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Trade mark law, case Sp. 500/10

December 10th, 2012, Tomasz Rychlicki

Bakoma sp. z o.o. from Warsaw requested the Polish Patent Office to invalidate in part in Classes 29 and 30 the right of protection for the 3D trade mark IR-700040 owned by Compagnie Gervais Danone. Some time ago, Danone sued Bakoma for the trade mark infringement, arguing that Bakoma has used similar product packaging for its line of Frutica yoghurts. Bakoma claimed that the sign in question lacks distinctiveness and it was applied in bad faith, because Danone did not intent to use this trade mark in form it was applied for. Bakoma pointed that Danone also owned registered design for a similar packaging, and the registration of trade mark was intended to extend the protection provided for a design, and it could indicate that Danone wanted to bypass the law.

IR-0700040

Danone argued that Bakoma does not distinguish between the concept of functionality and the technical features that may give the impression that the functionality is a prerequisite to prohibit registration. Patent attorneys representing Danone cited judgments of the CJUE and noted that only forms which are simply based on technical solution are not subject to the trade mark registration, and the sign in question clearly lacks of such solutions. Danone claimed that the package has not technical features because the container does not provide a transfer of filling (from a smaller to a larger compartment), it does not prevent from shedding, and it’s not a compact package. In addition, Danone argued that Bakoma failed to prove that at the time of the trade application on the Polish market, there were similar packaging that would prevent registration of an industrial design (formerly called ornamental designs), which means that the design was new. Danone emphasized that the mark at issue can not be used on to market alone, without any label. The French company also provided evidence that the trade mark is recognized by the consumers. At the time of trade mark application, the sign was present on the market for almost 14 years and it has acquired the secondary meaning. Its use was confirmed in advertisements and price lists.

Bakoma argued that the technical solution solves a problem. In this case, as a result, how to mix one component with another, and how to serve it mixed – a solution to this problem is to move the component. These functional features are technical. Such example was even displayed in the commercial movie during the hearing. Bakoma stated that the 3D sign was not distinctive at the date of application, nor it has acquired the secondary meaning, because a 3D form can be a trademark when the average recipient will associate it with the origin of the goods. 3D form can attract the attention of consumers in terms of aesthetics, but it does not mean that it functions as a trade mark. There is no doubt that goods may be aesthetic, may encourage the purchase, but do not work as a sign. In addition, the sign could not acquire secondary meaning because it is used as a technical function, utility function. Bakoma argued that Danone seeks for the right of protection for a sign that was not intended to be used in the applied form. Even, while deciding trademark infringement case, the Appeallate Court ruled that Danone uses in the course of trade a combined mark. Bakoma argued that through the registration of the trade mark Danone wanted to obtain a monopoly on technical solutions with the use of the institution of the right of protection for a trade mark. It is a clear example of bad faith.

On 19 November 2012, the Adjudicative Board of the Polish Patent Office held its hearing, case no. Sp. 500/10. Danone’s representative has requested the PPO to postpone the hearing to allow him to get acquaint with the pleading filed by Bakoma. The PPO acceded, and set a two-week deadline. The PPO obliged both parties to complete all claims in a period of two months, under pain of losing the chance to raise them at a later date. Bakoma also requested the Polish Patent Office to decide on the lapse of the protection for the 3D trade mark IR-700040, however the PPO did not schedule the hearing in this case, no. Sp. 513/08.

Trade mark law, case Sp. 566/09

December 6th, 2012, Tomasz Rychlicki

On 11 January 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark SEYDAK R-199882 for goods in Class 4 such as fuel, lubricants, engine and gear oils and hydraulic oils, and services in Class 39 such as parking services, and in Class 43 such as hotel services: motels and restaurants. This sign was applied for by the Polish entrepreneur Przedsiębiorstwo Usługowo Handlowe Marian Seydak.

R-115854

BP p.l.c. filed a request for the invalidation of the SEYDAK trade mark. The British company argued that the questioned sign uses a composition of colors (green and yellow) that are presented in the reputed trade marks owned by BP. The Company referred to the judgment of the Court of Justice of the EU of 3 September 2009 case C-498/07 and the judgment of the Supreme Administrative Court of 20 February 2007 case file II GSK 247/06, judgment of the Supreme Administrative Court of 12 October 2010 case file II GSK 849/09, and the judgment of the Supreme Court of 23 October 2008 case file V CK 109/08. See “Trade mark law, case II GSK 247/06“, “Trade mark law, case II GSK 849/09” and “Trade mark law, case V CSK 109/08“. BP claimed that it is not possible to assume that in the case of word-figurative trade mark, the verbal elements always dominate. The above cited judgments have changed this principle, and provided that sometimes colors or images are the dominant elements that may raise associations between compared trade marks. A patent attorney who was representing Marian Seydak, pointed to the discrepancy of the case-law, and stressed that the mere similarity of background is not significant enough when compared to the visual aspect of both signs. Marian Seydak argued that the trade mark at issue is different in terms of visual aspect, colors, and the layout of letters. He also provided that he is a local entrepreneur, who has just five gas stations distant from the main routes.

R-199882

The Adjudicative Board of the PPO in its decision of 12 November 2012 case no. Sp. 566/09 dismissed the request. The decision is not final yet. The complaint may be filed before the Voivodeship Administrative Court in Warsaw.

