Industrial design, case II GSK 323/09

February 23rd, 2010, Tomasz Rychlicki

A Polish company filed a notice of opposition to a final decision of the Polish Patent Office (PPO) on the grant of a right in registration for the industrial design. The opposition has been filed under the provisions of Article 102(1), Article 103(1), Article 104(1) and (2) and Article 106(1) 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 102
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.

Article 103
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.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

The opposing party claimed the lack of novelty becuse the disputed design was disclosed inter alia during the exchange of correspondence with the owner and the lack of the individual character of a product. The PPO rejected the opposition and ruled that the industrial design is new. While referring to the cooperation between the opposing company and the owner, the PPO noted that the disclosure of a design was only approved between both parties. The PPO stated that the industrial design in question was not disclosed publicly. In the proceedings before the PPO and the courts no other evidence with regard to public disclosure of the design was submitted.

The Voivodeship Administrative Court in its judgment of 19 November 2008 case file VI SA/Wa 1767/08 dismissed the complaint against the decision of the PPO. The Supreme Administrative Court in a judgment of 20 January 2010 case file II GSK 323/09 dismissed the cassation complaint. The SAC held that any correspondence, not only commercial, bears the characteristics of confidentiality due to the fact that by its nature it is addressed to the designated entity, and refers the specific content associated with a certain confidence on the part of the sender. Its publication requires the consent of both parties. Therefore, it coould not be argued that the disclosure of a new design could take place in the correspondence between the two businesses working together. The cassation complaint also presented the argument of exceeding the principle of formality. The Court ruled it unfounded based on provisions of Articles 255 and 256 of the IPL.

Article 2551
1. Litigation proceedings in the cases referred to in Article 255(1)(i)-(viii) shall be initiated at a written request.
2. A request for initiation of a proceeding shall be subject to payment of a fee.
3. A request shall contain:
(i) identification of the parties and their addresses
(ii) brief presentation of the case
(iii) clear definition of the decision sought
(iv) reference to the legal ground
(v) indication of evidence
(vi) signature of the requesting party and a date
4. The request shall be accompanied by:
(i) a power of attorney, where the request is submitted by the representative
(ii) copies of the request in a number corresponding to the number of the parties to the litigation proceeding
(iii) a receipt for the payment of the fee referred to in paragraph (2).
5. The Patent Office shall check whether the request for initiation of a litigation proceeding satisfies the formal requirements referred to in paragraphs (3) and (4).
6. Where the request fails to satisfy the formal requirements, the Patent Office shall invite the requesting party to remove the defects, under pain of discontinuance of the proceeding, within 30 days.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law.
2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.
3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.
31. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

Because of the adversarial nature of proceedings before the PPO, the party has to prove the circumstances from which it derives the legal consequences that are more favorable. The proceedings before the Polish Patent Office are reduced of principles set out in the of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, including the principle of formality, or the principle to watch over the interests of the parties by the public administration bodies.

Wzór Przemysłowy Rp-9198

This case concerned the industrial design “Zadaszenie drzwi” (in English: door canopy) Rp-9198. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.