Archive for: advertising law

Trade mark law, case XVI GCo 204/13

September 30th, 2013, Tomasz Rychlicki

On Augut 2013, Polish telecom Polkomtel sp. z o.o. started an advertising campaign of its mobile Internet access services. In a short movie, a girl named Basia is starting new life by dumping her boyfriend and moving to a new flat with an Internet access based on LTE technology. She mentions that her boyfriend had Internet access provided by Telekomunikacja Polska S.A. under the brand name Neostrada. She is very happy about the changes. The ad ends with the statement that Internet provided by Plus (brand name of Polkomtel) is faster from Neostrada. This comparison is based on the ranking provided by SpeedTest.pl of July 2013.

On 9 September 2013, Telekomunikacja Polska requested the District Court in Warsaw to issue a preliminary injuntion against Polkomtel, in order to prohibit acts of unfair competition and trade mark infringement of the word trade mark NEOSTRADA R-182762. Telekomunikacja noted that Polkomtel is one its major competitors on the Polish telecommunication market. The Company argued that Polkomtel infringed its trade mark rights by taking unfair advantage of reputation and distinctive character of the NEOSTRADA brand, and the advertising movie was comparative advertising contrary to good practices, and as such, should be deemed as unfair competition.

The District Court in Warsaw in its order of 23 September 2013 case file XVI GCo 204/13 dismissed the request. The Court held that premises to secure the claims are based on substantiation of claims, i.e. on providing prima facie evidence of the infringement and legitimate interest in granting the order. According to the Court, Telekomunikacja did not provide evidence on reputation of its trade mark and Polkomtel did not infringe the right of protection for NEOSTRADA, because this sign was only used to specify the service to which it relates. The word was used as a name for a given service, not as a trade mark. The Court noted that advertising that allows to identify, directly or indirectly, the competitor or products or services offered by the competitor, described as “comparative advertising”, should be deemed the act of unfair competition if it is contrary to good practices. However, the short movie clip published by Polkomtel is not in any way contrary to such practices, because it is not misleading and it does not affect market decisions as to the purchase of goods or services. The Court agreed with the decision of the President of the Office of Competition and Consumer Protection of 6 August 2009 case no. DDK 4/2009, according to which, advertising is deemed as misleading when a consumer gets false idea of ​​the goods or services, and misleading information influence the decision to purchase these products.

See also “Trade mark law, case XXII GWo 68/12“.

Consumer protection, case VI ACa 1069/12

March 9th, 2013, Tomasz Rychlicki

The concept of “average consumer” is present in intellectual property law and the law of unfair competition from a long time. Since the Dassonville case (C-8/74), the concept of the average consumer has been developed in the case law of the Court of Justice of the European Union, and appeared in the preamble to Directive 2005/29 on unfair commercial practices. According to the Polish Act of 23 August 2007 on combating unfair commercial practices, the average consumer is understood as a consumer who is adequately informed, attentive and careful. The assessment should be made with account taken of social, cultural, linguistic factors and the belonging of the particular consumer to a specific consumer group, which should be understood as a consumer group that can be unambiguously identified and is particularly receptive to the influence of a commercial practice or the product to which the commercial practice applies, due to its specific characteristics, such as age, physical or mental disability. However, it looks like some Polish courts do not think that an average Polish consumer fits the established rules and standards.

The Appeallate Court in Warsaw in its judgment of 13 January 2013 case file VI ACa 1069/12 held that the average Pole, which is also the average consumer, mainly due to social and cultural backgrounds, has a low legal awareness. This is the view shared by the Polish legal community. The standard of an average Polish consumer cannot in any way related to the standard of the average consumer in Western Europe, which for many decades is subjected to intensive consumer education.

Tax law, case I SA/Łd 657/12

August 2nd, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Łódź in its judgment of 29 June 2012 case file I SA/Łd 657/12 held that the agreement that provides the website to use for advertisers is deemed as the unnamed contract and is similar in its provisions to a contract of tenancy as defined in the Article 693 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 693. § 1. By a contract of tenancy, the landlord shall assume the obligation to give a thing to the tenant for use and the collection of fruits for definite or indefinite time, and the tenant shall assume the obligation to pay to the landlord the rent agreed upon.

The Court decided that the income from advertising should be taxed like tenancy contracts or leases, which allows a taxpayer to choose a lump sum settlement on registered revenues.

Tax law, case II FSK 1548/10

April 2nd, 2012, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 9 March 2012 case file II FSK 1548/10 ruled that an agreement concluded between the advertiser company and the owners of websites is deemed as unnamed contracts, similar to tenancy contracts. The inclusion to the application of a third party code that allows for the inclusion of advertising on the website is in fact a violation of the integrity of the copyrighted work – the website. It is therefore the realm of personal (rather than property) rights of the copyright holders. Although these are inalienable rights, but according to the prior case-law, it is permitted to waive of the exercise of these rights by the creator to third parties, including entrepreneurs as it was decided by the Appellate Court in Warszawa in its judgment of 14 May 2007case file ACa 668/06 published in OSA 2008/12/39. The author or copyright owner can effectively commit to a specific person not to execute of personal rights, or even to allow for its exercise on his or her behalf, because then it comes to the exercise, and not to the renouncement of moral (personal) rights.

Consumer protection, case XVII Ama 118/04

March 24th, 2011, Tomasz Rychlicki

The 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“.

Tax law, case IPPB5/423-249/10-4/PS

September 3rd, 2010, Tomasz Rychlicki

The Polish financial services company decided to increase sales of its services, by providing to clients and potential clients with different types of advertising materials bearing its logo. These materials are worth no more than 100 PLN each and are distributed to customers and potential customers during promotional events, sponsored events, as well as individual meetings.

The Company requested for individual tax interpretation. In its view, costs of these advertising materials could be included in cost of revenue. The Director of the Tax Chamber in Warsaw in its decision of 8 July 2010 case file IPPB5/423-249/10-4/PS ruled that in this case it is important to determine whether the disputed expenses are costs of advertising, or representation. The value of gifts does not decide whether these expenditures are deemed as advertising or representation. The circle of bestowed persons and the circumstances in which these materials were distributed are the most important factors.

The Director considered that the expenditure incurred on the purchase of low value advertising materials that were handed over to customers or potential customers in events such as public fairs, promotional events, etc. may be deemed as deductible costs within the meaning of Article 15(1) of the Polish Act of 15 February 1992 on the Legal Entities’ Income Tax – LEIT – (in Polish: Ustawa o podatku dochodowym od osób prawnych) consolidated text published in Journal of Laws (Dziennik Ustaw) of 2000, No. 54, item 654 with subsequent amendments.

Article 15
1. The deductible costs shall be all costs incurred in order to derive revenues, with the exception of costs referred to in Article 16(1) Costs incurred in foreign currencies shall be converted into Polish zlotys in accordance with the average exchange rates as announced by the National Bank of Poland on the date when the cost was incurred. If costs are denominated in foreign currencies, and there is a difference in the currency exchange rates between the date of entering those costs in the books and the date of payment, those costs shall be increased or reduced, as appropriate, by the differences arising from the application of the currency selling rate as at the date of payment, set by the bank, whose services were used by the person who incurred the cost, and the application of the average exchange rate as announced by the National Bank of Poland on the date of entering the costs in the books.

In the case of the transfer of gifts of higher value to selected contractors or potential contractors in order to create the best impression, the expenditures for the purchase of these gifts have representative nature, and thus are not deductible under the Article 16(1) point 28 of the LEIT.

