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Archive for: February, 2012

Trade mark law, case II GSK 72/11

February 29th, 2012, Tomasz Rychlicki

On 25 May 2006, the Polish company AERECO Wentylacja Sp. z o.o. applied for the word-figurative trade mark HIGROSTEROWANIE Z-311192 for goods in Classes 07, 09, 11 and 35. The Polish Patent Office refused to grant the right of protection, claiming that the applied sign does not have sufficient level of distinctive character. The PPO pointed out this trade mark is built from the core “sterowanie” (in English: controling/steering) and the prefix higro (English: hygro) which indicates a semantic link to the humidity. The sign that is created from these two elements, although not listed in dictionaries, is not a fanciful term and simply means “to regulate humidity”.

Z-311192

AERECO filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 8 September 2010 case file VI SA/Wa 1117/10 dismissed it, and ruled that both in the legal commentaries and the case law of administrative courts, it is considered in particular, that the descriptive sign is one that has the characteristics of the topical, concrete and direct descriptiveness. The topicality of the signs should be assessed on the objective basis and consist of examining whether from the perspective of current market conditions, a sign is useful for description of the goods and if as such it should be accessible to all participants. The rule of concrete descriptiveness states that a sign which indicates the specific characteristics of the product for which the designation is intended may be exempted from the registration as descriptive one. The direct descriptiveness occurs when a descriptive sign informs directly, clearly and unambiguously about the characteristics of a particular goods, so that characteristics may be interpreted directly, and not by associations.

The Court shared the position of the PPO, that the the questioned sign simply means “controling humidity” and thus explicitly indicates the characteristics of the designated goods and can not be appropriated to describe the products or services of one company. The VAC did not find anything fanciful in the figurative element of the HIGROSTEROWANIE trade mark. ARECO filed a cassation complaint but it was dismissed by the Supreme Administrative Court in its judgment of 29 February 2012 case file II GSK 72/11.

Personal interest, case IX GC 367/11

February 27th, 2012, Tomasz Rychlicki

The company Polska Wódka (in English: Polish Vodka) from Warsaw sued two other companies Wódka Polska sp. z o. o. and Wódka Polska sp. komandytowa from Lublin (both companies are lined with Stock Spirits, former Polmos Lublin) for the infringement of the company name based on the regulations included in the Polish Civil Code that provides that the company name of the entrepreneur should differ sufficiently from the company names of other entrepreneurs that carry on their activities on the same market. The company name may not be misleading, in particular as regards the entrepreneur’s person, the object of their activity, place of activity and supply sources, and the Polish Act on Combating Unfair Competition which treats the use of the designation of the undertaking in a way which may mislead customers in relation to its identity, based on the use of trade mark, name, emblem, letter abbreviation or another characteristic symbol already lawfully used to indicate another undertaking, as the act of unfair competition.

Polska Wódka claimed that it has the priority to its company name based on the entry in the Register of Business Entities in the National Court Register (KRS). The name of Warsaw’s company was entered in 2003, and the company names of Lublin’s entities were entered accordingly in 2005 and 2009. Polska Wódka argued that both sued companies act intentionally in order to mislead other market participants.

Both defendants did not agree with the suit and argued that they obtained the right to use their company names under final and binging decisions of the registration court, and noted that Polska Wódka does not proved that it performs any business activity under its company name because there are no annual reports in the KRS that would serve as proof of use.

The District Court in Lublin in its judgment case file IX GC 367/11 dismissed the suit as unfounded. The Court agreed that the company from Warsaw was the first one to start the use of the questioned name, however, it did not provided any evidence of its use in order to prove the confusion of other market participants. The Court also ruled that the protection if afforded to designation that are put in genuine use, not to these that were only registered in the KRS. Finally, the Court noted that the name Polska wódka (Polish vodka) is descriptive term related to a product name that is connected with a specific business activity, and it cannot be appropriated by single company. The Court ruled that Polish vodka is a designation that should be in the public domain, in order to be available for different entities which wish to use such name for their products. The judgment is not final yet.

