The Voivodeship Administrative Court in Wrocław in its judgment of 27 July 2010 case file I SA/Wr 592/10 held that the Directive 112 did not include the obligation to keep copies of invoices in the same form in which they were sent. Also § 21(2) of Regulation of the Minister of Finance on 25 May 2005 on the tax refund to certain taxpayers, the advance tax refund, invoicing, the storage of invoices and the list of goods and services, to which the exemptions from taxes on goods and services are not applicable (in Polish: Rozporządzenie Ministra Finansów z dnia 25 maja 2005 r. w sprawie zwrotu podatku niektórym podatnikom, zaliczkowego zwrotu podatku, wystawiania faktur, sposobu ich przechowywania oraz listy towarów i usług, do których nie mają zastosowania zwolnienia od podatku od towarów i usług), does not follow that restriction to the form in which to store invoice was associated with the way they have been sent to the customer or made available to. The Court also noted that the invoice should be issued in duplicate, but this does not mean that the invoice has to be kept identical in form, which is an invoice sent to the buyer. Invoice kept by the issuer and received by the buyer has to be identical in content and therefore the information contained on the invoice relates to the transaction.
Archive for: EU law
Tax law, case I SA/Wr 592/10
August 31st, 2010, Tomasz RychlickiTrade mark law, case VI SA/Wa 710/10
August 30th, 2010, Tomasz RychlickiOn 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33.
The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.
The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels – both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers
Tax law, case I SA/Op 177/10
July 31st, 2010, Tomasz RychlickiThe Voivodeship Administrative Court in Opole in its judgment of 23 June 2010 case file I SA/Op 177/10, pointed to the lack of precision in the national legislation. The court stated that § 21(2) of Regulation of the Minister of Finance on 25 May 2005 on the tax refund to certain taxpayers, the advance tax refund, invoicing, the storage of invoices and the list of goods and services, to which the exemptions from taxes on goods and services are not applicable (in Polish: Rozporządzenie Ministra Finansów z dnia 25 maja 2005 r. w sprawie zwrotu podatku niektórym podatnikom, zaliczkowego zwrotu podatku, wystawiania faktur, sposobu ich przechowywania oraz listy towarów i usług, do których nie mają zastosowania zwolnienia od podatku od towarów i usług), does not provide that the limitation as to the form in which to store invoice is associated with the way they have been sent to the customer or have been made available in a different way. The VAC ruled that a literaly reading of the provisions included in Polish Regulation does not lead to the interpretation that if the invoice is made in a particular paper form, a copy must also be kept in the same form thereof.
Trade mark law, case VI SA/Wa 2038/09
July 14th, 2010, Tomasz RychlickiPolish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.
POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.
In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.
The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.
The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.
Industrial design and trade mark law, case II GSK 481/09
July 14th, 2010, Tomasz RychlickiThis is the continuation of the history described in “Industrial design and trade mark law, case VI SA/Wa 710/08“. The Polish company decided to file a cassation complaint to the Supreme Administrative Court, hoping the Court would clarify the interpretation of article 117(2) of the IPL.
The Supreme Administrative Court in its judgment of 15 May 2010, case file II GSK 481/09 ruled that there is no issue of wrong implementation of article 11 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The Court noted that even the preamble of Design Directive explicitly states that Member States should remain free to fix the procedural provisions concerning registration, renewal and invalidation of design rights and provisions concerning the effects of such invalidity. Therefore, there is no need to refer a question to the Court of Justice of EU for a preliminary ruling. The SAC did not agree with arguments that the issue of finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall be decided by civil court and not by the PPO. The question of similarity of the questioned design and 3D trade mark should also be decided by the PPO. The Court did not follow arguments presented by the General Court in its judgment of 12 May 2010 in case T-148/08, Beifa Group Co. Ltd v Office for Harmonisation in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG. However, the SAC did agree with the Polish company that facts of the case were not handled properly by the Voivodeship Administrative Court. Therefore, the SAC annulled the questioned judgments and returned the case to the VAC for reconsideration and ordered the Polish Patent Office to pay the Polish company a reimbursement of costs of the cassation compliant.
