Trade mark law, case I ACa 1010/09

March 27th, 2011, Tomasz Rychlicki

The 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 Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) 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, because the Court dismissed the claim with regard to 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.