E-proceedings, case II FZ 447/11

February 23rd, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Gdańsk in its order of 23 March 2011 case file I SA/Gd 916/10 rejected a complaint against a decision on leaving the applicant’s request for the relief for the payment of court fees from the complaints, without examination. The complaint was sent by post the day after the deadline, but the day before, the same letter has been sent by e-mail at 10:50 pm to the court. The VAC found the complaint to be void and rejected it. The applicant filed a complaint against such order.

The Supreme Administrative Court in its order of 21 December 2011 case file II FZ 447/11 agreed with the applicant, and repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC issued very precedential opinion. The Court held that despite the legal loopholes it is possible to bring the pleadings via e-mail correspondence with the courts. The court also held that the date of the filing is a real moment of delivery of the e-mail message, which will be communicated to the recipient in the appropriate e-mail program. The Court noted that information about the confirmation of data transmission, which includes the date of delivery, is provided in the header of each e-mail message and it decides on timely filing of the pleadings. The Court stressed that the party to the proceedings before the administrative courts cannot bear the negative consequences of failure to implement the Polish Act on Proceedings Before Administrative Courts of the relevant provisions concerning the submission of documents by electronic means. After that judgment a party can effectively bring to the administrative court every pleading by electronic means, including the complaint or a cassation complaint, despite the lack of a formal legal basis. The only problem is that the document lacks of a formal signature. But there is no obstacle to supplement it after the call issued by the court. If the applicant will send a complaint via e-mail at the last moment, it will be deemed as the effective delivery and filing. It only has to be signed in person after the call from the court in a specified deadline.

Copyright law, case C-360/10

February 22nd, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 16 February 2012 Case C-360/10 Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v Netlog NV ruled that 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), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the in formation society, and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding a national court from issuing an injunction against a hosting service provider which requires it to install a system for filtering:
– information which is stored on its servers by its service users;
– which applies indiscriminately to all of those users;
– as a preventative measure;
– exclusively at its expense; and
– for an unlimited period,
which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright.

Trade mark law, case II GSK 1033/10

February 22nd, 2012, Tomasz Rychlicki

This is another part of the saga of trade marks consisting of numerals. On March 2003, Agencja Wydawnicza TECHNOPOL Spółka z o.o. applied for the word trade mark 100 PANORAMICZNYCH Z-261876 for goods in Class 16 such as newspapers, charade magazines, booklets, brochures, flyers, calendars, posters, exercise books.

The Polish Patent Office decided that it cannot grant rights of protection for signs which cannot constitute a trade mark, or are devoid of sufficient distinctive character. The PPO reminded that the following are considered as being devoid of sufficient distinctive character (i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied, (ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods, (iii) signs which have become customary in the current language and are used in fair and established business practices. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 24 April 2010 case file VI SA/Wa 410/10. TECHNOPOL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 November 2011 case file II GSK 1033/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC agreed with allegations of violation of administrative proceedings that was based on erroneous findings that the disputed trade mark could not acquire secondary meaning. The Court noted that when the PPO is assessing whether or not a sign has a sufficient distinctive character, any circumstances accompanying its use in marking the goods in trade should be taken into consideration. Grant of a right of protection under previously mentioned rules may not be denied in particular where prior to the date of filing of a trademark application with the PPO, the trademark concerned has acquired, in consequence of its use, a distinctive character in the conditions of the regular trade. This indicates the possibility of acquiring secondary meaning by descriptive signs. In principle, secondary meaning can only be acquired by signs that are devoid of any distinctiveness, including descriptive or generic designations. Thus, the mere fact that the sign is purely informational does not preclude the acquisition of secondary meaning. Descriptive signs refer to the qualities or characteristics that may affect goods from various manufacturers.

Unfair commercial practices, case VI ACa 1179/11

February 20th, 2012, Tomasz Rychlicki

The President of the Office of Competition and Consumer Protection in its decision of 29 August 2008 case DOK – 6/2008 ruled that two Polish collecting societies, the Association of Writers and Composers (Stowarzyszenie Autorów – ZAiKS) and the Polish Filmmakers Association (Stowarzyszenie Filmowców Polskich – SFP), were involved in actions deemed as infringement of competition on the relevant market. This decision concerned the agreement on uniform rates of copyright remuneration that were collected from commercial users for the sale of audiovisual works on media intended for private use. The request to initiate antimonopoly proceedings was filed by the Polish Press Publishers Association (Izba Wydawców Prasy – IWP) based on the provisions of the Polish Act of 16 February 2007 on Protection of Competition and Consumers – APCC – (in Polish: Ustawa o ochronie konkurencji i konsumentów), published in Journal of Laws (Dziennik Ustaw) No. 50, item 331, with subsequent amendments.