Tax law, case I SA/Po 454/10

August 15th, 2010, Tomasz Rychlicki

The Polish company offers its partners and customers different products free of charge during its advertising actions. These are coffee and coffee machines or gadgets such as umbrellas, pens, mugs and other gifts such as shirts and other stuff with the logo of the company. The Company has considered whether this type of gratuitous transfer of goods is a transaction subject to VAT tax in accordance with article 5(1)(i) and 7(2)(3) of the Act on Goods and Services Tax – GSTA – (in Polish: ustawa o podatku od towarów i usług) of 11 March 2004, Journal od Laws (Dziennik Ustaw) No. 54, item 535 with subsequent amendments.

Article 5
1. The goods and services tax, hereinafter called “the tax”, shall be charged on:
i) supply of goods and services for a consideration in the territory of the country;

(…)
Article 7
2. The supply of goods, referred to in Article 5.1.1, shall also mean the transfer by a taxable person of goods constituting the property of his undertaking for the purposes other than those related to the undertaking operated by a taxable person, in particular:

i) transfer or use of goods for private needs of a taxable person or that of his employees, including former employees, partners, shareholders, members of a cooperative and their household members, members of decision-making bodies of legal persons, members of associations,

ii) any other transfer of goods without consideration, in particular donations

– where the amount of input tax on those transactions was wholly or partially deductible from the amount of output tax.

3. The provision of paragraph 2 shall not apply to printed advertising and informational materials, gifts of small value or samples.

The Voivodeship Administrative Court in Poznań in its judgment of 10 August 2010 case file I SA/Po 454/10 held that such transfer of goods is not subject to VAT.

Advertising law, case II OSK 1234/09

August 5th, 2010, Tomasz Rychlicki

An entrepreneur has placed a large billboard without obtaining a permit for the construction work. The Supreme Administrative Court in its judgment of 29 July 2010 case file II OSK 1234/09 held that when dealing with an object, which must be built on a proper ground, this is a construction work that requires permits for construction.The fact that this structure can be moved does not change a fact that it is a construction fixed to the ground, requiring a building permit.

Advertising of pharmaceuticals, case VI SA/ Wa 1136/10

July 29th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Advertising of pharmaceuticals, case II GSK 461/09“. The Voivodeship Administrative Court in Warsaw in its judgment case file VI SA/ Wa 1136/10 canceled the decision of the Main Pharmaceutical Inspector (MPI) that ordered the Polish Federation for Women and Family Planning (in Polish: Federacja na rzecz Kobiet i Planowania Rodziny) to remove information about different contraceptions. Such information was published on the website operated by the PFWFP. Being bound by a legal interpretation issued by the Supreme Administrative Court, the VAC ruled that the mere use of the name of a pharmaceutical product does not prejudge that such message is advertising. One cannot automatically equate information on medicinal products with an incentive to use them.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Personal interest, case VI Aca 1460/09

July 12th, 2010, Tomasz Rychlicki

Małgorzata F. sued a residential community and the advertising company for infringement of her personal interest that according to Małgorzata F. occured by placing on the building in which she lives a big banner advertising, which concealed all windows of her apartment. The plaintiff did not ask for financial compensation but only for the apology to be published in the media.

The Appellate Court in Warsaw in its judgment of 9 July 2010 case file VI Aca 1460/09 held that such advertising does not constitute an infringement of personal rights, in particular immunity of residence, because it rather concerned the so-called domestic peace (mir domowy). The court suggested that the right way for such disputes is to challenge the resolutions of the community or to base a lawsuit on the rules on the protection of property, and not the path of protection of personal interests.

See also “Advertising law, reclaim the windows“.

Advertising of pharmaceuticals, case GIF-P-R-450/147-3/ZW/09/10

April 28th, 2010, Tomasz Rychlicki

The Main Pharmaceutical Inspector (MPI) questioned the legality of a few ads that were aired on different TV channels. See for instance the decision of the the Main Pharmaceutical Inspector of 4 March 2010, no. GIF-P-R-450/147-3/ZW/09/10, with regard to indication of a sponsor in “The producer of Guajazyl – cough syrup, invites to a forecast” (in Polish “Na prognozę pogody zaprasza producent Guajazylu – wykrztuśnego syropu na kaszel”), the decision of the the Main Pharmaceutical Inspector of 10 March 2010, no. GIF-P-R-450/141-4/ZW/09/10, with regard to indication of a sponsor in “The producer of Pectosol – herbal preparation on cough, invites to a program” (in Polish: “Na program zaprasza producent Pectosolu – ziołowego preparatu na kaszel”), the decision of the the Main Pharmaceutical Inspector of 6 January 2010, no GIF-P-R-450/126-3/ZW/09/10, with regard to indication of a sponsor in “The producer of DEXAPINI invites to a forecast. DEXAPINI – goodnight without a cough” (in Polish: “Na prognozę pogody zaprasza producent syropu DEXAPINI. DEXAPINI – dobranoc bez kaszlu”).

According to the provisions of Article 17(1) of the Polish Act of 29 December 1992 on Broadcasting – LOB – (in Polish: Ustawa o radiofonii i telewizji), published in Journal of Law (Dziennik Ustaw) of 1993, No 7 item 34, consolidated text of 19 Novemver 2004, Journal of Laws (Dziennik Ustaw) No 253 item 2531, with subsequent amendments, sponsored programmes or other broadcasts shall be identified as such by sponsor credits at their beginning or end. Such credits may specify only the sponsor’s name, business name, trademark or contain some other identification of the business operator or its business activities, the image of a single product or service. According to article 4 pt. 7 of the LOB, the “sponsorship” shall mean a direct or indirect financing or co-financing of the production or transmission of a programme or other broadcasts by an entity other than the broadcaster or producer of the programme, with a view to establishing, enhancing or promoting the renown of the name, business name, product or service, trademark. The MPI held that publishing of information relating to the product, not the manufacturer’s is basically beyond the scope of sponsorship. The MPI ruled that these sponsorship spots were illegal advertising of the medicinal products.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Personal interest, case I C 1272/09

March 19th, 2010, Tomasz Rychlicki

The District Court in Wrocław in its judgment of 18 March 2010 case file I C 1272/09 ruled that the advertising of one of the Polish banks that promoted payment cards in such a way that it used profile pictures of users of nasza-klasa.pl website infringed their personal rights. A user who logged into his or her profile was presented with an advertising that showed his or her face/image placed on credit card together with a slogan “your card for your personal account may look like this”. The Court held that users agreed to the provisions of the terms of service, but the permission to use their pictures concerned solely the purpose of social networking, not advertising. The Court ordered the owner of nasza-klasa.pl to pay the plaintiff 5000 PLN as a compensation. This judgment is not yet final.

Advertising of pharmaceuticals, case VI SA/Wa 2110/09

March 17th, 2010, Tomasz Rychlicki

On June 2009, the Polish newspaper Gazeta Wyborcza published an article (sort of an advertorial) containing images that depicted packagings of Stoperan and Septolete medicines, together with a note instructing that the leaflet attached to these products should also be read.

The Main Pharmaceutical Inspector (MPI) ordered the immediate cessation of such actions in a decision of 4 September 2009, case no. GIF-P-R-450-81-4/JD/09, PDF file. The MPI has fund that the publication did not meet the requirements set in the Polish pharmaceutical law with regard to advertising of medicinal products. It was not commissioned by the responsible entity and it did not contain the detailed characteristics of the products or the required and established warnings.