See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.
Telecommunication law, case C‑99/09
July 2nd, 2010, Tomasz RychlickiThe Court of Justice of the European Union in its judgment of 1 July 2010, Case C‑99/09, Polska Telefonia Cyfrowa sp. z o.o. v. Prezes Urzędu Komunikacji Elektronicznej, ruled that article 30(2) of Directive 2002/22/EC of the European Parliament and of the Council of 7 March 2002 on universal service and users’ rights relating to electronic communications networks and services (Universal Service Directive) is to be interpreted as obliging the national regulatory authority to take account of the costs incurred by mobile telephone network operators in implementing the number portability service when it assesses whether the direct charge to subscribers for the use of that service is a disincentive. However, it retains the power to fix the maximum amount of that charge levied by operators at a level below the costs incurred by them, when a charge calculated only on the basis of those costs is liable to dissuade users from making use of the portability facility.
Personal rights, case I A CZ 296/10
June 5th, 2010, Tomasz RychlickiOn 18 January 2010, Michał Okonek, the owner of MAP1 company, filed a petition to the court with a request to order ParaRent.com Wawrzyniak Sp. j. company seated in Szczecin, to block access to the thread entitled “a suit for the use of a part of a map” which is available at www.forumprawne.org website (http://forumprawne.org/prawo-autorskie/501-pozew-za-wykorzystanie-fragmentu-mapy.html) operated by ParaRent.com. Mr Okonek also requested the court to prohibit ParaRent.com to publish of new content concerning Michał Okonek at foras available at www.forumprawne.org website.
Mr Okonek pointed out that ParaRent.com allows its users for posting and sharing information that unjustly accuse him of extorting money, making false statements, misleading the courts and prosecution, intimidation of Internet users, even for distributing of pornography. Moreover, users of forumprawne.org called Mr Okonek as the swindler and the parasite, while he only uses the right to sublicense the use of copyrighted works such as digital maps.
The District Court in Szczecin in a judgment of 4 February 2010, case file I Co 26/10 sided with Mr Okonek and issued the order blocking the aforementioned thread. ParaRent decided to appeal.
The Appellate Court in Szczecin in a judgment of 18 May 2010, case file I A Cz 296/10 overruled the ban. The Court held that in cases filed against the public media, for the protection of personal rights/property, the court may refuse to grant an injunction against publication of given information if the important public interest opposes such injunction/ban.
Michał Okonek filed another lawsuit against ParaRent.com, for the protection of personal rights and compensation. The case is pending before the the District Court in Szczecin VIII Economic Division, case file VIII GC 106/10. The case is linked with a blocked thread.
Internet domains, case C-569/08
June 3rd, 2010, Tomasz RychlickiThe Court of Justic of European Union in its judgment of 3 June 2010, case C‑569/08, Internetportal und Marketing GmbH v. Richard Schlicht, ruled on bad faith registration of EU domain names.
1. Article 21(3) of Commission Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and the principles governing registration must be interpreted as meaning that bad faith can be established by circumstances other than those listed in Article 21(3)(a) to (e) of that regulation.
2. In order to assess whether there is conduct in bad faith within the meaning of Article 21(1)(b) of Regulation No 874/2004, read in conjunction with Article 21(3) thereof, the national court must take into consideration all the relevant factors specific to the particular case and, in particular, the conditions under which registration of the trade mark was obtained and those under which the .eu top level domain name was registered.
With regard to the conditions under which registration of the trade mark was obtained, the national court must take into consideration, in particular:
- the intention not to use the trade mark in the market for which protection was sought;
- the presentation of the trade mark;
- the fact of having registered a large number of other trade marks corresponding to generic terms; and
- the fact of having registered the trade mark shortly before the beginning of phased registration of .eu top level domain names.
With regard to the conditions under which the .eu top level domain name was registered, the national court must take into consideration, in particular:
- the abusive use of special characters or punctuation marks, within the meaning of Article 11 of Regulation No 874/2004, for the purposes of applying the transcription rules laid down in that article;
- registration during the first part of the phased registration provided for in that regulation on the basis of a mark acquired in circumstances such as those in the main proceedings; and
- the fact of having applied for registration of a large number of domain names corresponding to generic terms.