Trade mark law, case II GSK 1563/11

October 30th, 2012, Tomasz Rychlicki

The Voivodeshipp Administrative Court in Warsaw its judgment of 21 December 2010 case file VI SA/Wa 1579/10 dismissed the complaint filed by the Polish company Dimyat Polska Sp. z o.o. against the decisions of the Polish Patent Office on the refusal to grant the right of protection for the word trade mark PLISKA Z-135975 applied for the goods in Class 33 such as alcoholic beverages, wines, liqueurs, cognac, brandy, vodka, spirits. The PPO decided that the applied trade mark is devoid of sufficient distinctive character, because it does not individualise the goods on the market. The sign Pliska has no distinctive graphics, does not have any distinguishing features that would help to identify the manufacturer of the goods. Pliska is the name of the village in Bulgaria, in the Shumen district. It is not a fancy designation, but a sign informing about the geographical origin. The first figurative trade mark Pliska has been applied in the Republic of Poland in 1962 by the Bulgarian company. Since then alcohol products bearing Pliska trade mark have been introduced on different markets, among others, the Polish one. In addition, the PPO noted that the mark applied sign may contain inaccurate information, as it may cause confusion of the average consumer as to the origin of goods. The recipient who are buying alcoholic beverages bearing Pliska sign would believe that they were produced in Bulgaria. The Court agreed with the PPO and supported its view with the arguments included in the judgment of the Court of Justice of the EU of 4 May 1999 in joined cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions.

Dimyat Polska Sp. z o.o. filed a cassation complaint. The company argued inter alia that the decision in this case was issued by a person whose mother in law sat in the panel of the judges in the VAC. At the hearing before the Supreme Administrative Court, the counsel for the PPO acknowledged that the decision of the first instance in the Patent Office was issued by an expert who is daughter in law of one of the judges.

The Supreme Administrative Court in its judgment of 28 September 2012 case file II GSK 1563/11 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that despite the merits of the cassation complaint, there was a condition of nullity of the proceedings. The Polish Act on Proceedings Before Administrative Courts states that a judge is excluded in deciding a case in matters that concern his or her relatives in a straight line and in-laws to the second degree. In the present case, the mother-in-law is a first-degree relationship. The institution of exclusion of a judge is a procedural guarantee which consist of the impartiality of the judge that is identified with objectivity of the proceedings. The impartiality of judges is this kind of value for which the protection and execution is particularly important in a democratic state of law. Such defined impartiality should be identified with objectivity that is expressed in the equal treatment of the parties of any proceedings, so that there is no favorable situation for any of them. The court proceedings must be conducted in such a way that there is not even an apparent impression of behavior that would be deemed as disregard of standards of impartiality, being a manifestation of judicial independence.

E-access to public information, case II SAB/Kr 105/12

October 19th, 2012, Tomasz Rychlicki

Tomasz Zieliński, the author of transportoid.com service and software available for Android and Windows Phone that provides timetables of public municipal transport systems, requested Miejskiego Przedsiębiorstwo Komunikacyjne (Municipal Transport Company) in Kraków to disclose public information in the form of electronic database of timetables. MTP refused and argued that the request goes beyond the the Act on Access to Public Information, apart from, the requested information is available on the website. Mr Zieliński filed a complaint on failure to act.

The Voivodeship Administrative Court in Kraków in its judgment of 18 September 2012 case file II SAB/Kr 105/12 agreed with Mr Zieliński and ordered MTP to take appropriate actions that were indicated in the request.

Personal data protection, case I OSK 1827/11

August 29th, 2012, Tomasz Rychlicki

The Inspector General for Personal Data Protection (GIODO) in its decision of 24 September 2010, no. DIS/DEC-1134/38146/10 ordered the Polish company Info Veriti Polska Sp. z o.o. Obsługa Serwisu Internetowego Sp.J., the publisher of online database of Polish entrepreneurs, to inform the individuals whose data that were publicly available in sources such as Court’s Monitor and Economic Monitor and which have been collected and preserved by the Company, according to the information requirement referred to in Article 25(1) of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments, within 3 months from the date on which this decision becomes final.

1. In case where the data have not been obtained from the data subject, the controller is obliged to provide the data subject, immediately after the recording of his/her personal data, with the following information:
1) the address of its seat and its full name, and in case the controller is a natural person about the address of his/her residence and his/her full name,
2) the purpose and the scope of data collection, and in particular, about the data recipients or categories of recipients,
3) the source of data,
4) the existence of the data subject’s right of access to his/her data and the right to rectify these data,
5) the powers resulting from Article 32 paragraph 1 point 7 and 8.