Agora S.A., the owner of Gazeta Wyborcza, filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC in a judgment of 11 MArch 2010, case file VI SA/Wa 2110/09, ruled that medicines are dangerous products and therefore the strict requirements and regulations for advertising of such preparations were introduced, and they do not allow for the so-called hidden advertising. The Court agreed with MPI’s findings that the article published by Gazeta Wyborcza contained information about two medicinal products and that could encourage the use of these preparations, which is contrary to article 52(1) of the The Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo famraceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with later amendments.

Advertising a medicinal product shall mean any activity consisting in informing about and encouraging to use the medicinal product

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Tax law, case I FSK 1520/09

March 15th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 10 March 2010, case file I FSK 1520/09 held that the free of charge transfer of advertising materials for purposes related to operating a company is not deemed as supplying the goods and therefore not subject to value added tax as defined in article 7(2) and (3) of the Act on Goods and Services Tax – GSTA – (in Polish: ustawa o podatku od towarów i usług) of 11 March 2004, Journal od Laws (Dziennik Ustaw) No. 54, item 535.

Article 7.
1. The supply of goods, referred to in Article 5.1.1, shall mean the transfer of the right to dispose of the goods as owner, including also:

1) transfer under an order made by a public authority or an entity acting in the name of such an authority, or transfer in pursuance of the law, of the ownership of the goods against payment of compensation;

2) release of goods under the tenancy, lease or a similar contract concluded for a definite period of time, or a credit sale contract, if the contract provides that in the normal course of events envisaged in that contract or upon payment of the last instalment, ownership shall be passed;

Advertising of pharmaceuticals, case II GSK 461/09

March 14th, 2010, Tomasz Rychlicki

The Main Pharmaceutical Inspector (MPI) found that Polish Federation for Women and Family Planning (in Polish: Federacja na rzecz Kobiet i Planowania Rodziny) is publishing the names of contraceptives on its Internet website, and therefore the Federation advertises these products. The MPI ordered the immediate cessation of such actions because it may encourages the use and prescription of such medical preparations and public advertisement of medicinal products as contraceptives, that are issued only on prescription, is prohibited by provisions of article 52(1) of the The Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo famraceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with later amendments.

Advertising a medicinal product shall mean any activity consisting in informing about and encouraging to use the medicinal product

The Federation filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC in a judgment of 3 March 2009, case file VII SA/Wa 2108/08, has overturned the decision of the MPI, but only because the incomplete material was submitted. The VAC agreed that MPI’s decision was justified with regard to cessation of public advertisement of contraceptives. The Federation filed a cassation complaint.

The Supreme Administrative Cort (SAC) in a judgment of 10 March 2010, case file II GSK 461/09, ruled that the provisions of article 52 are legible and obvious, but they must relate to the circumstances of a particular case and to all reasons of actions taken in order to inform about the medicinal product. According to the SAC these circumstances were not considered and the VAC also omitted the statutory objectives of the Federation. The major role of the Polish Federation for Women and Family Planning is to inform of the various methods of family planning. Publishing the name of contraceptives, cannot be treated as an encouragement for its use. The information does not come from the responsible entity, and the publication of characteristics of medicinal products is not considered as advertising. If the order issued by the MPI was sustained, such information could not be published at all.

Therefore, the SAC annulled the questioned judgments of the Voivodeship Administrative Court and returned the case to the VAC for reconsideration.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Polish regulations on pharmaceutical trade marks

February 1st, 2010, Tomasz Rychlicki

I. The law
The main sources of binding laws in the Republic of Poland are the Constitution of 2 April 1997, acts passed by the Parliament, ratified international treaties and regulations issued, for example, by the Prime Minister or the Council of Ministers – Polish government. Regulations are issued for the purpose of implementation of acts.

I.A. Substantive law

  • The Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, defines the requirements for obtaining trademark protection in the Republic of Poland. There are related regulations that are issued for the purpose of implementation of the IPL.
  • The Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with later amendments.
  • The Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo famraceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with later amendments, defines pharmaceutical/medicinal product. Of course, there are several related regulations to the PHL and the case-law of Polish courts. The PHL is almost entirely based on EU principles.

I.B. Procedural law

  • Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.
  • Act on proceedings before administrative courts – PBAC – (in Polish:Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with later amendments.
  • Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No 43, item 296, with later amendments.
  • Act on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych) of 11 April 2001, Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments.

I.C. Case law
See “Polish case law on advertising of pharmaceuticals“.

I.D. EU law
Moreover, all EU regulations and the judgements of the Court of Justice (COJ) of European Union relating to pharmaceutical issues are directly applicable in the Republic of Poland.

II. National bodies and procedures concerning pharmaceutical trade marks
The right of protection for a sign being capable to be registered as a trade mark is granted by the Patent Office of the Republic of Poland (PPO), while the Polish Ministry of Health controls the registration process and approval procedure for medicinal products. Registration of signs for medicinal products is governed by the procedure and requirements set by the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products (ORMP), a government agency competent for the evaluation of the quality, efficacy and safety of medicinal and biocidal products, as well as medical devices.

The Main Pharmaceutical Inspector (MPI) is the central organ of public administration, executing her/his duties with the assistance of the Main Pharmaceutical Inspectorate and the MPI is authorized to ensure compliance with pharmaceutical regulations in the context of advertising. Main Pharmaceutical Inspector is the appeal institution in matters connected with executing tasks and competences of Pharmaceutical Inspection (the institution of second instance with regard to decisions of the provincial pharmaceutical inspector). Appeals against MPI’s decisions are filed before the Voivodeship Administrative Court (VAC) in Warsaw. Further appeal should be brought in the form of a cassation complaint with the Supreme Administrative Court (SAC).

An entity seeking to produce or import medicinal products must file an application for approval with the Inspectorate. The application must specify the medicinal name of the product and any other commonly used names (INN).

See also “Administrative, civil and criminal proceedings in trade mark cases in Poland“.

III. Names of medicinal products and trademarks
A trade mark under the Polish law can be any sign capable of being represented graphically, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertaking. The following, in particular, may be considered as trademarks: words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals. Rights of protection will not be granted for signs which are a subject of absolute or relative grounds for refusal.

A medicinal product is defined as a substance or mixture of substances presented as having properties for treating or preventing disease in humans or animals, or given to make the diagnosis or to restoring, improving or modifying physiological functions through the pharmacological, immunological or metabolic effect. The the provisions of the PHL also apply to products that meet the criteria for both medicinal product and another type of product, in particular dietary supplement or cosmetic (as defined by separate regulations).

Pharmaceutical trade marks not only need to comply with the provisions of the IPL, but also need to meet the requirements regarding names of pharmaceutical products contained in the PHL. Pursuant to these regulations, a pharmaceutical name can be:

  • an invented name, as long as it does not cause confusion with a common name (i.e., an international non-proprietary name (INN) recommended by the World Health Organization or, if such name has not been attributed to a given product, a common chemical name) or
  • a common, or scientific name accompanied by a trademark, a company name or the name of the marketing authorization holder.

Obtaining an authorization for the release of a medicinal product under a given name does not exempt an entity from liability if the name violates third-party trademark rights. Applicants must therefore also keep in mind the provisions of the IPL and the CUC.

See also:
– “Trade mark law, case II GSK 210/06“.
– “Pharmaceutical trade marks, case VI SA/Wa 844/09“.
– “Pharmaceutical trade marks, case VI SA/Wa 1176/09“.