Tax law, case I FSK 1444/09
May 21st, 2010, Tomasz RychlickiThe Polish entrepreneur asked the Director of the Tax Chamber in Kraków, whether the inclusion in the billing of VAT of the amount of tax charged on the purchase of goods and services on the basis of invoices and correction invoices received by e-mail or fax, not in the form of electronic invoices with digital signature, is correct. The Director ruled that such interpretation is incorrect. The Company did not agree with this decision and filed a complaint to the administrative court. The Voivodeship Administrative Court (VAC) in Kraków in a judgment of 17 March 2009, case file I SA/Kr 97/09 dismissed the case. The Company filed a cassation complaint. The Supreme Administrative Court in a judgment of 20 May 2010, case file I FSK 1444/09, ruled that invoices that were sent via fax or e-mail are equivalent to these sent via traditional mail. What’s more important, such invoices do not need any electronic signature.
Tax law, case III SA/Wa 396/10
April 18th, 2010, Tomasz RychlickiThe Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 8 April 2010, case file III SA/Wa 396/10, ruled that there is no legislative impediment to the existence of a mixed system for the storage of invoices, which consists of sending an invoice in paper and storage of its electronic copies with the option to print at the request of a legitimate authority. Such an interpretation was corroborated by teleological considerations, environmental and economic. According to the VAC the different findings would lead to a breach of the principle of proportionality, as set out in article 5(3) of the Treaty on European Union.
3. Under the principle of subsidiarity, in areas which do not fall within its exclusive competence, the Union shall act only if and in so far as the objectives of the proposed action cannot be sufficiently achieved by the Member States, either at central level or at regional and local level, but can rather, by reason of the scale or effects of the proposed action, be better achieved at Union level.
The institutions of the Union shall apply the principle of subsidiarity as laid down in the Protocol on the application of the principles of subsidiarity and proportionality. National Parliaments ensure compliance with the principle of subsidiarity in accordance with the procedure set out in that Protocol.
Consolidated versions of the Treaty on European Union and the Treaty on the Functioning of the European Union, Official Journal C 83 of 30 March 2010. PDF files.
Who is the controller in social networking sites?
February 14th, 2010, Tomasz RychlickiThe question of who is the “controller” and the differences between a “controller” and “processor” as defined in the article 2(d) and (e) of the Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data, in the context of social networking sites (SNS), are at least controversial not only in Polish case law. See for instance T. Zeggane, W. Maxwell, US and EU Authorities Review Privacy Threats On Social Networking Sites, Ent. L.R. 2008, 19(4), 69-74.
The second area requiring clarification is the concept of “data controller” in an SNS environment. Under European privacy law, the controller is the entity which determines the purposes and means of the processing of personal data. In an SNS context, there are two broad categories of data: the information that the user provides to the SNS platform to register (such as the user’s real name and email address), and the data that the user uploads onto his or her profile. The former is personal data which the SNS platform controls. The latter is “user generated content”, which the user controls and can choose to share (or not) with others. Some SNS platforms provide the user with tools to control the extent to which information such as photos, personal tastes and the like are used to develop targeted advertising. Where such tools exist, the argument can be made that the user (and not the SNS platform itself) is the “controller” of the content the user uploads onto the profile. The concept of data controller is the cornerstone of European privacy law. The concept of controller as it is traditionally interpreted does not fit easily into the SNS environment, where the user is the focal point
As you can read from the above, the authors suggest that the situation requires a clarification of the concept of “controller” in terms of SNS. A similar view was also presented in the report of the European Network and Information Security Agency (ENISA), “Security Issues and Recommendations for Online Social Networks“, PDF file, p. 25.
See also my earlier posts entitled “Polish regulations on personal data protection” and “Polish case law on personal data protection“.