Furthermore, the GIODO ordered the Company to register the collection of personal data of customers (owners of e-mail addresses) within 30 days from the date on which the decision becomes final, to allow users of infoveriti.pl website to freely consent to the processing of their personal data for marketing purposes within 30 days from the date on which this decision becomes final, to create documentation establishing security policy and the intruction for management of IT system that used to process personal data, within 30 days from the date on which this decision becomes final, to grant the authorization to the processing of personal data to persons who are allowed to process personal data within 14 days from the date on which this decision becomes final, and to create a record of persons authorized to process personal data within 14 days from the date on which this decision becomes final. Info Veriti argued that the provisions of Article 25(1) of the PPO should not apply in its case because the provision of other law provides and allows for personal data collection without the need to notify the data subject. Such allowance happens in the case of laws that introduced a formal disclosure of public registers, that include records containing personal information. The formal disclosure of a registry means the right of everyone to access data in the register, without the need to show the legal or factual interest. Due to the widespread legitimacy in terms of access to recorded data, a person obtaining information from the register is not in any way identified during data acquisition. The Laws relating to public records and registers, also do not require explicit registration of the collected data, and there is no knowledge of the registration body of when and to whom the data were disclosed. Moreover, some registration authorities, on the basis of generally formulated principles of transparency, put the data from public records for public networks such as the Internet, which makes impossible to control access of who accessed such register. The GIODO noted that the PPD does not prohibit the creation of separate collections based on data from sources generally available, however, it does not mean that such collections are not subject to the provisions of the PPD. The Company receives data from the National Court Register in order to create a separate database, which uses for its own commercial purposes. In this way, Info Veriti Polska becomes the administrator of the collected data, therefore, as the controller, it is obliged to information requirements. The right of individuals to keep information regarding their situation and status in private, is constitutionally guaranteed, and may be restricted exclusively by laws that have the statutory rank (only Acts). The Act on the National Court Register (KRS) is just such an act. In this case, the record of a natural person entered to the KRS is publicly available, because such Register was created to ensure the transparency of the economic market in Poland. The persons referred to in the Act on the National Court Register, are therefore required to provide their data for inclusion in the register and they must also reckon with the disclosure. This does not mean, however, that they must agree to the use of their data for purposes other than the generally speaking, transparency of economic activity. However, the data controller that processes personal data should provide due care in order to protect the interests of the persons whose data were collected and in particular to ensure that the data were collected for specified and legitimate purposes and are not further processed in a way incompatible with those purposes. The GIODO also noted that the list of situations that allow for waive the requirement to provide information, referred to in 25(1) of the PPD has changed as a result of amendments to the Act that were made in 2004. The provision of Article 25(2) pt 2 that allowed to waive the abovementioned obligation in a situation where the data provided for collection are generally available, was repealed. For these reasons, it was obvious that the intention of the legislature was to require data controllers who collect data “generally available” to completing the duties arising out of the provision of Article 25(1) of the PPD.

The company filed a complaint to the Voivodeship Administrative Court in Warsaw against the decisions issued by the GIODO. Info Veriti requested the Court to decide on the invalidity, or their repeal, in addition, the Company has applied for stay of the execution of the contested decisions and the order to return the costs of proceedings. Infor Veirit claimed that the processed data is very limited, restricted to surname, the national identification number (PESEL), date of birth and functions performed in the entities disclosed in the KRS. Therefore, it is impossible to provide information to persons whose data are processed, because some of them have historical character. These are people who in the past served specific functions. The data administrator is not able to provide such individuals with the required information. The data controller does not process data allowing for direct contact with a person (e.g. home address), and sending information to the address of the entity (e.g. companies created according to the provisions of the Polish Code of Commercial Companies), which in the past served a given function, can not be considered for the execution of the decision. In order to comply with the decision, Info Veriti would need to gather additional categories of data to make contact and send the required information. However, such an obligation should clearly expressed in the decision, which has not happened. The Company has no legal basis for the acquisition of new categories of personal data. The deadline of three months that was ordered by the GIODO is unrealistic in order to collect the required contact data in relation to all of the data are included in the database. The Company noted that its database contains all the data entered in the National Court Register. The purpose of data entered in the National Court Register is closely related to business transactions, and the widespread availability of the registry should not be regarded as interference in the private sphere of the individual whose data is disclosed in the registry. There isn’t therefore a need to notify such persons regarding the process of collecting their personal data, as instruments of public-law on protection of personal data are treated as protection of the right to privacy. The person who serves or served in the bodies of commercial companies must accept that the data will be in an open public record to which access will have anyone interested in business. The purpose of transparency and certainty of economic activity, according to the legislator, prevails over the protection of the name, surname, date of birth and the PESEL number of the persons who performed specific functions in the bodies that were entered into the KRS. Info Veriti also disagreed with the opinion of the GIODO, which opposes the existence and goals of the KRS and data collection of the Company, the latter being also created in order to provide the transparency of economic activity. Services provided by the Company are based on data from public records and explicitly relate to economic activity of specific individuals. Such commercial processing of data previously collected by public entities is allowed by EU law, such as Directive 2003/98/EC of the European Parliament and of the Council of 17 November 2003 on the re-use of public sector information. Information on such entities contributes to the establishment of the internal market and creates a system ensuring undisturbed competition in that market. It is also emphasized that public sector information is an important starting material for products and services related to digital content, and more opportunities to re-use this information should allow European companies to use their potential and contribute to economic growth and job creation. As “information services” of Info Veriti are based on data obtained from public records, they fit into the goals provided in the recitals of the Directive 2003/98/EC. According to Infor Veirit, the consequences of the position taken in the decisions of the GIODO, which implies obligation to provide information to any person that collects data from the National Court Register, if there are situations referred to in Article 2 (1-2) of the PPD, are also unacceptable.

Article 2
1. The Act shall determine the principles of personal data processing and the rights of natural persons whose personal data is or can be processed as a part of a data filing system.
2. The Act shall apply to the processing of personal data in:
1) files, indexes, books, lists and other registers,
2) computer systems, also in case where data are processed outside from a data filing system.

