Intellectual Property Law Internet Law IT Law Computer Law

Rules of Ethics for Patent Attorney Profession (PDF file, Polish language). Uniform text with changes that were passed during IV National Convention of Patent Attorneys of 7 September 2005.

§ 3
Patent attorney shall perform his/her professional duties according to his/her best will and knowledge with
appropriate precision and conscientiousnes, acting in proper moderation and dignity.

Please note that Polish patent attorneys may represent clients in all industrial property law matters (i.e. patents, trademarks, designs, etc.) and there are no specific professions such as trademark agents.

Today is the official “premiere” of the Office for Harmonization in the Internal Market’s website and beginning July 1, 2008, the US Copyright Office is offering online registration of claims to copyright through the electronic Copyright Office (eCO) website.

According to the recent judgment of the Polish Supreme Court of 30 June 2008, act signature I KZP 8/08, PDF file, in Polish language, buying counterfeited goods is not fencing. For more information and commentary please refer to Class46 website.

This post was inspired by a question and request I have recieved from my nice friend. I must admit that the Polish case law is not too rich in decisions regarding the issue of non-traditional trade marks, however some judgments are worth mentioning.

1. Three-dimensional marks

The judgment of the Supreme Administrative Court of 29 June 2005. Act signature II GSK 92/05.

The interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

This judgment concerned


2. Trade dress

The judgment of the Provincial (Voivodeship) Administrative Court in Warsaw of 2 March 2006. Act signature VI SA/Wa 1705/05.

I. According to article 30 of the Act on 31 January 1985 on Trademarks (Dz. U. No 5, pos. 17 with later changes), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
II. There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation.
III. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9 sec. 1 pt 1 and 2 of the Act on Trademarks, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions.

and the judgment of the Supreme Administrative Court of 20 February 2007. Act signature II GSK 247/06, in which the SAC rejected a cassation complaint brought by the K. Company.

It can not be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer.

This judgment concerned TERRAVITA trade mark (R-142204).

I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark? We may discuss.

3. Single colour

The judgment of the Provincial (Voivodeship) Administrative Court in Warsaw of 3 August 2005. Act signature VI SA/Wa 1482/04.

A single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.

This judgment concerned separate Color RED Pantone 485 C for goods in class 30 such as confectionery, chocolate confectionery, sweets.

4. Composition of colours

The judgment of the Supreme Administrative Court of 23 November 2004. Act signature GSK 864/04.

According to article 4 sec. 1 and article. 7 sec. 1 of the Act on 31 January 1985 on Trademarks undefined trademark, which is not represented in one form, does not possess any sufficient ability to distinguish goods.

This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks. The sign was presented as double coulour composition (lower part in orange, top part in white).

If you are keen on trade marks I’d like to present you a small “case study”. On March 1, 2004 the Polish Patent Office has registered trade mark no 152214 for word-figurative sign CZUWAJ (”Be Prepared” in Polish). Związek Harcerstwa Polskiego - Główna Kwatera is the owner, its proffesional representative was JOTBIS Biuro Techniczno-Patentowe Żebruń Anna. The mark looks exactly the same as the one in the topic of this post and it is simply and undoubtedly the Scouts Cross.

The final design of Scout’s Crass was approved during ZHP’s unification conference held on October 1-2 1918 which has choosen this sign as the official badge of Polish scouting In November 1918 the Polish Ministry of War decreed that the Krzyż Harcerski was the only civilian emblem that might be worn on military uniforms. The tradition continues to this day.

Nowadays, there are three major scouting organizations in Poland. Związek Harcerstwa Polskiego, Związek Harcerstwa Rzeczypospolitej and Stowarzyszenia Harcerstwa Katolickiego Zawisza.

Now, here are some hints from the Polish Act of 30 June 2000 on Industrial Property Law (Ustawa Prawo własności przemysłowej z dnia 30 czerwca 2000 r.) published in Dziennik Ustaw 2001 No 49, pos. 508, consolidated text of 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later changes.

Art. 129.
(…)
Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(…)
3) signs which have become customary in the current language and are used in fair and established business practices.