An announcement of the president of the ORMP issued on March 12 2008 gives further guidance on the process of naming medicinal products and the substitution of names that have already been granted. It sets out the following instructions:
– The new name of a medicinal product should differ from an earlier registered product name in at least three letters and the new name cannot include a sequence of more than two of the same letters. An applicant is required to provide a justified written statement when seeking a waiver from these rules.
– The new name cannot result in the likelihood of confusion (in print, spelling and pronunciation) with an earlier registered name.
– Signs such as ® and ™ cannot form part of the new name.
– The name of a medicinal product cannot contain personal names and surnames, including the name of the inventor. Further, it must not contain:
1. Names of abstract persons that are used together with scientific titles, aliases or pseudonyms.
2. Expressions which bring to mind religious, geographical or historical associations.
3. Names of natural objects.
4. Obscene words or words suggesting obscene content.
– The name of the medicinal product must also be placed on the packaging in the Braille system.

The evidence of registration of a medicinal product name with the ORMP can act as evidence of use of the sign as at that date when attempting to protect the name as an industrial property right.

IV. Parallel imports and repackaging
Parallel importation into Poland of a pharmaceutical product from other EU member states or members of the European Economic Area (EEA) is acceptable provided that it meets all of the following conditions:

  • The parallel-imported medicinal product must have the same active ingredient(s) as the product authorized for marketing in the territory of the Republic of Poland (i.e., the same indications at least up to the third level of the Anatomical Therapeutic Chemical (ATC) or the ATC veterinary.
  • The parallel-imported product must have the same strength and administration route as the authorized product, as well as the same or similar form. Slight differences in form cannot lead to any therapeutic differences between the products.
  • Where the product authorized for marketing in Poland is a brand name pharmaceutical, the parallel import must also be the brand name product. Similarly, where the authorized product is a generic, the parallel-imported pharmaceutical must also be a generic.

A parallel importation licence is available on application to the Polish Health Minister. The licence is issued on the basis of an assessment report prepared by the president of the ORMP. The application must include a sample of the packaging and the product information leaflets. A licence is granted for a period of five years.

According to article 21a(9) of the PHL, a parallel importer is allowed place the pharmaceutical product on the market in the Republic of Poland under:

  • the name used in Poland,
  • the name used in the EU/EEA member state of origin, or
  • the common name (INN) or scientific name together with the trademark or name of the parallel importer.

A parallel importer intending to put a medical product on the Polish market must inform the holder of the marketing authorization in Poland as to the expected date of entry onto the market at least 30 days before such date.

In order to place a product on the market, the parallel importer must alter the packaging thereof to adhere to local standards. The packaging must comply with that approved in the import licence. Polish authorities generally require the repackaging of parallel-imported medical products into new boxes that contain informational leaflets for patients in Polish. The informational leaflet must also be consistent with the parallel import licence.

The first parallel-imported medical products were placed on the Polish market in November 2005. As of the end of March 2008, over 200 parallel import licences had been granted in Poland.

The process of repackaging frequently causes disputes between parallel importers and mark owners. However, there is no case law in Poland with regard to this issue at present.

V. Anti-counterfeiting and enforcement
The responsibility for combating the trade and distribution of counterfeit medicines in Poland falls on the bodies responsible for the prosecution of crime – the Police, the Custom Service (detection and seizure of imported counterfeit medicines) and the Public Prosecutor’s Office. According to the official data published by the Ministry of Finance, 1,356 counterfeit packages of medicine were seized at the Polish borders in 2007, while 1,700 packages were seized within the first three months of 2008. According to the Main Pharmaceutical Inspectorate, 99% of medicines offered for sale from illegal sources are counterfeit and are hazardous to life or health.

VI. Advertising of pharmaceutical products
The PHL sets out the requirements for advertising pharmaceutical products in Poland. The advertising of medicinal product has also to be made in accordance with the current Regulation of the Minister of Health on the advertising of medicinal products of 21 November 2008, Journal of Laws (Dziennik Ustaw) No 210 item 1327. Advertising a medicinal product shall mean any activity consisting in informing about and encouraging to use the medicinal product, with the purpose of increasing the number of prescriptions, delivery, sale or consumption of the medicinal product.

Among others, the following activities are seen as advertising of pharmaceutical products:

  • Advertising of pharmaceutical products addressed to the public,
  • Advertising of pharmaceutical products addressed to individuals authorized to issue prescriptions or involved in the distribution of pharmaceutical products,
  • The visiting by sales or medical representatives of individuals authorized to issue prescriptions or involved in the distribution of pharmaceutical products,
  • The provision of pharmaceutical product samples,
  • Sponsoring promotional meetings for individuals authorized to issue prescriptions or involved in the distribution of pharmaceutical products
    and
  • Sponsoring scientific conferences, meetings and congresses for individuals authorized to issue prescriptions or involved in the trade of pharmaceutical products.

It should note that the Polish legislature did not apply the correct legislative techniques and thus the PHL includes different concepts with different contents of which makes a mess of the legal terminology. It is also the problem of the European legislator because the same problem also applies to article 86 of the Directive 2001/83/EC of the European Parliament and of the Council of 6 November 2001 on the Community code relating to medicinal products for human use.

Pharmaceutical products may be advertised exclusively by the parties responsible for the products or by persons who have been commissioned by such parties.

An advertisement for a pharmaceutical product cannot be misleading. It should present the product objectively and inform about its rational use. Further, the following types of advertising are prohibited:

  • Advertising offering or promising any advantages in a direct or indirect manner in return for purchasing the product, or providing any evidence of having purchased the product.
  • Advertising addressed to children or containing any element which might be considered as being addressed to children.
  • Advertising of pharmaceutical products that have not been admitted for trade in the territory of Poland or contain information which is inconsistent with the officially approved pharmaceutical product description.

Special restrictions are also imposed on advertising directed to specialists and the public.

VII. Generic substitution
Generic substitution is allowed under Polish law. Generic drug names comprise the name of the company producing the medicine together with its INN or invented name.

VIII. Online issues – e-pharmacies, domain names
The market turnover of medicinal products takes place only under the terms and conditions laid down by the PHL’s regulations. Conducting the sale of medicines is reserved for “public pharmacies”. In addition, the right of the retail resale of certain drugs without a prescription and some prescription drugs is granted to “pharmacy points”. The sale of selected drugs without a prescription can be also conducted by the so-called “out-pharmacy market post”: herbal-medical shops, specialized medical supplies stores, pet shops, herbal/chemists shops/drugstores, and public shops – provided that the staff have appropriate qualifications. The law precisely regulates all features that the public pharmacy should have and the pharmacy point. It already implies the existence of the physical premises open to the public and intended to pursue the sale of drugs. The PHL authorized public pharmacies and pharmacy points to conduct the mail-order sale for public only for medicines purchased without a prescription (article 68 (3) of the PHL). Additionally, the term “pharmacy” is a reserved name that is legally protected under the PHL and criminal law, as well as unfair competition regulations. Any entity wishing to use the term “pharmacy” must meet strict regulatory requirements. Online operators that do not meet the conditions set by the regulations on pharmacies can neither use the term “pharmacy” nor trade in pharmaceutical products.

Where a domain name including a trade mark has been registered by an unauthorized third party, the mark owner can use mediation, alternative dispute resolution (ADR) proceedings or civil court action to obtain the cancellation or transfer of such domain. However, following a recent judgement of the Polish Competition and Consumer Protection Court of 26 December 2006, case act signature XVII AmC 170/05, ADR is unlikely to succeed if the disputed domain name is registered in the name of a natural person.