Such requirement would have to be commonly executed in the course of trade in relation to a number of activities related to the acquisition of data from the National Court Register. Given the widespread use of copies of the KRS, that are used for instance to identify the persons authorized to represent the company at the conclusion of the contract, such an interpretation would lead to economic paralysis, and certainly also to the irrational (excessive) financial costs, in the name of privacy protection, which in the present case does not occur.

The Voivodeship Administrative Court in its judgment of 2 June 2011 case file II SA/Wa 720/11 dismissed the complaint. The Court held that the Polish legislator afforded the citizen’s right to privacy in Articles 47, 49 and 51 of the Constitution. This also includes the protection of personal data and privacy against excessive interference by others. The provision of Article 47 of the Constitution sets out the principle of the protection of private life, Article 49 provides for the protection of the correspondence, while the provision of Article 51 states that no one shall be obliged, except under the Act to disclose information concerning his person, a public authority may not acquire, collect and share information on citizens other than those necessary in a democratic state ruled by law, everyone has the right of access to official documents and it datasets. Limitation of this right may be established by statute (act), and to anyone has the right to request the correction or deletion of information incorrect, incomplete, or collected in a manner inconsistent with the Act. These regulations are expanded in the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments, which in turn refers to the solutions contained in 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. These instruments created a basic framework for data protection in the Republic of Poland. The PPD created statutory principle of the protection of personal data. In accordance with Article 1 of the PPD, any person has a right to have his/her personal data protected. The processing of personal data can be carried out in the public interest, the interest of the data subject, or the interest of any third party, within the scope and subject to the procedure provided for by the Act. The protection of personal data is a fundamental right of citizens in a democratic state of law. Protection of personal data is closely connected with the protection of private life and, therefore, it determines the freedom of the citizen. The right to protection of personal data, however, is not absolute and it is limited in the interests of the public or justified interests of others. However, since it is a citizen’s right, that determines a person’s sense of freedom, the exceptions allowing for the collection and use of personal data should be subject to strict interpretation. The legislature guided by the values of protection of constitutional rights cannot allow for a situation in which the law by the wider interpretation of the provisions relating to the processing of personal data, is violated. The provisions of the Act on the National Court Register lay down the rules of registration and the rules of disclosure of data. Such data are available electronically by the Central Information of the KRS or by viewing the register files in the appropriate departments of the Polish courts. These data are made available to any interested person, for the purposes of certainty of economic activity. The persons who undertakes an activity that is to be entered into the KRS, knows that the data is maintained by the State in the registry and data will be used only on the basis of the provisions relating to the functioning of the registry. Meanwhile, Info Veriti collects personal data and information disclosed in the register, such as surname, the PESEL number into its own database, in which data are processed. Data and information from the KRS are not intended for this purpose, and the people who share their personal information do not accept the fact that their personal data had been placed in another private database. When entrepreneurs decide to place their data into the KRS, they also have confidence that such data will be disclosed and used only in a manner permitted by the Act on the National Court Register. The legislature cannot allow for the situation that the protection of personal data contained in the KRS will not be limited to entities that wish to use the data for other purposes, and in a different way than permitted by the Act on the National Court Register. At this time, it would lead to a situation in which data from KRS could be used in an unrestricted way, against the will of the people entered into the register, for instance, in order to create a database for the marketing campaign. The court did not agree with the argument that the contested decision is contrary to the provisions of Directive 2003/98/EC. According to the court, the Directive does not apply directly to the Polish law, as EU directives are implemented into the law of a Member State and only then enter into force in the legal system. This Directive is not implemented to the Polish law, and Poland still works on the implementation. The court held that the contested decision is enforceable. Info Veriti builds its own database and has data that allow the Company to perform the information requirement to those who are in the database. It is possible because there are surnames and PESEL numbers of individuals, and businesses headquarters, where they perform given functions. Moreover, Info Veriti may use the services of the Central Bureau of Domiciliary. The fact that it is a big organizational task and it involves a large number of people does not mean that it is not feasible. By building a large database the Company had to be aware that in relation to the number of people it will have specific obligations according to the provisions of the PPD. Info Veriti filed a requested to stay the execution of the decisions.

The Supreme Administrative Court in its order of 30 September 2011 case file I OSK 1827/11 decided to stay the execution of both decisions.

Database protection, case C‑138/11

August 3rd, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 12 July 2012 in Case C‑138/11 ruled that the activity of a public authority consisting in the storing, in a database, of data which undertakings are obliged to report on the basis of statutory obligations, in permitting interested persons to search for that data and/or in providing them with print-outs thereof does not constitute an economic activity, and that public authority is not, therefore, to be regarded, in the course of that activity, as an undertaking, within the meaning of Article 102 TFEU. The fact that those searches and/or that provision of print-outs are carried out in consideration for remuneration provided for by law and not determined, directly or indirectly, by the entity concerned, is not such as to alter the legal classification of that activity. In addition, when such a public authority prohibits any other use of the data thus collected and made available to the public, by relying upon the sui generis protection granted to it as maker of the database pursuant to Article 7 of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, or upon any other intellectual property right, it also does not exercise an economic activity and is not therefore to be regarded, in the course of that activity, as an undertaking, within the meaning of Article 102 TFEU.