Personal data protection, case I OSK 667/09
February 13th, 2010, Tomasz RychlickiOn 15 January 2008, Tomasz W. filed with the General Inspector for Personal Data Protection (GIODO) a complaint concerning an unauthorized processing of personal data carried out by the Polish company Nasza Klasa Sp. z o.o. from Wroclaw, the owner of nasza-klasa.pl website. He informed the GIODO, that this very popular Polish website on classmates, hosts a photo featuring his image together with a list of names of other photographed people attached to it. Tomasz W. has repeatedly appealed to the website administrators with the request to remove his name from the list. However, he received no response from Nasza Klasa company.
As a result of the investigation, the GIODO found that on 31 December 2007, a registered user of nasza-klasa.pl posted classmates’ photo featuring students of a primary school. On the same day, another registered user, placed the names of people who were portrayed at the photograph – including the name and surname of Tomasz W. On 2, 9 and 14 January 2008, Tomasz W. requested Nasza Klasa Sp. z o.o. the removal of his personal data.
In a decision of 27 May 2008, case file DOLiS/DEC-314/08/13239, the GIODO, relying on the provisions of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), Journal of Laws (Dziennik Ustaw) of 29 October 1997, No. 133, item 883, unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with later amendments, ruled that information on the applicant’s full name, school and class to which he attended, together with his image, are personal data and the data collector is Nasza Klasa Sp. z o.o.
However, the GIODO also ruled that it should be borne in mind that according to the provision of the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usłóg droga elektroniczną), Journal of Laws (Dziennik Ustaw) No. 144, item. 1204, as amended, Nasza Klasa sp. z o.o. provides electronic services for registered users of the portal website, consisting of the storage of data of these users in the computer system. This activity is the condition to legalize the processing of personal data in accordance with article 23(1) pt. 5 of the PPD. In addition, the GIODO found that in this case the applicant’s rights have not been violated, because the access to its data was limited to a group of people registered on nasza-klasa.pl website.
Tomasz W. asked the GIODO for the retrial. He pointed out that the reasons for the decision have many contradictions, inconsistencies and is ambiguous. He accused the GIODO of laconic and cursory treatment of his case. He again emphasized that his personal data have been published on the nasza-klasa.pl website without his knowledge or consent, in violation of his civil rights and liberties.
After the rehearing of the case, the GIODO annulled the contested decision, and discontinued the proceedings. GIODO claimed that the re-examination of the case leads to the conclusion that the disputed information about Tomasy W. did not fall within the definition of personal data. The name and surname have been given under his old image from many years ago. Hence, the combination of photos from the past, with a name and surname of a person and a primary school, which such person attended did not allow for the identification of a person without excessive costs and time. The findings that the disputed information is not personal data within the meaning of the PPD caused the proceedings in the matter to be groundless and on the basis of article 105 § 1 of the APC, it had to be discontinued.
Tomasz W. lodged a complaint with the Viovodeship Administrative Court (VAC) in Warsaw. The complainant asked for annulment of the decision of first and second instance. Tomasz W. claimed the violation of the substantive law, i.e. article 6(1) of the PPD, through its improper interpretation, of article 32(1) pt 7 and 8 of that Act, by recognizing that Tomasz W. is not entitled to request cessation of the processing of his data and the right to object, and a breach of article 7 of the APC by not explaining all the relvant facts. Tomasz W. disagreed with the statement of the GIODO that questioned information about his person is not personal data within the meaning of the PPD. He stated that any information about an identified or identifiable individual is personal data. Furthermore, he argued that the claim of the GIODO that the data are available only for specific people – registered users of the portal is not acceptable, because nasza-klasa.pl has no mechanisms for verification of users identity, which makes the questioned data easily accessible for everyone. Moreover, Tomasz W. also argued that a registered user who does not know him would have some difficulty in identifying his person but such obstacles would not happen to a person who knows about Tomasy W., and is looking for additional information.