Article 131
1. Rights of protection shall not be granted for signs:
(…)
(ii) that are contrary to law, public order or morality, or
(…)
2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
(…)
(v) it incorporates elements being symbols, in particular of a religious, patriotic or cultural nature whose use could hurt religious feelings, sense of patriotism or national tradition,

On March 14, 2008, The Polish Patent Office together with The WIPO, The United Nations Economic Commission for Europe, The Polish Agency for Enterprise Development, The National chamber of Commerce and The Polish Confederation of Private Employers LEWIATAN organize a conference “IP protection as a condition for women’ success in science and business” which will be located in Warsaw at The Polish National Library. During the above mentioned conference there will be also held an official ending of the 3rd edition of “The Woman-Inventor” competition-plebiscite.

The distinctive character of a trademark may orginally arise from the nature of a mark or may later originate from the use of such mark on the market (acquired distinctiveness). A mark acquires the secondary meaning if it lacked the distinctive character before but during the use it became the source of information about the origin of a product. Such findings are presented in the judgment of The Supreme Administrative Court from 28 November 2007. Act signature. II GSK 236/07.

There is very interesting judgement of the Provincional Administrative Court in Warsaw from October 11, 2007. Act signature VI SA/Wa 1215/07. It concerns a dispute regarding an industrial design of a handle for cutlery which is registered for Gerlach S.A. The Court had to decide about the novelty of a design based on electronic evidences. The court ruled that such evidences are not sufficient. A CD print-out from a database can not be treated as a legal document with an unquestionable date since there are graphical tools which make a modification of such data an easily possibility. In this case such a proof can not be deemed a proper evidence if it is not properly certified. Also a statement issued by a private company is not enough unless it is supported by invoices or official publications of catalogues of exhibitions where such product was shown. A compact disk has to be certified by an expert as regards to a date it was burned.

Innovators Network has invited me to chair a workshop focusing on SMEs from the IT sector. I’ll teach them how to define intellectual assets and protect it, as well as, to raise capital, develop partnerships, and create new streams of revenue. This workshop is titled “Discover a New Source of Income for Your Company through Usage of Intellectual Property. Turning Your Innovation into a Successful Business”. It will take place on December 6, 2007, in beautiful Kraków. If you are around during this time and you’d like to meet then let me know.

I think that if someone is really interested in industrial property law issues then such a person would admire this part of human creation as well, for instance typography art. I track news about this kinf of activities in the Internet all the time and I found a list of music videos that use typography effects lately. The whole playlist is available at www.yuxt.com website.

Now, maybe a little bit more about the law. Christoph Mueller, who is the author of Mom’s typewriter typeface which as you may have noticed I used in the topic of this post, can seek for protection of his creation based on industrial property law regulations within Poland and European Union. Unfortunately, unless such work is a digital one (popular term font) he won’t be able to get proper protection from the US copyright law (sic!). I recommend you to read the judgment in the case Adobe Sys. v. Southern Software, Inc., 45 U.S.P.Q.2D (BNA) 1827, 1998 U.S. Dist. LEXIS 1941 (D. Cal. 1998) and 37 C.F.R. § 202.1(e) (1998). Additionally, it is always worth reading some paper. Check, J. L. Mezrich, “Extension of Copyright to Fonts—Can the Alphabet be Far Behind?”, The Computer Law Review and Technology Journal 1998. PDF file, 28 kB.

On April 1st, a new museum of counterfeit goods opens in Solingen, near Cologne. The Museum Plagiarius, housed in a converted railway building, will permanently exhibit 300 original products together with seemingly identical rip-offs. More details in the article at www.businessweek.com. website. Isn’t it scheduled to open at April Fool’s Day? I wrote much more about plagiarism in the post titled The Simpsons about Family Guy and American Dad.

It became a reality, the official website - www.google.com/patents, on which you may search for patents applications issued by the United States Patent and Trademark Office. All patents available through Google Patent Search come from the United States Patent and Trademark Office (USPTO). Patents issued in the United States are public domain government information, and images of the entire database of U.S. patents are readily available online via the USPTO website. Speaking about other interesting news here is a design patent no D533,561, issued for Google, covering “Graphical user interface”.

Michael Schmitz is a designer, an artists, who while creating a logotype for Max Planck Institute of Molecular Cell Biology and Genetics used to follow rules of Game of Life. Really interesting creativity. More details in the article at www.we-make-money-not-art.com website. Check also www.genotyp.com website which is another very interesting project. Good combination of typefaces for registering as industrial designs.

Very interesting tool, search engine, i.e. www.like.com website. Check what does Marty Schwimmer write about some potential legal problems in the US. There is also Susan Scafidi’s post about this issue. I wonder if this tool could be used by Patent Offices or patent attorneys.

Open projects at Ronen Kadushin website. Distributed on Creative Commons licence.