Personal data protection, case II SA/Wa 2821/11

July 26th, 2012, Tomasz Rychlicki

The Polish company Promedica Care Sp. z o.o requested the Inspector General for Personal Data Protection (GIODO) to issue a decision that would order Agora S.A., the owner of gazeta.pl website, to disclose IP addresses of users who posted negative comments regarding Promedica24.pl website. The GIODO decided that Agora S.A. should disclose requested information, although, it also noticed that the provisions of Article 29 of the Polish Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with subsequent amendments, were repealed as of 7 March 2011.

1. The processing of data is permitted only if:
1) the data subject has given his/her consent, unless the processing consists in erasure of personal data,
2) processing is necessary for the purpose of exercise of rights and duties resulting from a legal provision,
3) processing is necessary for the performance of a contract to which the data subject is a party or in order to take steps at the request of the data subject prior to entering into a contract,
4) processing is necessary for the performance of tasks provided for by law and carried out in the public interest,
5) processing is necessary for the purpose of the legitimate interests pursued by the controllers or data recipients, provided that the processing does not violate the rights and freedoms of the data subject.

However, these regulations should be still applied to proceedings initiated before the entry into force of the Act that repealed the above mentioned provisions, and there was no obstacle to justify the refusal to provide the requested data according to the provisions of Article 30 of the PPD.

Article 30
The controller shall refuse the access to the personal data of the filing system to subjects and persons other than those referred to in Article 29 paragraph 1, if it would:
1) result in the disclosure of the information constituting a state secrecy,
2) pose a threat to national defence or security of the state, human life and health, or security and public order,
3) pose a threat to fundamental economic or financial interests of the state,
4) result in a substantial breach of personal interests of the data subjects or other persons.

The General Inspector did not agree with Agora S.A. that providing the requested data would infringe personal interests of the users of gazeta.pl website and its fora. The violation was only hypothetical, and was not supported by proper evidence. Agora S.A. argued that there are no legal instruments that would allow for monitoring the use of disclosed data, and this may lead to their use not only inconsistent with the purpose for which they were disclosed, but even to such use that is contrary to law. The GIODO noted that the absence of such instruments is not synonymous with the use of disclosed data contrary to the purpose for which it was made available. At the moment such data was disclosed, the Company will become the controller (administrator) as defined in the Article 7(4) of the PPD.

Article 7
Whenever in this Act a reference is made to any of the following, it shall mean:
4) controller – shall mean a body, an organisational unit, an establishment or a person referred to in Article 3, who decides on the purposes and means of the processing of personal data.

According to the GIODO, the processing of these data will be subject to the regulations provided in the provisions of the PPD, in particular the obligation not to undergo further processing of the data collected that would not be in accordance with the objectives of the disclosure (so-called principle of expediency/purposefulness), and the control of data processing in compliance with the provisions on personal data protection will be still the competence of the Inspector General. Agora S.A. argued that the provisions of Article 18 of the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), published in Journal of Laws (Dziennik Ustaw) No. 144, item. 1204 with subsequent amendments, should be applied in its case, not the provisions of the PPD.

Article 18
1. The service provider may process the following personal data of the service recipient necessary for entering in, designing contents, amending or terminating legal relationship between them:
1) service recipient’s surname and names ,
2) his/her PESEL number (Personal Identification Number),
3) his/her permanent residence address,
4) his/her address for correspondence, if it is different than the address referred to in point 3,
5) data used for verifying the service recipient’s electronic signature ,
6) service recipient’s electronic addresses .
2. In order to effect contracts or other legal activity having been concluded with a service recipient, a service provider may process other data necessary due to nature (characteristics) of the service provided or way of its billing.
3. The service provider distinguishes and marks those data from among the data referred to in paragraph 2, as such being necessary for providing services by electronic means in accordance with art. 22 paragraph 1.
4. The service provider may process, upon consent of s service recipient and for the purposes set forth in art. 19 paragraph 2 point 2, other data concerning the service recipient, which are not necessary for providing service by electronic means.
5. The service provider may process the following data describing the way of using the service provided by electronic means by a service recipient (traffic data):
1) denotations identifying the service recipient assigned on the basis of the data referred to in paragraph 1,
2) denotations identifying the telecommunication network terminal or a teleinformation system, which have been used by a service recipient,
3) information about commencement, termination and a range of every usage of the service provided by electronic means,
4) information about using of the service provided by electronic means by a service recipient.
6. The service provider provides the information on data referred to in paragraphs 1 – 5 to the state authorities for the needs of legal proceedings carried on by them.

The provider is therefore obliged to provide information on all categories of data listed in Article 18(1-5) of the PSEM, to the State authorities for the purpose of the proceedings conducted by them. The Inspector General noted that the disclosed information should also be understood as such data. The GIODO said that the provision of Article 18(6) of the PSEM are constructed in general terms and do not indicate either the types of bodies that may request such information, or the types of proceedings: criminal, civil, administrative or enforcement. The Inspector General noted that the provision of Article 18(6) of the PSEM only requires the provider to disclose information to State bodies, and it should not be interpreted broadly as the legal norm that is prohibiting the disclosure of such information to other entities. The GIODO decided that if the legislature had the intention to limit the disclosure of the information referred to in Article 18(1-5) of the PSEM, only for the bodies referred to in Article18(6) of the Act, it would explicitly formulate this provision, for example, by using the phrase “only”, which is a legislative method of defining the closed circle of entities, as it was provided in other regulations, for instance in the Article 66g and Article 66j § 4 of the Polish Act of 17 June 1966 on Administrative Enforcement Proceedings, or in the Article 72(1) of the Polish Act 5 August 2010 on Protection of Classified Information and in Article 105(1) of the Polish Act of 29 August 1997 Banking Law. The Inspector General noted that the legislature did not use the phrase “only” in the provisions of Article 218 of the Criminal Proceedings Code – CRPC – (in Polish: Kodeks Postępowania Karnego) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 89, item 555, with subsequent amendments, in relation to an obligation to disclose, at the request contained in the order, to the court or the prosecutor any mail and packages and the data referred to in Article 180c and 180d of the Polish Act of 16 July 2000 on Telecommunications Law – TLA – (in Polish: Prawo telekomunikacyjne), published in Journal of Laws (Dziennik Ustaw) No 171, item 1800 with subsequent amendments.

