The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2011 case file VI SA/Wa 1850/10 noted the trade mark law of Western countries has developed the principle that in the event of a conflict between two signs all doubts should be decided in favor of the owner of a trade mark with the earlier priority. This principle is a simple consequence of the belief that the entrepreneur who choose a trade mark that will be used for marking the same type of goods and that is similar to the mark with an earlier priority, is acting at his or her own risk and all uncertainties should be decided against him/her.
Archive for: March, 2011
Trade mark law, case VI SA/Wa 1850/10
March 28th, 2011, Tomasz RychlickiTrade mark law, case I ACa 1010/09
March 27th, 2011, Tomasz RychlickiThe plaintiff, a licensee of an international figurative trade mark containing the word DAVIDOFF, sued Super-Pharm Poland for trade mark infringement. The plaintiff argued that an item sold as DAVIDOFF Cool Water Woman that was bought in Poland bore the identification number B7 1431298685 and established that this item was sold to Coty Middle East FZCO in Dubai in June 2007. The Polish company also offered to sell genuine products bearing the mark DAVIDOFF, which had production numbers removed or tampered with in order to disguise the illicit importation of goods from outside the European Economic Area without the permission of the plaintiff. The defendant refused to provide information about the distributor who supplied the disputed goods and did not comply with the Court’s order of 18 May 2009 case file XXII GWo 6/09 to provide such information, claiming a need to protect its trade secrets.
The Court for the Community Trade Marks and Community Designs in its judgment of 27 July 2009 case file XXII GWzt 4/09 acknowledged that the removal or alteration of the production codes is not prohibited by Community law, except for Article 13(2) of the CTMR. In this case, however, it was closely related to fraudulent marketing of goods bearing the DAVIDOFF trade mark that took place in the EEA, which indisputably constituted trade mark infringement. The Court prohibited Super-Pharm Poland Sp. z o.o. from the unlawful use of the word and figurative mark Davidoff IR-876874, namely importing, offering, marketing or stocking. However, Coty Prestige Lancaster Group GmbH filed an appeal, becasue the Court dismissed the claim as regards publishing the decision issued in the case.
The Appeallate Court in Warsaw in its judgment of 1 April 2010 case file I ACa 1010/09 dismissed it and ruled that in order for the court to accept the claim for publishing a decision it is insufficient for the claimant only to invoke the contents of a provision stipulating such a form of remedy for infringement of trade mark rights. The claimant has to indicate the facts justifying the claim, prove for what specific purposes it is necessary to publish the decision, and what are the reasons for applying such additional sanction towards the respondent.
Trade mark law, case II GSK 56/10
March 25th, 2011, Tomasz RychlickiThe Polish Patent Office registered the word trade mark TRIMEGAL R-177593 for Farmaceutyczna Spółdzielnia Pracy GALENA for goods in Class 5 such as pharmaceutical preparations. NOVARTIS AG filed a notice of opposition. The Swiss company claimed TRIMEGAL is similar to its trade mark TRILEPTAL IR-0560245 registered for goods in Class 5 such as pharmaceuticals. The PPO dismissed it. Novartis decided to file a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 12 August 2009 case file akt VI SA/Wa 581/09 dismissed it, and NOVARTIS filed a cassation complaint.
The Supreme Administrative Court in its judgment of 18 January 2011 case file II GSK 56/10 held that in the case of the final recipients of pharmaceuticlas that are labeled with TRIMEGAL or TRILEPTAL trade marks it is hard to tell about the existence of likelihood/risk of confusion. The Court noted that it should be remembered that these signs are used for the determination of drugs that are used for different illnesses such as heart disease and epilepsy. Patients who are suffering from such illnesses are deemed according to the SAC as the “aware consumers” of their prescription drugs. Moreover, the so-called “post-sale risk of confusion” can be considered only when the patient with epilepsy, also suffers from heart disease, because only then in his medicine cabinet at home can be found both drugs bearing this two marks in question. The differences between both marks are sufficient to exclude any risk of confusion and to ensure the existence of the two signs on the market without any collision. Therefore, the view that TRIMEGAL is similar to TRILEPTAL in a way that excludes the possibility of distinguishing this two signs, in fact, would limit the possibility to use other trademarks with the informational prefix TRI- (triple).