IWP claimed that ZAiKS and SFP are competing entities because they are active on management and collecting in the same fields of exploitation of copyrighted works, and authors, creators and copyright owners can freely choose the collecting society they want to be represented by.

The President of the OCCP found that ZAiKS and SFP decided that the minimum remuneration rates for one copy of the media will be for a movie on DVD – 2 PLN, for a movie on VCD and VHS- 1,1 PLN, for a cartoon movie on DVD – 1.6 PLN, and for a cartoon movie on VCDs and VHS – 0,8 PLN. Minimum rates for a copy of audiovisual work on the media that are sold together with other products, including, in particular newspapers and magazines were set on an even lower level. For instance for a DVD that was put on the market before 1 July 2004 – 1 PLN, and from 1 July 2004, 0.60 PLN, There were also introduced discounts from 5% to 40% depending on the number of copies (from 100.000 to above 700.000 copies).

Members of IWP, who are press publishers, are also contractors of ZAiKS and SFP. The Press publishers add copies of DVD movies to their newspapers and magazines, as the so-called inserts. They are required under the provisions of Polish copyright law to pay appropriate remuneration for the reproduction of the audiovisual work on the copy for individual use. The remuneration fee is paid by the press publishers only through the collecting society. IWP argued that the remuneration of the authors for use of audiovisual works should be individualized, and the conditions of agreement to use the work should be negotiated. The collecting societies should negotiate different rates for different movies. Such actions would prove the real concern for the interests of every member of each collecting society, because the authors of a better movie should earn more. The rates covered by the agreement between ZAiKS and SFP did not include possible revenues from the use of audiovisual works, nor the specifics of this use. Thus, according to the IWP, the agreement of ZAiKS and SFP on the application of uniform rates, deprived commercial users the possibility to negotiatie the rates, and significantly restricted competition.

ZAikS and SFP filed complaints against the decision of the President of the OCCP. The Polish Court of Competition and Consumer Protection in its judgment of 8 July 2011 case file XVII AmA 23/09 dismissed them. The Appeallate Court in Warsaw in its judgment case file VI ACa 1179/11 dismissed the appeal.

Trade mark law, case VI SA/Wa 2041/11

February 15th, 2012, Tomasz Rychlicki

Sfinks Polska S.A. requested the Polish Patent Office to invalidate the rights of protection for word-figurative trade mark CLEOPATRA R-153234 owned by Restauracja CLEOPATRA Bachar Aziz from Lublin. Sfinks Polska owns earlier registered word-figurative trade mark SPHINX R-105162.

R-153234

Sfinks claimed that the trade mark CLEOPATRA R-153234 is similar to its trade mark and argued that it has legal interest in this proceedings as there is a possibility of misleading customers based on the similarity of trade marks. This could be particularly applicable considering the fact that SPHINX trade mark is already known on the market and, therefore, it has a stronger distinctive ability. Sfinks also argued that Bachar Aziz filed its trade mark in bad faith with an intent to use the reputation of Sfinks’ trade marks by suggesting a common origin from a single entity.

R-105162

The Polish Patent Office dismissed the request and decided that the trade marks, in this case, are different in all aspects. Sfinks Polska S.A. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 27 December 2011 case file VI SA/Wa 112/11 dismissed it. The Court held that the PPO correctly decided that there are visible differences in both signs. The VAC also ruled that the application for a trade in bad faith may occur in a situation in which the applicant is linked with the owner of the earlier sign with a special relationship of trust resulting, for example, from cooperation contracts or agreements. The trade mark can be filed in bad faith in order to acquire a financial extortion from the owner of an earlier sign, or to gain control of that entity, or to force the conclusion of the license agreement, etc. The trade mark can be also filed in bad faith with the intention to block the use of the prior sign or in order to acquire of the market position of the holder of the earlier mark. However, the allegation of bad faith trade mark application has not been proven by Sfinks Polska S.A.

See also “Trade mark law, case VI SA/Wa 112/11“.