Article 180c
1. The obligation referred to in Article 180a (1) shall cover the data necessary to:
1) trace the network termination point, telecommunications terminal equipment, an end user:
a) originating the call,
b) called;
2) identify:
a) the date and time of a call and its duration,
b) the type of a call,
c) location of telecommunications terminal equipment.
2. The minister competent for communications in agreement with the minister competent for internal affairs, having regard to the type of telecommunications activities performed by operators of a public telecommunications network or providers of publicly available telecommunications services, data specified in paragraph 1, costs of data collection and retention as well as the need to avoid multiple retention and storage of the same data, shall specify, by means of an ordinance:
1) a detailed list of data referred to in paragraph 1;
2) types of public telecommunications network operators or providers of publicly available telecommunications services obliged to retain and store the data.

Article 180d
Telecommunications undertakings shall be obliged to provide conditions for access and retention as well as to make available at their own cost the data referred to in Article 159 (1) (1) and (3) to (5), in Article 161 and in Article 179 (9) related to the provided telecommunications service and processed by them to authorized entities, to the court and to the prosecutor, under the terms and observing the procedures specified in separate provisions.

The Inspector General stressed that the legislature has indicated that only the court or the prosecutor is allowed to open the correspondence, mail and data, or order for their opening.

Article 218
§ 1. Offices, institutions and entities operating in post and telecommunications fields, customs houses, and transportation institutions and companies, shall be obligated to surrender to the court or state prosecutor upon demand included in their order, any correspondence or transmissions significant to the pending proceedings. Only the court and a state prosecutor shall be entitled to inspect them or to order their inspection.

The Inspector General also stressed that the above-cited provisions of the CRPC should not be applied in this case, because Promedica Care Sp. z o.o is not the authority conducting the proceedings in a criminal case, and the disclosed personal data will be used by it to initiate civil, not criminal proceedings. The GIODO indicated that Promedica may follow the procedure provided for in Article 29 of the PPD, and civil proceedings under the Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, regardless of actions taken under the criminal proceedings. Agora S.A. filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 8 March 2012 II SA/Wa 2821/11 repealed the contested decision, and held that according to the provisions of Article 18(6) of the PSEM, the only one empowered to obtain data collected by the service provider within the meaning of that Act, are the State bodies. The PSEM does not contain any other provision, which serve as the basis for disclosure of data to the entities other than state authorities. The court stated that if the legislature’s intention was to give permission to obtain operational data to entities other than state authorities, it would have included a clear regulation providing for such permission in the PSEM. Data protection is a general rule. The service provider may process personal and operational data only in the extent and on terms defined in the PSEM. Only in the absence of regulations provided in the PSEM such processing may be based on an appropriate application of the PPD. The disclosure of data to third parties – such as Promedica Care – is breaking of that protection and as an exception to the rule cannot be interpreted broadly.

Copyright law, case C-128/11

July 5th, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 3 July 2012 in Case C-128/11 ruled that Article 4(2) of Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the right of distribution of a copy of a computer program is exhausted if the copyright holder who has authorised, even free of charge, the downloading of that copy from the internet onto a data carrier has also conferred, in return for payment of a fee intended to enable him to obtain a remuneration corresponding to the economic value of the copy of the work of which he is the proprietor, a right to use that copy for an unlimited period.

Articles 4(2) and 5(1) of Directive 2009/24 must be interpreted as meaning that, in the event of the resale of a user licence entailing the resale of a copy of a computer program downloaded from the copyright holder’s website, that licence having originally been granted by that rightholder to the first acquirer for an unlimited period in return for payment of a fee intended to enable the rightholder to obtain a remuneration corresponding to the economic value of that copy of his work, the second acquirer of the licence, as well as any subsequent acquirer of it, will be able to rely on the exhaustion of the distribution right under Article 4(2) of that directive, and hence be regarded as lawful acquirers of a copy of a computer program within the meaning of Article 5(1) of that directive and benefit from the right of reproduction provided for in that provision.

Personal data protection, case C-461/10

June 7th, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 19 April 2012 Case C-461/10 Bonnier Audio AB and Others v Perfect Communication Sweden AB ruled that Directive 2006/24/EC of the European Parliament and of the Council of 15 March 2006 on the retention of data generated or processed in connection with the provision of publicly available electronic communications services or of public communications networks and amending Directive 2002/58/EC must be interpreted as not precluding the application of national legislation based on Article 8 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights which, in order to identify an internet subscriber or user, permits an internet service provider in civil proceedings to be ordered to give a copyright holder or its representative information on the subscriber to whom the internet service provider provided an IP address which was allegedly used in an infringement, since that legislation does not fall within the material scope of Directive 2006/24;

It is irrelevant to the main proceedings that the Member State concerned has not yet transposed Directive 2006/24, despite the period for doing so having expired.