The Voivodeship Administrative Court in a judgment of 3 March 2009, case file II SA/Wa 1495/08, ruled that the GIODO erred in its decisions, because information about the name and surname of Tomasz W., combined with information about the name and address of the primary school and the determination of the class to which he attended in 1978/79, even if it was thirty years ago, are personal data. According to the Court provisions of article 1 of the PPD introduced the principle of autonomy of human information, meaning the protection of information about human being. This provision is a kind of emanation of the general right guaranteed by the Polish Constitution in article 47, according to which “Everyone shall have the right to legal protection of his private and family life, of his honour and good reputation and to make decisions about his personal life”. This means that the protection of personal data is related to the protection of privacy rights. This follows from the wording of article 6 of the PPD, indicating that the personal data concern identified or identifiable natural or legal person and that the identifiable is a person is one whose identity can be determined. From wording of that provisions the VAC concluded that personal data are data that identify a person’s identity.
VAC also relied on the content of recital 12 of the Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data, which emphasized the protection of all data relating to a person, and therefore also information about someones past.
(12) Whereas the protection principles must apply to all processing of personal data by any person whose activities are governed by Community law; whereas there should be excluded the processing of data carried out by a natural person in the exercise of activities which are exclusively personal or domestic, such as correspondence and the holding of records of addresses
However, in recital 26 of the abovementioned Directive states that data protection rules must apply to any information concerning an identified or identifiable person. In order to determine whether a person is identifiable, all the means which can be used by the controller or any other person to identify a person, should be taken into the account. The rules of data protection do not apply to data rendered anonymously in such a way that a subject of the data can not be identified. The identification of a given person concerns also past information about a specific human being, by which information one can learn about such person’s identity. Accordingly, the VAC held that European law means the protection of personal data as the protection of all the facts concerning the past of a particular person, which corresponds with the content of article 6(2) of the PDP. So this means that such data would also be protected.
Referring to the foregoing facts of Tomasz W. case, the VAC ruled that that nasza-klasa.pl website published his image and name. In the opinion of the court these are the personal data which are protected by the PPD, because on their basis one is able to identify given person.
Nasza Klasa sp. z o.o. filed a cassation complaint with the Supreme Administrative Court (SAC) challenging in entirety the judgment of the VAC. The Supreme Administrative Court in a judgment of 18 November 2009, case file I OSK 667/09, rejected the complaint.
The SAC held that the primary issue arising in this case was whether a classmates’ picture that was taken thirty years ago, at which Tomasz W. is potrayed, in the circumstances of the case, can be analyzed to determine his identity without necessarily involving excessive resources or time, and therefore, whether the data disclosed in the photo in question, constitutes personal data within the meaning of article 6 of the PPD, and whether it should be protected.
The concept of “personal data” on the Polish law includes any information concerning an individual if it is possible to define its identity and its identification. Personal data is a set of messages about a particular person such integrated that it allows for its individualization. It includes at least information necessary for identification (name, surname, place of residence), but this is not restricted, because it also include further information, strengthening the degree of identification. Such information will also include pictures of the individual, even if they were taken in the past, allowing to identify a person. In a situation where such a photograph is presented with a name and surname of the person portrayed, in a place accessible to an unlimited number of entities, it must be considered that it constitutes personal data subject to protection under the PPD. Mainly, the objective evaluation criteria decides for the qualification of given information as personal data, but it also should comprise of all information, including extralinguistic (context), to which third party may have or has an access. A different approach to the presented issues would maginalize the importance of the laws and it would not relate to its designated function.
Thus it should be considered that the image of Tomasz W. portrayed at the photograph that was taken 30 years ago, affixed with the class, his name and surname, and then published at nasz-klasa.pl website constitutes personal data within the meaning of article 6(2) of the PPD, and the cassation complaint was not justified. The SAC also noted that the consent for the processing of personal data cannot be in any way implied.
The SAC also stressed the fact the Internet as a source of information is increasing on a unknown scale and importance. It provides an access to specific information to a vast number of persons and allows for any of its processing within the meaning of the PPD. At the same time there are not yet developed appropriate mechanisms for the protection of individual rights when those rights have been violated as a result of the disclosure of information on the Internet. Then, it is a great role of law enforcement bodies, including the Inspector General for Personal Data Protection in creating practice to comply with applicable laws also on the Internet. It is an unacceptablr situation in which the entity seeks to remove its image from a particular website, and the administration fails to take action to ensure the protection of civil rights. The image is one of the very personal property rights and lack of consent to its publication, if it is not a public person, is a sufficient reason to believe that regulations of the PPD apply, if the conditions set in the article 6(2) of the PPD have been met.
