2009 case file XXII GWzt 3/09 ruled that the defendant’s use infringed the CTM CAVEWOMAN and prohibited the use of all trade marks owned by Theatermogul ehf in the title or subtitle of the show, advertising and promotional materials, websites, or on tickets. The Court also ordered the defendant to withdraw from circulation and destroy all promotional and advertising materials and tickets containing the CAVEWOMAN and/or KOBIETA JASKINIOWA signs in the title or subtitle of the show. A public announcement of the judgment was ordered, this to be at the expense of the defendant, in the daily editions of national newspapers.

Collective interests of consumers, case XVII Ama 125/08

November 26th, 2009, Tomasz Rychlicki

A person who bought CHIO CHIPS produced by the Lorenz Bahlsen Snack-World, filed a complaint to the representation of the Office of Competition and Consumers Protection in Wrocław. This dissatisfied consumer argued that being in the store, he chose CHIO chips and not the other products that were sold in a similar price, because he was attracted by a draw where he could win some nice prizes. However, he became disappointed because when he did open the package and read the coupon, it turned out that the draw was already over. The date of the draw was shown on the inside part of a special bar attached to chips’ bag, but it could be difficult to read after the break of the package. Because of the lack of a clear declaration with regard to the end date of the draw, the Company was fined 22000 PLN for the practice of contravention of collective interests of consumers. According to the Polish Act on Protection of Competition and Consumers – APCC – (in Polish: Ustawa o ochronie konkurencji i konsumentów) 16 February 2007 published in Journal of Laws (Dziennik Ustaw) No. 50, item 331, with subsequent amendments, it was a violation of the obligation to provide consumers with reliable, true and complete information regarding the product.

The Polish Court of Competition and Consumer Protection upheld the contested decision in its judgment, case file XVII Ama 125/08. Such essential information as the period of promotion/draw or the validity date of the product cannot be hidden inside the bar of the package and thus not visible at first glance. Such information must be readily available. The Court ruled that the date of a draw should be indicated clearly on the product packaging and incomplete information is misleading. The judgment is not final yet, the company may file an appeal.

Trade mark law, case II GSK 1011/09

November 25th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 18 June 2009 case file VI SA/Wa 1731/08 ruled that while examining the violations of the rules of social coexistence, the Polish Patent Office must take into account also the subjective elements, which means that on existence of the conditions referred to in 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, may decide certain actions of the trade mark applicant, especially when these actions are characterized by offending behavior.

Article 8
A trademark 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;

This judgment concerned the invalidation proceedings of ecard R-150521 trade mark owned by Firstcove Technology Limited from Dublin. The VAC held also the right to company’s name (firm) is created at the time, when the order of entry into the commercial register is issued. However, the fact that information on the formation of a specific company was made publicly available, the issuance of which is required by law, should also be taken into account. This argument must be considered by the PPO in the assessment of allegations of violation of Article 8(2) of the TMA. The cassation complaint was dismissed by the Supreme Administrative Court in its judgment of 24 November 2010 case file II GSK 1011/09.

Personal interest, case III CZP 92/09

November 20th, 2009, Tomasz Rychlicki

The Supreme Court in its order of 17 October 2009 case file III CZP 92/09 held that the fixed fee for the suit for the protection of personal rights/interests is charged only for non-pecuniary claims. In cases where the plaintiff also requests pecuniary claims for damages, compensation or pay a specified amount of money for a given social purpose, it is necessary to pay the relative fee based on the general rules

Categories: Art. 23 CC | Art. 24 CC | personal rights or interests | Polish Supreme Court.

Copyright law, case V CSK 22/08

November 16th, 2009, Tomasz Rychlicki

The Society of Authors and Publishers Polish Book from Kraków (in Polish: Stowarzyszenie Autorów i Wydawców Polska Książka w Krakowie) is one of the Polish collecting societies. The Society sued Euroimpex company which is a distributor of reprographic equipment, mainly photocopiers and scanners. The suit was based on Article 20(1)(ii) of of 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.

1. The producers and importers of tape recorders, video recorders and other similar apparatus, or blank material for the recording of works with the aid of such apparatus for personal and private use, and also of reprographic apparatus shall be obliged to pay, for the benefit of the creators and performers of the said works and of the producers of phonograms and videograms, fees in an amount not exceeding 3% of the selling price of the said apparatus and material.
ii. The amount of the fees referred to in paragraph 1 shall accrue:
(1) to the creators for 50%,
(2) to the performers for 25%,

The District Court in Kraków ordered Euroimpex to pay the reprographic fee in the amount of 124,678 PLN. Euroimpex filed an appeal in which it argued that the provisions of ARNR are unconstitutional. However, the Appellate Court in Kraków shared the opinion issued by the District Court and ruled that there is a lack of grounds to question the compliance of article 20(1)(ii) and article 105(2) of the ARNR with the constitutional norms.