Directives 2002/58/EC of the European Parliament and of the Council of 12 July 2002 concerning the processing of personal data and the protection of privacy in the electronic communications sector (Directive on privacy and electronic communications) and 2004/48 must be interpreted as not precluding national legislation such as that at issue in the main proceedings insofar as that legislation enables the national court seised of an application for an order for disclosure of personal data, made by a person who is entitled to act, to weigh the conflicting interests involved, on the basis of the facts of each case and taking due account of the requirements of the principle of proportionality.

Copyright law, case C-406/10

May 5th, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 2 May 2012 Case C-406/10 ruled that Article 1(2) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs must be interpreted as meaning that neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program and, as such, are not protected by copyright in computer programs for the purposes of that directive.

2. Article 5(3) of Directive 91/250 must be interpreted as meaning that a person who has obtained a copy of a computer program under a licence is entitled, without the authorisation of the owner of the copyright, to observe, study or test the functioning of that program so as to determine the ideas and principles which underlie any element of the program, in the case where that person carries out acts covered by that licence and acts of loading and running necessary for the use of the computer program, and on condition that that person does not infringe the exclusive rights of the owner of the copyright in that program.

3. Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the reproduction, in a computer program or a user manual for that program, of certain elements described in the user manual for another computer program protected by copyright is capable of constituting an infringement of the copyright in the latter manual if – this being a matter for the national court to ascertain – that reproduction constitutes the expression of the intellectual creation of the author of the user manual for the computer program protected by copyright.

Personal data protection, case IX Nc 1850/11

April 14th, 2012, Tomasz Rychlicki

The Regional Court in Wrocław in its judgment of 2 February 2012 case file IX Nc 1850/11 held that that there was no reason to accept the view that electronic services providers are required to bear costs for rendering information on given data to the state authorities for the needs of legal proceedings carried on by them. Therefore, the court ruled that the Police has to pay to the company that operates social-networking site for gathering and processing requested data and information, according to the specifiaction that was received from the Police.

Database protection, case C‑604/10

March 13th, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 1 March 2012 Case C-604/10 Football Dataco Ltd and Others v Yahoo! UK Ltd and Others held that Article 3(1) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be interpreted as meaning that a ‘database’ within the meaning of Article 1(2) of that directive is protected by the copyright laid down by that directive provided that the selection or arrangement of the data which it contains amounts to an original expression of the creative freedom of its author, which is a matter for the national court to determine. As a consequence:
– the intellectual effort and skill of creating that data are not relevant in order to assess the eligibility of that database for protection by that right;
– it is irrelevant, for that purpose, whether or not the selection or arrangement of that data includes the addition of important significance to that data, and
– the significant labour and skill required for setting up that database cannot as such justify such a protection if they do not express any originality in the selection or arrangement of the data which that database contains.
The Court also ruled that the Directive 96/9 must be interpreted as meaning that, subject to the transitional provision contained in Article 14(2) of that directive, it precludes national legislation which grants databases, as defined in Article 1(2) of the directive, copyright protection under conditions which are different to those set out in Article 3(1) of the directive.

Copyright law, case C-360/10

February 22nd, 2012, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 16 February 2012 Case C-360/10 Belgische Vereniging van Auteurs, Componisten en Uitgevers CVBA (SABAM) v Netlog NV ruled that Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (Directive on electronic commerce), Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the in formation society, and Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, read together and construed in the light of the requirements stemming from the protection of the applicable fundamental rights, must be interpreted as precluding a national court from issuing an injunction against a hosting service provider which requires it to install a system for filtering:
– information which is stored on its servers by its service users;
– which applies indiscriminately to all of those users;
– as a preventative measure;
– exclusively at its expense; and
– for an unlimited period,
which is capable of identifying electronic files containing musical, cinematographic or audio-visual work in respect of which the applicant for the injunction claims to hold intellectual property rights, with a view to preventing those works from being made available to the public in breach of copyright.

Trade mark law, case VI SA/Wa 1319/11

November 28th, 2011, Tomasz Rychlicki

Designer drugs are well-known as “dopalacze” in Poland (in English: boosters). They were freely available on the Polish market because of the legal loophole in the Polish Act of 29 July 2005 on Counteracting Drug Addiction. In 2010, after different mainstream media reported on several cases involving health problems caused by such drugs, the Polish Government ordered a nationwide crackdown on shops selling designer drugs, memory enhancers or noothropic substances.

In 2008, the Polish company KONFEKCJONER Sp. z o.o., one of the biggest suppliers of these products, tried to register the word trade mark DOPALACZE.com Z-345673 in Classes 30, 33, 34 and 39, but the Polish Patent Office refused to grant the right of protection. KONFEKCJONER filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2011 case file VI SA/Wa 1319/11 dismissed it, and held that the word trade mark DOPALACZE.COM was intended to designate, inter alia, herbal substitutes for coffee, alcoholic beverages, tobacco and smokers’ articles, and delivery of goods and parcels. The recipients of these goods and services are generally understood as the broadest public possible, and the “average consumer” is reasonably well informed and reasonably observant and circumspect. The Court ruled that the sign in question may suggest that the consumption of goods bearing this trade mark may cause specific narcotic effect. There was a sufficiently serious risk that consumers receive wrong message regarding the goods. Although, products such as coffee, cigarettes, tobacco, function as goods that add energy, they are treated as stimulants or tranquilizers, however, such a trade mark may suggest that the goods have been strengthened to induce a certain narcotic effect. Smokers’ articles are deemed as ancillary to the aforementioned goods for which the registration was sought, the same applies to delivery of parcels and goods.