Consumer protection, case XVII Ama 118/04
March 24th, 2011, Tomasz RychlickiThe Court of Competition and Consumer Protection in its judgment of 23 February 2006 case file XVII Ama 118/04 published in the Official Journal of President of the Office of Competition and Consumer Protection of 2006/2 p. 37, held that respect for others is considered as the essence of the concept of good customs in contractual relationships between business and consumers. Such respect should be expressed in proper information how the consumer could exercise its rights. The professionals and entrepreneurs should not to use their privileged position, and they should deal with the consumer as a partner in every agreement. Misinformation, confusion, misconception and the use of consumers’ ignorance or naivete were deemed contrary to good customs.
See also “Polish regulations on prohibited contractual provisions” and “Polish case law on abusive clauses in B2C IT and IP contracts“.
Personal interest, case I ACa 544/10
March 22nd, 2011, Tomasz RychlickiA critical article was published in a paper magazine entitled “Forum Akademickie”. It concerned one of the scientist from the University of Opole. Some offensive comments appeared also at magazine’s online forum. These entries were removed after the administrator received a notice from the researcher. There was another offensive entry published on 30 November 2008, but on the same day it has been removed by a site administrator. The researcher sued the editor for allowing for the publication of inaccurate and defamatory comments which in consequence infringed on his personal interests. The District Court in Lublin dismissed the claim as unjustified. The Court held that according to regulations included in Article 14 and 15 of the PSEM the defendants cannot be held responsible because they prevented the access to questioned data/entries. The plaintiff appealed.
The Appellate Court in Lublin in its judgment case file I ACa 544/10 held that defendants should be held liable because they provided a website that was used for discussion and exchange of different views and they posted also a warning message about the moderation or deletion of entries that will not fit for certain rules, although according to the Court they were not obliged to do so, but they also employed for this purpose a person whose duty included monitoring the entries and the removal of those that were posed not in accordance with law and social norms. Therefore, The Court ruled that defendants had knowledge of illegal entries. As a result, they were responsible for failing to remove them without delay and to do so only after many months, at the request of the plaintiff.
The Court ordered the defendants (the editor of the magazine and its publisher) to publish under the article the statement of apology and to pay jointly 5.000 PLN to charity. The judgement is not final.
Trade mark law, case VI SA/Wa 1104/10
March 17th, 2011, Tomasz RychlickiDOMAIN MENADA Sp. z o.o. applied for the right of protection for the word trade mark “TCHERGA – ŻYJ KOLOROWO” for goods in Class 33 such as alcoholic beverages (except beers). The Polish Patent Office refused to grant the right of protection because it found similarity with the earlier trade mark TCHERGA IR-0829406 owned by Droujestvo S Ogranitchena Otgovornnost BELVEDERE Capital Management.
DOMAIN MENADA pointed out that it is a controlled company and the Bulgarian entrepreneur is the controlling one, where both enterprises form a homogeneous capital group and remain inseparable commercial contacts and in the interest of both parties is that DOMAIN MENADA is granted the right of protection for a trademark in question and a letter of consent signed by the Bulgarian company was a proof of such an approach. DOMAIN MENADA argued that the same evidence was brought in case of the “TCHERGA CRAZY FOR COLOUR” trade mark R-196255, in which the Polish Patent Office granted the right of protection.
The PPO noted that all relationships between entrepreneurs, can only be the basis for granting a license to use the trade mark. The provisions allowing for a letter of consent in relation to the trade mark rights remaining in force are not provided in Polish law. The Polish Industrial Property law introduced regulations on a letter of consent in a limited extent in the case of applying for the right of protection for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to a trade mark earlier registered in the Republic of Poland, whose registration has terminated. The right holder of the earlier right may give his/her consent for the later trade mark being granted a right of protection. The PPO noted that the TCHERGA CRAZY FOR COLOUR R-196255 was registered before the Supreme Administrative Court rendered a judgment case file II GSK 279/07. The SAC held that a letter of consent cannot be used as ground to register a trade mark since Poland did not implement Article 4(5) of the First Council Directive 89/104. See “Trade mark law, case II GSK 279/07“. Domain Menada filed a complaint against this decision.