Article 105
1. The collective administration organization shall be presumed qualified to carry out the administration and protection of rights in the areas of exploitation in which its administration is conducted, and to engage in judicial proceedings associated therewith. This presumption may not be invoked where two or more collective administration organizations claim competence in respect of one and the same work or performance.
2. In the course of its activity the collective administration organization may demand that information be communicated to it and that documents that are essential for the calculation of the amount of remuneration and fees that it claims be delivered to it.

A similar view was also expressed in relation to provisions of the Regulation of the Minister of Culture of 2 June 2003 on designation of categories of devices and media used for recording of productions and payments levied on sales of these devices and carriers carried out by producers and importers, Journal of Laws (Dziennik Ustaw) No. 105, item 991. Euroimpex filed a cassation complaint.

The Supreme Court in a judgment of 19 June 2008, case file V CSK 22/08, ruled that according to the settled case law, any court, in principle, has the same power to assess whether the provisions of regulation that may be applicable in a given case are not inconsistent with the Constitution. Additionally, the SC ruled that the provisions related to the remuneration fees are justified and their introduction was an expression of global trends in intellectual property law that was also made in order to compensate authors and publishers for what they lose by copying or reproduction of works made by third persons for the personal use. These are the civil law claims, which the collecting societies have the right to collect and which they are allowed to claim before the court. As these fees are divided, is no longer a matter to be decided by the Court, but it is the inner matter of organization and artists who are members of this organization.

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

Copyright law, the allowed personal use

November 16th, 2009, Tomasz Rychlicki

Downloading MP3s (or movies, pictures, press articles) is not illegal under the Polish law. According to the provisions of Article 23 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.

Section 3
Lawful Use of Protected Works
Art. 23.-1. It shall be permissible, without the consent of the creator, to make use free of charge, of a work that has already been disclosed. However, this provision shall not authorize the construction of a building based on an architectural work or a work of urban architecture made by another person.
2. Personal use shall extend to use within a circle of persons who are personally related, in particular by blood or marriage, or who entertain social relations.

That was also explicitly said in Rzeczpospolita’s article entitled (this is my loosely translation of course) “Downloading MP3′s files is not a crime“.

No one in Poland will go to prison for downloading music or movies from the Internet. But you can get there for file sharing.

Computer software is protected on different rules. There are proper provisions included in the Criminal Code – CRC – (in Polish: Kodeks Karny) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 88, item 553, with subsequent amendments.

Chapter XXXV
Offences against Property
Article 278. § 1. Whoever, with the purpose of appropriating, wilfully takes someone else’s movable property shall be subject to the penalty of deprivation of liberty for a term of between 3 months and 5 years.

§ 2. The same punishment shall be imposed on anyone, who without the permission of the authorised person, acquires someone else’s computer software, with the purpose of gaining material benefit.

§ 3. In the event that the act is of a lesser significance, the perpetrator shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to one year.

§ 4. If the theft has been committed to the detriment of a next of kin, the prosecution shall occur upon a motion from the injured person.

§ 5. The provisions of § 1, 3 and 4 shall be applied accordingly to stealing energy or a card enabling the collection of money from a bank automatic cash dispenser [automatic teller machine]

There is also Chapter 14 entitled Criminal Liability in 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.

Trade mark law, case VI SA/Wa 1302/09

November 15th, 2009, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for “METAL-CHEM” R-138491 trade mark in part for goods in Class 7. The owner Przedsiębiorstwo Wdrażania Postępu Technicznego METAL-CHEM Spółka z o.o. from Gliwice filed a complaint against this decision, claiming inter alia that the PPO refrained from taking evidence from expert witness with regard to homegenity of the goods.

R-138491

The Voivodeship Administrative Court in Warsaw in its judgment of 13 October 2010 case file VI SA/Wa 1302/09 upheld the contested decision and ruled that the Adjudicative Board of the PPO, consisting of experts and the deciding cases in litigation proceedings may under the Article 84 § 1 of the APC appoint an experts witness to establish the facts on which the Patent Office has doubts, while the knowledge of the Board members is not sufficient.

Article 84
§ 1. If a case requires specialist information, a public administration body may consult an expert or experts for an opinion.
§ 2. An expert shall be excluded from proceedings on the basis of the rules set out in Article 24. The provisions regarding the hearing of witnesses shall also apply to experts.

It follows that the use of an experts witness should be incidental in nature as it was already discussed in by the Voivodeship Administrative Court in its judgment of 20 October 2006, case file VI SA/Wa 1075/06. Thus the PPO has the right but not the obligation, to refer to any opinion and it is also indicated by the optional nature of Article 84 § 1 of the APC. The PPO as a specialized authority that grants rights of protection for trade marks and other industrial property rights under the rule of law, is the only body that verifies under litigation proceedings, whether or not the exclusive right of protection for trademark meets statutory requirements. In this case, the task of the Board was the correct assessment of the similarity of the goods contained in the opposing trade marks, in which both parties used the terms in which the general range of meaning was available and is not misleading.