Advertising law, case III ZS 4/09

January 15th, 2010, Tomasz Rychlicki

In a resolution of February 2008, the Polish National Notarial Council allowed its members for establishing Internet websites of their notarial offices. However, the Council of the Chamber of Notaries in Warsaw in the resolution of June 2009 decided that the establishment by notaries of their individual websites or posting data on webpages other than the council’s one is prohibited advertising. The Council ordered the shutdown of such websites and notaries who would not follow the resolution were subject to disciplinary proceedings.

In the article entitled “Notariusze mogą mieć strony internetowe“, the Polish newspaper Rzeczpospolita reports that the Polish Minister of Justice who exercises the supervision over the notaries’ self-government challenged the resolution to the Supreme Court. The PMJ argued that the Act of 14 February 1991 Law on Notaries, Journal of Laws (Dziennik Ustaw) of 2002 No 42 item 369, with later changes, does not allow the councils of chambers to take such restricting resolutions and although the government has the right to set the rules for its profession, but it is executed by the National Notarial Council, and not by the council of the chamber in Warsaw, Gdańsk or in Poznań. The resolution took by the the Council of the Chamber of Notaries in Warsaw divides Polish notaries on the better who are allowed to run their websites and and the worse, which may not do it. During the court’s hearings the representatives of the Warsaw provided very interesting arguments, for instance, that the opeartion of a website in Lublin has other meaning than opearating such website in Warsaw. The council of the chamber supervises the observance by notaries of the solemnity and dignity of their profession and the Internet website is a prohibited form of advertising, which is contrary with the principles of the exercise profession.

The Supreme Court in a judgment of 14 January 2010, case file III ZS 4/09, annulled the contested decision of June 2009. The SC firmly stressed that the Law on Notaries has created only one, not many local governments, which is formed by the local chambers and the National Council, and they are not independent to each other. The resolutions of the National Council are addressed to all notaries, including Warsaw’s. The council of the chamber cannot independently determine what is a disciplinary offense, because it is included in the Code of Ethics.

Copyright law, case I CSK 160/09

January 11th, 2010, Tomasz Rychlicki

The Polish Supreme Court in its judgment of 16 November 2009 case file I CSK 160/09 confirmed that no consent of the portrayed sportsmen is necessary for the athletics association to make such images available to the sponsors. The judgment came out as a result of a heated dispute between the Polish national football (soccer) team player Maciej Żurawski and TP S.A. (a telecommunication company) – the official sponsor of the team. The dispute regarded the unauthorized dissemination of Żurawski’ s image by TP S.A. in its various advertising and informational materials (such as fliers, posters, press and television). Żurawski desired that TP S.A. ceased to publish and disseminate his images and that it publicly apologized to him. The proceedings were joined by the Polish Football Association (PZPN) as a third party defendant. The bone of contention in this case were the pictures taken during the photo shoot of the national soccer team prior to the world championship in Germany in 2006. The story goes that in 2004, PZPN entered into a sponsorship agreement with TP S.A., pursuant to which PZPN obliged itself to:

1) allow TP S.A. to use the pictures of the national team in all of TP S.A. advertising and informational materials; and
2) to obtain the respective players’ consent to do so.

In 2006 the national football team participated voluntarily in a photo shoot. All players were duly informed as to what purposes the pictures would serve, and how they would be used. However, no formal consent forms were signed. The players did not sign any Representative’s Cards (which explicitly stated the player’s obligation to participate in events such as i.e. the photo session in question) either. Additionally, none of the players received any remuneration for the photo session. And that’s what’s most problematic in this case. Pursuant to article 81 of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments, the right to disseminate the image of a person does not require the consent of that person (unless explicitly stated otherwise) if that person had received an agreed to remuneration.

The Court of first instance found for Zurawski, however the appeal court reversed and dismissed the case. The reason of that were differing interpretations of article 33(2) of the Act on Qualified Sports – AQS – (in Polish: Ustawa o sporcie kwalifikowanym) of 29 July 2005, Jurnal of Laws (Dziennik Ustaw) No 155, item 1298, with subsequent amendments, which was relied on by TP S.A. and PZPN in their argumentation.

each member of the national team, grants an exclusive right to his/her image in the national representation team outfit, to an appropriate athletics association, which is then entitled to use that image for economic purposes within the scope set forth in the Statute of that association or other international organization active in that field.

However, the very same article in sec. 2 states that the representative does indeed give his/her consent to disseminate his/her image in the national representation team outfit, however he/she does that within the meaning of article 81(1) of the ARNR. And this led to two different interpretations by two different courts: court of I instance held that article 33(2) of the AQS creates a direct duty to obtain a separate consent from the sportsman, whereas the appeal court found that such consent is impliedly given the moment the athlete (here football player) joins the national team. The SC agreed with the latter interpretation, stating that by joining the national team the player does indeed agree to a significant limitation on his right to image, whenever the image consists of him in the national representation’s outfit. Other than that he retains full rights to his right to publicity (in particular image). Hence, Żurawski ultimately lost the case.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Advertising of pharmaceuticals, case VI SA/Wa 1758/09

January 6th, 2010, Tomasz Rychlicki

The Polish court issued a first judgment regarding TV/radio sponsored programmes and advertising of pharmaceutical products. US Pharmacia Company prepared a TV spot that was aired with a TV show. The following statement appeared in the spot.

The programme is sponsored by the manufacturer of Apap Noc medicine. Apap Noc – now also available in the big package. Combats pain and helps you fall asleep.

According to the provisions of Article 17(1) of the Polish Act of 29 December 1992 on Broadcasting – LOB – (in Polish: Ustawa o radiofonii i telewizji), published in Journal of Law (Dziennik Ustaw) of 1993, No 7 item 34, consolidated text of 19 Novemver 2004, Journal of Laws (Dziennik Ustaw) No 253 item 2531, with subsequent amendments, sponsored programmes or other broadcasts shall be identified as such by sponsor credits at their beginning or end. Such credits may specify only the sponsor’s name, business name, trademark or contain some other identification of the business operator or its business activities, the image of a single product or service. According to the regulations provided in Article 4 pt. 7 of the LOB, the “sponsorship” should mean a direct or indirect financing or co-financing of the production or transmission of a programme or other broadcasts by an entity other than the broadcaster or producer of the programme, with a view to establishing, enhancing or promoting the renown of the name, business name, product or service, trademark.

The Polish Act of 6 September 2001 on Pharmaceutical Law – PHL – (in Polish: ustawa prawo farmaceutyczne), published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with subsequent amendments, does not include provisions relating to sponsorship of programs or other broadcasts in radio and television. The Main Pharmaceutical Inspector (MPI) is the central organ of public administration authorized to ensure compliance with pharmaceutical regulations in the context of advertising. According to MPI many pharmaceutical companies are trying to skip the strict sponsorship rules for advertising of pharmaceutical/medicinal products. MPI has already delivered several decisions requiring pharmaceutical companies to immediately cease advertising of medicines, and only US Pharmacia appealed this decision to the Voivodeship Administrative Court. The company argued that the spot was aimed at enhancing the reputation of the medicinal product. The MPI argued that it is unacceptable to add any other indications relating to both the sponsor and the subject of its activities, in particular the goods and services. Such behaviour turns sponsorship into advertising activity.