The Voivodeship Administrative Court in its judgment of 12 January 2011 case file VI SA/Wa 1104/10 dismissed it and ruled that capital or organizational or personal links between enterprises cannot justify and serve as the sole reason for granting the right of protection for a trademark.
Trade mark law, case VI SA/Wa 2168/10
March 16th, 2011, Tomasz RychlickiRed Bull GmbH filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection to the “red dragon” trade mark R-179732 registered for DODONI Roman Górzyński, Marek Górzyński, Marcin Górzyński sp.j for goods in Class 32 such as mineral waters and non-alcoholic beverages. Red Bull claimed that “red dragon” is similar to its RED BULL R-207549, RED BULL ENERGY DRINK IR-0715531 and the CTM RED. Red Bull based its opposition on the reputation of these trade marks. The PPO dismissed the opposition and ruled that the opposed trade marks, despite the identical word element “red”, are different at all levels of perception, i.e., aural, verbal and conceptual, so that they produce a completely different impression on the average customer. These signs also have other verbal elements and the word “red” is present in other trade marks registered for goods in Class 32. In view of significant differences between opposed trade marks that excluded the risk of confusion as to the origin of the goods, the PPO decided that the reputation of Red Bull’s trade marks enjoyed on the Polish market is not relevant for the assessment of the risk of consumers confusion. Red Bull filed a complaint to the administrative court.
The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2010 case file VI SA/Wa 2168/10 dismissed the complaint. The court agreed with the PPO that the consumer who does not speak English will perceive RED BULL and RED BULL ENERGY DRINK as fanciful trade marks, and “red dragon” composed in part with the fanciful word “red” and in part of the Polish word of some specific meaning (Dragoon – mounted infantry or as a tall, stout, vigorous, sprawling woman) will be perceived differently. The court held that since the opposed trade marks are not similar, therefore the registration of “red dragon” R-179732 will not bring unfair advantage to DODONI or be detrimental to the distinctive character or the repute of Red Bull’s trademarks.
Criminal law, case II Kp 366/10
March 11th, 2011, Tomasz RychlickiThe Polish prosecutor decided to discontinue the proceedings against a man who allegedly changed the password to an e-mail account of another person. The IP address of a computer that was used to commit this act served as the only evidence. The Prosecutor stated that a lot of people had access to this computer, so it was difficult or almost impossible to determine the offender. The aggrieved person has made a complaint to the Regional Court in Otwock. The court in its decision case file II Kp 366/10 anulled the order of the prosecution and ruled that the Prosecutor should prepare additional evidence such as interrogation and confessions of witnesses.
Trade mark law, case VI SA/Wa 650/10
March 1st, 2011, Tomasz RychlickiThe Voivodeship Administrative Court in Warsaw in its judgment of 20 Demceber 2010 case file VI SA/Wa 650/10 acknowledged the rule that the infringement of the company name as a condition to invalidate the registration of a trade mark under the old Polish Trade Mark law is not forejudged by registration of an identical or similar mark by another company. The VAC repeated that the exclusive rights to the company name are not an absolute. The limits have the territorial and objective nature and they concern the actual actvity of an entity that is using the name in question. Only within these limits the collision between identical or similar company name and trademark may occur. So if the scope of business activities of an entitled to the company name and the holder of the registration of the trade mark differs, there is no risk of consumers confusion as to the identity of companies or for example, a proprietor of the later trade mark is not using the reputation associated with an earlier identical or similar company name, it’s hard to say that there is the collision of these two rights, and consequently an infringement of an earlier right to the company name. This judgment is not final yet.