See also my posts entitled “Polish regulations on personal data protection” and “Polish case law on personal data protection“.
Polish regulations on pharmaceutical trade marks
February 1st, 2010, Tomasz RychlickiI. 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).
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 my post entitled “Pharmaceutical trade marks, case VI SA/Wa 844/09 – GESTROL is not always similar to GESTROLTEX“.
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.
E-signatures in Poland
January 29th, 2010, Tomasz RychlickiCurrent Polish legislation on e-signature include the Act of 18 September 2001 on Electronic Signature – ESA – (in Polish: ustawa o podpisie elektronicznym) Journal of Laws (Dziennik Ustaw) of 15 November 2001, No 130, item 1450, with later amendments. The ESA introduced in article 3 two types of e-signature: “electronic signature”, which means data in electronic form which, together with other data, either attached thereto or logically associated therewith, are capable of identifying the signatory and the so-called “secure electronic signature”, which means electronic signature which is uniquely assigned to the signatory, is made using secure signature-creation device and signature-creation data that the signatory can maintain under his sole control, is related to the data to which it has been attached in such a manner that any subsequent change of the data is recognizable.
According to article 5 of the ESA, the data in electronic form bearing a secure electronic signature verified by a valid qualified certificate shall be legally recognized as equivalent to documents bearing handwritten signatures. A secure electronic signature verified by a valid qualified certificate shall ensure the integrity of the data bearing the signature and unambiguous indication of the qualified certificate by assuring that any subsequent changes of the data and any subsequent changes of the indication of the certificate used to verify the signature are recognizable.
Recently, the Polish Ministry of Economy proposed amendments to the ESA. The draft provides new types of e-signatures that are consistent with the Directive 1999/93/EC of the European Parliament and of the Council of 13 December 1999 on a Community framework for electronic signature.
The draft provides 4 types of e-signature: normal, advanced, personal and certified. The normal one will be the same features as present “electronic signature” as defined in article 3 of the ASA and will primarily serve as a declaration of identity.
The advanced e-signature will have to meet the additional requirements for certification of the person using it. It will certify the data integrity and allow you to establish the identity of the signatory to both individuals and legal persons, such as when submitting electronic invoices.
The data in electronic form signed by a qualified (secure) electronic signature will have specific legal effects – the same as a handwritten signature for the data recorded on paper. Such data will be admissible as evidence in legal proceedings. The signature will be used to sign statements of knowledge and will.
The Polish TIFFANY’s trade marks saga continues
January 13th, 2010, Tomasz RychlickiSome time ago, I reported in posts entitled “Poland: Tiffany fought with Tiffany” and “Poland: cross-border reputation” about two American companies that were disputing trade marks with a TIFFANY element before the Voivodeship Administrative Court (VAC). The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.
The VAC in a judgment of 24 July 2008, case file VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case files Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.
The company filed a cassation complaint to the Supreme Administrative Court (SAC). The Supreme Administrative Court in a judgment of 8 July 2009, case file II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark is the one that has a high ability to automatically trigger associations with the product for which it was registered. It is quite obvious that this ability will be weaker, adequately to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.
The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.
The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.
The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:
- market share/participation (both quantity and value of sold goods),
- range and long-lasting of an advertisment of the product bearing a trade mark,
- territorial and temporal range of use,
- licences granted for trade mark use, quality of goods bearing a trade mark,
- value of a given sign in assessment of an independent financial institution,
- size and extent of expenditures spent on promotion of a mark,
- the relationship on prices of substitute goods,
- if (and to what extent) the mark is used by third party.
The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:
- knowledge of the trade mark by a significant group of customers,
- the contribution of the trade mark in the market,
- intensity and geographic scope of the use,
- intensity matching of goods with the trade mark,
- the size of expenditures on advertising and promotion of the trade mark.
The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.
It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.
The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides in article 132(2)(iii)
2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.
for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.
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,
The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.
According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.
When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.
Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.