The Voivodeship Administrative Court in its judgment of 18 December 2009 case file VI SA/Wa 1758/09 ruled that the sponsorship cannot be used as unacceptable advertisement. It has to be a form of promotion separated from advertising. The content and meaning of communication and the message broadcasted decides whether we are dealing with advertising or with corporate sponsorships. The Court also emphasized that each advertising of medicinal product has to be made in accordance with the current Regulation of the Minister of Health of 21 November 2008 on the advertising of medicinal products, published in Journal of Laws (Dziennik Ustaw) No 210 item 1327. The advertising of a medicinal product targeted to the public must contain the following essential information:

  • the name of the medicinal product
  • the INN of the active substanc, in the case of medicinal products containing more than 3 active substances, the term “complex product”
  • the dose of the active substance or active substance concentrations, with the exception of a complex product
  • pharmaceutical form of the product
  • indication or indications for therapeutic use
  • contra-indications
  • identification of the responsible entity

The advertising of medicinal product targeted to the public that is made in the audio-visual form additionally has to contain a warning of the following content:

Before use read the leaflet included in the package or consult with your doctor or pharmacist, as each drug that was used improperly may threaten your life or health.

This warning shall be placed in the bottom of the ad, in terms of representing not less than 20% of its surface, so as to make the text stand out from the background plane visible, legible, motionless, placed horizontally, the distance of letters from the top and bottom edge of the background plane ad cannot be bigger than 1/2 in height and the distance between the lines of the string cannot be bigger than the height of the letters. This warning must be read clearly in the Polish language and it has to appear on the screen no less than 8 seconds. The same rules regarding the warning apply to the advertising of a medicinal product targeted to the public that was prepared as a sound message.
Advertising product targeted to the public in a static visual form, shall contain a warning stating:

Before use read the label, which includes indications, contra-indications, data on adverse effects and dosage and information about the medicinal product, or consult a doctor or pharmacist, as each drug used improperly threatening your life or health.

The Warning shall be placed in the bottom of the ad, in terms of representing not less than 10% of its surface in such a way as to make the text stand out from the background plane visible, legible, motionless, placed horizontally, the distance of letters from the top and bottom edges of the background plane of the ad cannot be bigger than 1/2 in height and the distance between lines of the inscription cannot be bigger than the height of the letters. In the case of advertising to the public in a visual form which includes more than one page, a warning has to be placed on the first page.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Advertising law, reclaim the windows

December 1st, 2009, Tomasz Rychlicki

On 27 November 2009, Cezary Grabarczyk, the Polish Minister of Infrastructure signed the amendment to the Regulation on technical conditions of use of residential buildings, (in Polish: Rozporządzenie zmieniające rozporzadzenie w sprawie warunków technicznych użytkowania budynków mieszkalnych) of 27 November 2009, published in Journal of Laws (Dziennik Ustaw) of 1999 No. 74, item. 836. The provisions of this amendments govern the possibility of installing big media advertising boards and vinyl’s mesh on which different advertisements are displayed and other devices not related to the use of housing in the multi-family residential buildings.

A multi-family residential building should be used in such a way that its rooms have no restrictions to daytime lighting. The provisions allow only for the installation of equipment and advertising space on the walls without windows, the windows of the staircases or commercial premises. However, the prohibition does not apply in the case of construction works on the building’s facade. The amendments will eliminate the negative impact that big media advertisings placed one housing buildings have on their occupants.

The Regulation enters into force after 14 days from the date of promulgation. All kind of advertising devices and media and other devices not related to the use of the building or apartment that were installed on residential flats before the entry into force of the aforementioned provisions will stay, but not longer than 18 months from the date of entry into force.

Collective interests of consumers, case XVII Ama 125/08

November 26th, 2009, Tomasz Rychlicki

A person who bought CHIO CHIPS produced by the Lorenz Bahlsen Snack-World, filed a complaint to the representation of the Office of Competition and Consumers Protection in Wrocław. This dissatisfied consumer argued that being in the store, he chose CHIO chips and not the other products that were sold in a similar price, because he was attracted by a draw where he could win some nice prizes. However, he became disappointed because when he did open the package and read the coupon, it turned out that the draw was already over. The date of the draw was shown on the inside part of a special bar attached to chips’ bag, but it could be difficult to read after the break of the package. Because of the lack of a clear declaration with regard to the end date of the draw, the Company was fined 22000 PLN for the practice of contravention of collective interests of consumers. According to the Polish Act on Protection of Competition and Consumers – APCC – (in Polish: Ustawa o ochronie konkurencji i konsumentów) 16 February 2007 published in Journal of Laws (Dziennik Ustaw) No. 50, item 331, with subsequent amendments, it was a violation of the obligation to provide consumers with reliable, true and complete information regarding the product.

The Polish Court of Competition and Consumer Protection upheld the contested decision in its judgment, case file XVII Ama 125/08. Such essential information as the period of promotion/draw or the validity date of the product cannot be hidden inside the bar of the package and thus not visible at first glance. Such information must be readily available. The Court ruled that the date of a draw should be indicated clearly on the product packaging and incomplete information is misleading. The judgment is not final yet, the company may file an appeal.

Trade mark law, case I ACa 16/10

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in its judgment of 25 September 2009 case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict. This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking. Display Flash Poland filed an appeal complaint.

The Appellate Court in Warsaw in its judgment of 14 July 2010 case file I ACa 16/10 dismissed it. The Court held that using as a keyword a word identical or similar to registered trade marks on the Internet does constitute infringement of the right of protection provided that the said act was committed without the consent of the holder and, in addition to the foregoing, the average Internet user experiences difficulty in determining whether the goods or services designated or found on the basis of a keyword are in fact assigned to the trade mark proprietor or a company commercially affiliated to it.

Advertising of pharmaceuticals, case II CSK 289/07

May 7th, 2009, Tomasz Rychlicki

This case is a little bit old but I think it’s really worth mentioning to P.T. readers. The Supreme Court of the Republic of Poland decided a case regarding misleading advertising of pharmacetical products. The Court in its judgment of 2 October 2007, case act signature II CSK 289/07 ruled that assessment whether advertising can be deemed as misleading should refer to the model of the average recipient of this kind of advertising – the consumer of advertised products or services.

In this case, it was the average consumer of pharmaceuticals, to which advertising newspapers and leaflets were directed. As the Supreme Court noted in its judgment of 3 December 2003, case act signature I CK 358/02, the model of the average consumer, who is reasonably well informed and reasonably observant and circumspect, is now used widely adopted in the Republic of Poland as it is in the European Union.

However, the model of an average consumer could not be defined and considered in isolation from the conditions of this specific case and the realities concerning recipients of specific products to which the advertising is directed. Therefore, one could not ignore the fact that such consumers are often very ill persons, often with reduced capacity of perception and limited ability of reasonable and critical evaluation, as well as they are often elderly, which is also a significant group of consumers of medicines. These are typically the person more susceptible to suggestion and less critical. These people are targeted by pharmaceutical advertising and, while assessing the possibility of confusion, the characteristics of this kind of audience should be taken into account as a model of the average consumer.

Polish case law on advertising of pharmaceuticals

February 1st, 2009, Tomasz Rychlicki

Below you will find a list of judgments and decisions on advertising of pharmaceuticals. You can find a more detailed discussion on each judgment or decision under the link provided with the case file. All judgments and decisions are given in chronological order.

– The judgment of the Voivodeship Administrative Court in Warsaw case file VI SA/ Wa 1136/10.

