Trade mark law, case XXII GWo 68/12

July 26th, 2013, Tomasz Rychlicki

The Greek company I. & K. Nikolaidis Anonymi Viomichaniki Kai Emporiki Etaireia Oikiakou Kai Epaggelmatikou Exoplismou – Geniko Emporio I.D. Sourcing A.E. requested the Polish Court for the Community Trade Marks and Community Designs to order Media Service Zawada to disclose information on producers, manufacturers, distributors and suppliers of quantities of produced and sold goods and products bearing the signs BEN 10. The Greek company is the owner of the CTM FAN BAG No. 8487911. The Polish company noted it does not use the sign in question as a trade mark but in the descriptive function, to indicate the type of goods – bags of toys related to the Ben 10 TV series, designed for fans of the series.

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 in its order of 3 December 2012 case file XXII GWo 68/12 dismissed the request. The Court ruled that while alleging that the defendant infringed on its CTM, the Plaintiff should indicate what type of infringement, as defined in Article 9(1) of the CTMR, has occurred in its case, and should also prove all the conditions which must be met to justify opposition to the Defendant’s use of the CTM FAN BAG No. 8487911. Usually, the Plaintiff should also indicate how the allegedly infringing actions of the defendant affect the functions performed by the trade mark. In any event, it could not be considered as sufficient evidence to only refer to the certificate of registration and description of the defendant’s actions, as did the Greek company in this case. It was also necessary to present the claims of identity/similarity between the CTM and the questioned sign and the identity/similarity of the goods or services of either party, the strength of the trade mark, its reputation, and if there is a risk of consumer confusion, and also to provide proper evidence. The Court is allowed to apply provisional and protective measures based on the provisions of the CTMR and the Polish Industrial Property Law. The Court noted that the right to obtain information (informational claim), does not in fact secure the claim. It has its own nature, which is similar to the informational claim referred to in Polish copyright law. At this stage of the proceedings the owner/requesting party can not make claims which occur in the future, possibly before the courts. These may be claims defined in the CTMR and Polish Industrial Property Law. The order to grant access to such information is intended to determine the responsibilities of a particular entity for breaching industrial property rights. Such information will allow the owner to make a decision how to sue (how to develop a lawsuit and actions) the infringer with the use of relevant and proper claims. Filing a request with an informational claim, the owner/holder must, however, explain what is the infringing act or acts and highly substantiate them but most of all, it has to indicate the claims to which the necessary information is needed, and the person to whom such claims will be directed in a future suit. Quite different information may be used in constructing claims such as interdiction, removal the effects of the infringement, payment of damages, recovery of unlawfully obtained profits or publication of the judgment, that were used against the importer, exporter, manufacturer, the person placing the product on the market, or advertiser. The main condition in order to take account of the informational claim is to establish high probability of the infringement (prima facie evidence of the infringement). Such wording was used by the Polish legislator while implementing Directive 2004/48/EC. As the Court noted it is a very original and new wording. The legislator did not refer to concepts already existing in the Polish law based on proving and making probable of facts, but required a “high degree of probability”. The Court recognized such situation as something being between “the probable” and “the proved fact of the infringement”, however, its evaluation is always left in each case to the Court hearing a request for disclosure of information. In addition, deciding on such request, the Court must also ensure the protection of business/trade secrets. The Greek company while alleging infringement of its CTM, should, inter alia, to show that Media Service Zawada was using this sign for goods which were identical or similar to these protected. However, the Company included in the request a very general statement “goods infringing the Applicant’s right” which did not allow the Court for assessment of the validity of alleged infringement. The Court held that the request did not contain evidence, and even claims of the infringement of the CTM FAN BAG No. 8487911, that could be considered as a higly probable evidence that could establish a trade mark infringement case (prima facie evidence).