– The decision of the the Main Pharmaceutical Inspector of 10 March 2010, no. GIF-P-R-450/141-4/ZW/09/10.

– The decision of the the Main Pharmaceutical Inspector of 4 March 2010, no. GIF-P-R-450/147-3/ZW/09/10.

– The decision of the the Main Pharmaceutical Inspector of 6 January 2010, no GIF-P-R-450/126-3/ZW/09/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 11 March 2010, case file VI SA/Wa 2110/09.

– The judgment of the Supreme Administrative Court of 10 March 2010, case file II GSK 461/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 18 December 2009, case file VI SA/Wa 1758/09.

– The judgment of the Supreme Administrative Court of 26 June 2008, case file II GSK 199/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 17 June 2008, case file VII SA/Wa 556/08. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

– The judgment of the Voivodeship Administrative Court in Warsaw of 3 October 2007 case file VII SA/Wa 1157/07.

– The judgment of the Voivodeship Administrative Court in Warsaw of 29 December 2005 case file I SA/Wa 584/05.

– The judgment of the of the Supreme Court – Civil Chamber of 2 October 2007, case file II CSK 289/07, published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2008, No 12, item 140, p. 54.

See also “Polish regulations on pharmaceutical trade marks“.

Trade mark law, case III SA/Wr 499/08

January 30th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Wrocław in its judgment of 28 January 2009 case file III SA/Wr 499/08 held that the powers of sanitary authorities include the power to control of foodstuffs also in terms of their marking and labeling. According to article 120 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, the trade mark is protected as a whole regardless of its composition. So questioning the legality of a trade mark that was made by the State Sanitary Inspection, with the assumption that part of the label of foodstuff is a registered trademark, lead to an unacceptable invasion of the powers reserved by law for the Polish Patent Office. Indeed, such action of SSI would, in fact, “prohibit” the use of a trade mark, while the State Sanitary Inspection cannot encroach on the powers reserved by law for other state authorites.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.

2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.

3. Any references in this Act to:
(i ) trademarks shall also mean service marks,
(ii) goods shall mean, in particular, industrial or handicraft goods, agriculture products or natural products, such as, in particular, waters, minerals, raw materials, as well as, subject to Article 174(3), services,
(iii) counterfeit trademarks shall mean identical trademarks illegally used or trademarks which in the course of trade can not be distinguished from the trademarks registered for the goods covered by the right of protection,
(iv) earlier trademarks shall mean the trademarks applied for registration or registered basing on the earlier priority.

A situation where an entrepreneur has advertised tea, using only, image of cannabis-like leaves cannot be considered as advertising of narcotic drugs or psychotropic substances. In this case, it was not a promotion of any other substances prohibited by the law because, there was no name of any specific drug or psychotropic substance. Moreover, this issue goes beyond the competence of the State Sanitary Inspection.

The cassation complaint was rejected by the Supreme Administrative Court in its judgment of 31 May 2010 case file II OSK 832/09.

Advertising of alcohol products in Poland

January 25th, 2009, Tomasz Rychlicki

Current regulations on alcohol advertisement are included in the Act of 26 October 1982 on upbringing in sobriety and counteracting alcoholism (Polish: Ustawa o wychowaniu w trzezwosci i przeciwdzialaniu alkoholizmowi). There are very important definitions included in article 2.

(2) promotion of alcoholic beverages – a public tasting of alcoholic beverages, free distribution of accessories associated with alcoholic beverages, organising the sale of alcoholic beverages with prize-awarding and contests based on purchase of alcoholic beverages, as well as any other forms of encouraging publicly to purchase alcoholic beverages, excluding competitions based on the purchase of alcoholic beverages,

(3) advertising of alcoholic beverages – the public dissemination of trade marks of alcoholic beverages or graphic symbols related to them, as well as names and graphic symbols of entrepreneurs producing alcoholic beverages not being different from names and symbols of alcoholic beverages, which serve to popularise trade marks of alcoholic beverages; any information used for trade purposes, exchanged between firms engaged in the production of, wholesale trading and retail trading in alcoholic beverages, shall not be deemed to be advertising,

(4) sponsorship – direct or indirect financing or co-finance of the activities of individuals, legal persons or organizational units without legal personality for the dissemination, establishing or enhance the reputation of the name, manufacturer or distributor, the trade mark or other sign to individualise of the entrepreneur, its business, product or service

(5) information on the sponsorship – presenting information that includes the name of the sponsor or his trade mark in connection with the sponsorship.

According to article 131 of the Act, Advertising of alcoholic beverages shall be prohibited in Poland, except for beer.

Advertising of which shall be permitted provided that
(1) is not directed at minors,
(2) does not depict minors,
(3) does not combine the consumption of alcohol with fitness, or driving,
(4) does not include claims that alcohol has medicinal properties, is a stimulant, tranquillizer or a means of resolving personal conflicts,
(5) does not encourage the excessive consumption of alcohol,
(6) does not present abstinence or moderate consumption of alcohol in a negative way,
(7) does not highlight the high alcoholic content as being a positive quality of alcoholic beverage,
(8) does not have associations with (a) sexual attractiveness, (b) relaxation or recreation, (c) study or work, (d) success or professional life.

2. Advertising and promotion of beer, referred to in paragraph 1 can not be pursued:
(1) in television, radio, cinema and theater hours between 6am and 8pm, with the exception of the advertising provided by the organizer of professional sports in the course of this event;
(2) on video cassettes and other media;
(3) in the press for young people and children;
(4) on the covers of newspapers and magazines;
(5) on advertising posts and billboards and other fixed and movable surfaces used for advertising, except that 20% of the advertising surface will placed with visible and legible inscription indicating about the harmful use of alcohol or to ban of the sale of alcohol to minors;
(6) with the participation of minors.

The Polish Ministry of Health wants to limit the advertising of beer. According to the proposal, the advertising and promotion of beer can not be pursued in TV, radio, cinema and theatres between 6am and 11pm. There is also important news related to the Euro 2012 championships: fans at stadiums will not be allowed to buy drinks with an alcohol content of over 4.5%.

Advertising of pharmaceuticals, case II CSK 289/07

January 24th, 2009, Tomasz Rychlicki

According to one of the older judgments of the of the Supreme Court – Civil Chamber of 2 October 2007, case file II CSK 289/07, published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2008, No 12, item 140, p. 54, a public advertisement of promotional prices (price cuts) of drugs that is made by comparing these reduced prices with the higher prices, suggesting periodic drug sales at a lower price, is a prohibited public advertising of medicines as referred to in article 57(1)(i) and (iii) of the Polish Act on Pharmaceutical Law – PHL – (in Polish: ustawa prawo farmaceutyczne) of 6 September 2001, published in Journal of Laws (Dziennik Ustaw) of 2008, No 45, item 271, with subsequent amendments.

1. Advertising of the following medicinal products, addressed to the general public, shall be prohibited:
i) dispensed exclusively on doctor’s prescription
(…)
iii) included, according to separate regulations, on the lists of the reimbursable medicines and authorized for issuing without prescription, with the proper name identical with the name mentioned on these lists.

It is also the act of unfair competition as provided in article 16(1)(i) of the Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with subsequent amendments.

In the field of advertising the act of unfair competition shall be, in particular, the following:
1) advertising contrary to provisions of the law, good practices or offending human dignity,

The Court ruled that assessment whether advertising can be deemed as misleading should refer to the model of the average recipient of this kind of advertising – the consumer of advertised products or services.

In this case, it was the average consumer of pharmaceuticals, to which advertising newspapers and leaflets were directed. As the Supreme Court noted in its judgment of 3 December 2003, case file I CK 358/02, the model of the average consumer, who is reasonably well informed and reasonably observant and circumspect, is now used widely adopted in the Republic of Poland as it is in the European Union.

However, the model of an average consumer could not be defined and considered in isolation from the conditions of this specific case and the realities concerning recipients of specific products to which the advertising is directed. Therefore, one could not ignore the fact that such consumers are often very ill persons, often with reduced capacity of perception and limited ability of reasonable and critical evaluation, as well as they are often elderly, which is also a significant group of consumers of medicines. These are typically the person more susceptible to suggestion and less critical. These people are targeted by pharmaceutical advertising and, while assessing the possibility of confusion, the characteristics of this kind of audience should be taken into account as a model of the average consumer.

See also “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Advertising law, alcohol products

January 13th, 2009, Tomasz Rychlicki

In the article entitled “Mniej reklam piwa w telewizji, kinie i teatrze“, the Polish newspaper Rzeczpospolita reports a recent legislative intiative regarding the advertising of alcohol products. Currently regulations on alcohol advertisement are included in the Act on Upbringing in Sobriety and Counteracting Alcoholism – USCA – (Polish: Ustawa o wychowaniu w trzeźwości i przeciwdziałaniu alkoholizmowi) of 26 October 1982, published in Journal of Laws (Dziennik Ustaw) No 35, item 230, cosolidated text published in Journal of Laws (Dziennik Ustaw) of 28 March 2007, No 70, item 472, with later amendments. There are very important definitions included in article 2 of the USCA.

(2) promotion of alcoholic beverages – a public tasting of alcoholic beverages, free distribution of accessories associated with alcoholic beverages, organising the sale of alcoholic beverages with prize-awarding and contests based on purchase of alcoholic beverages, as well as any other forms of encouraging publicly to purchase alcoholic beverages, excluding competitions based on the purchase of alcoholic beverages,

(3) advertising of alcoholic beverages – the public dissemination of trade marks of alcoholic beverages or graphic symbols related to them, as well as names and graphic symbols of entrepreneurs producing alcoholic beverages not being different from names and symbols of alcoholic beverages, which serve to popularise trade marks of alcoholic beverages; any information used for trade purposes, exchanged between firms engaged in the production of, wholesale trading and retail trading in alcoholic beverages, shall not be deemed to be advertising,

(4) sponsorship – direct or indirect financing or co-finance of the activities of individuals, legal persons or organizational units without legal personality for the dissemination, establishing or enhance the reputation of the name, manufacturer or distributor, the trade mark or other sign to individualise of the entrepreneur, its business, product or service

(5) information on the sponsorship – presenting information that includes the name of the sponsor or his trade mark in connection with the sponsorship,

According to article 131 of the USCA, Advertising of alcoholic beverages shall be prohibited in Poland, except for beer, advertising of which shall be permitted provided that:

(1) is not directed at minors,
(2) does not depict minors,
(3) does not combine the consumption of alcohol with fitness, or driving,
(4) does not include claims that alcohol has medicinal properties, is a stimulant, tranquillizer or a means of resolving personal conflicts,
(5) does not encourage the excessive consumption of alcohol,
(6) does not present abstinence or moderate consumption of alcohol in a negative way,
(7) does not highlight the high alcoholic content as being a positive quality of alcoholic beverage,
(8) does not have associations with (a) sexual attractiveness, (b) relaxation or recreation, (c) study or work, (d) success or professional life.

2. Advertising and promotion of beer, referred to in paragraph 1 can not be pursued:
(1) in television, radio, cinema and theater hours between 6am and 8pm, with the exception of the advertising provided by the organizer of professional sports in the course of this event;
(2) on video cassettes and other media;
(3) in the press for young people and children;
(4) on the covers of newspapers and magazines;
(5) on advertising posts and billboards and other fixed and movable surfaces used for advertising, except that 20% of the advertising surface will placed with visible and legible inscription indicating about the harmful use of alcohol or to ban of the sale of alcohol to minors;
(6) with the participation of minors.

The Polish Ministry of Health wants to limit the advertising of beer. According to the proposal, the advertising and promotion of beer can not be pursued in TV, radio, cinema and theatres between 6am and 11pm. There is also important news related to the Euro 2012 championships: fans at stadiums will not be allowed to buy drinks with an alcohol content of over 4.5%.

Advertising law, case VII SA/Wa 1449/08

November 17th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgments of 11 November 2008 case file VII SA/Wa 1449/08 and 1450/08 decided cases regarding legal rules for building billboards. This issue does not concern trade marks directly, but may be helpful for to understand nuances of Polish law.

Jet Line is a company which specializes in installing large advertising billboards. The company has reported to the governor of Zachodniopomorskie province that it intends to erect two billboards at the port of Szczecin. The Governor has made an opposition which was also upheld by the The General Inspector of Building Control (GIBC). In GIBC’s opinion, billboards are constructions which, because of its size and being permanently linked to the ground, require a building permit as it is required by the Polish law in the Article 28 of Building Law Act of 7 June 1994 – BLA. The company appealed this decision claiming that it is inconsistent with article 29(2)(6) of the BLA.

The building permit is not required for installation of advertising boards and equipment, except those located on structures listed as national monuments under the provisions on the protection of monuments and the care of monuments, and with the exception of light and illuminated advertisings located outside built-up areas within the meaning of the rules on road traffic

The court held that the legislature did not exclude free-standing advertising constructions permanently associated with the ground from provisions included in Article 29 of the BLA. Therefore the court exempted from the obligation to get a building permit all kind of the equipment designed for the construction of advertising, regardless of whether they are free standing, or mounted on existing buildings.

Advertising law, new rules for pharmaceutical products

September 7th, 2008, Tomasz Rychlicki

In the article entitled “Przybędzie zakazów w reklamach leków“, the Polish newspaper Rzeczpospolita reports a recent legislative initiative regarding a draft regulation on advertising of medicinal products prepared by the Polish Ministry of Health. Monitors displaying ads may disappear from pharmacies. Advertising of any medicines will not be allowed in hospitals or pharmacies. The proposed draft especially concerns audio and audiovisual advertising. A similar ban exists in the current Regulation of the Minister of Health of 16 December 2002 on the advertising of medicinal products, Journal of Laws (Dziennik Ustaw) of 2002 No. 230, item 1936, however, it allows for advertising contained in radio and television programmes. There were assembled special monitors to broadcast TV spots in some pharmacies. Such exceptions will no longer be allowed , and the display of medicine advertising spots will become illegal.

The proposal also includes the types of advertising of medicinal products: i.e. advertising which is targeted to the general public or persons who are entitled to issue medical prescriptions or persons engaged in the marketing of medicinal products. The Ministry of Health has stresses that such specification will clearly defined market rules and will have a positive effects on fair competition.

Advertising in visual form must contain a warning.

Before use, read the label, which includes indications, contra-indications, data on side effects, dosage and information about the medicinal use of the product, or consult your doctor or pharmacist.

The warning has to be included in any part of advertising, on a flat surface which is not less than 10 percent of total surface area of the ad. The text must be distinguished from the background and it be legible. A warning in an audiovisual advertising has to be placed in the lower parts of the plane, which is not less than 20 percent of the total surface area. It must also be clearly legible in the Polish language and appear on the screen for not less than 5 seconds.