Trade mark law, case VI SA/Wa 211/11

October 6th, 2011, Tomasz Rychlicki

SOREMARTEC S.A. requested the Polish Patent Office to invalidate the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895 registered for Toruńskie Piwnice Win VINPOL Sp. z o.o., currently VINPOL Sp. z o. o.

R-182895

SOREMARTEC claimed that this sign is similar to the renowned series of RAFFAELLO trade marks registered on its behalf, that the application was filed in bad faith, and that this sign is similar to SOREMARTEC’s trade marks to a degree that causes a risk of misleading the public as to the origin of goods. SOREMARTEC noted that it is aware of VINPOL’s word trade mark RAFFAELLO R-87046 applied for registration in 1993 and subsequent word and figurative trade marks that include in their verbal elements the word “Raffaello”. Therefore, the Company did not oppose the coexistence of Raffaello pralines and sparkling wine bearing the label with the word “Raffaello” on the Polish market. However, the disputed trade mark includes the graphic version of RAFFAELLO that confusingly similar to the one that is consistently used by Ferrero for many years on the packaging of Raffaello pralines. The existence of the contested trade mark would be harmful to both the reputation and distinctiveness of its trade marks, as well as it would be unfairly “impersonating” the reputation of its trade marks without the cost of advertising and promotion. To prove the reputation of its trade marks SOREMARTEC submitted a copy of the public poll report entitled “RAFFAELLO Brand Recognition” and a copy of the report “Development of praline market in Poland”, which shows that the brand RAFFAELLO was in the forefront of the most popular brands of sweets in Poland, its advertising was one of the most remembered and associated advertising of pralines, and Raffaello pralines were among the 10 most frequently purchased and consumed pralines within 6 months preceding the date of the polls. SOREMARTEC also presented a tabulation of the total expenditure on advertising and promotion of Raffaello products in Poland, which have been incurred by Ferrero from 2001 to 2005, and a tabular summary of quantitative results of sales of Raffaello pralines for the period from February 2001 to February 2006. These data indicated that SOREMARTEC has continually expanded and refining the Raffaello’s product line incurring increasing financial investments and extensive marketing campaigns and advertising, so the demand for its products continues to grow. Moreover, SOREMARTEC argued that VINPOL applied for two other trade marks, which verbal element is identical to SOREMARTEC’s trade mark, i.e. MON CHERI R-194468 and word-figurative Mon Cheri CHERRY BRANDY & Delicious 18 High Quality R-203339, and this proves conscious and deliberate action designed to use the reputation of SOREMARTEC’s trademarks. In response, VINIPOL argued that the goods produced by SOREMARTEC, i.e., pralines, and wine are not identical or similar, and therefore there is no risk of misleading the public.

R-203339

The PPO invalidated the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895. The PPO ruled that the circumstances, i.e. several years of presence on the Polish market of Raffaello pralines before the filing date of the contested trade mark, a volume of sales and high percentage of recognition of Raffaello trade marks and its distinctive character, what is the result of both the original form of a trade mark, as well as expenditures on promotion and advertising, confirmed the reputation of Raffaello pralines. According to the PPO, the goods such as alcohol and sweets have many features in common, particularly because they are not consumed for nutritional purposes but for pleasure, such goods can be produced by one company, and may also be sold in a set, or eaten together, which may cause the potential audience to associate sparkling wine with Raffaello pralines. The PPO decided that the contested trade mark, because of its form, will attract the attention of consumers who know the early signs and the goods, in connection with which these trade marks are used. As a result, VINPOL would gain unfair advantage that is mostly based on creating the effect of interest in the goods and services marked with this sign, without having to incur any expenditure on promotion of its goods and services. The PPO has also stressed that the fact that earlier registrations of trade marks for wines with the Raffaello element did not authorize VINPOL to create labels of those products in a form, which resemble them to reputable trade marks, and therefore let VINPOL to benefit from the fact that the recipient seeing the wine Raffaello associate them with products offered by SOREMARTEC that enjoys good reputation among buyers. VINPOL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 29 July 2011 case file VI SA/Wa 211/11 dismissed it. The Court noted that provisions of the Polish Act on Industrial Property Law does not contain a legal definition of a reputable/renown trade mark, so the Court had to refer to the opinion developed by case law and doctrine. The Court of Justice in its judgment of 14 September 1999 Case C-375/97 Chevy formulated the definition of a renowned trademark for the first time. The doctrine points out that the reputation of a trade mark depends primarily on the quality of the goods bearing it, the financial investment made by the entrepreneur to promote its sign in the media and the period of time required for the customer to establish relationship between a specified quality with goods that bears a sign that represents this high quality (recognition of goods bearing the trade mark on the market). The passage of time needed for the establishment of reputation of the trade mark is different for goods from different industries. The period of time depends on many factors, in particular on the intensity of advertising surrounding the launch of the goods bearing the sign. Furthermore, by creating a reputation of a trade mark, the advertising function of a sign is also strengthen, because such a mark encourages customers to purchase goods bearing it. This function is the result of an advertising of a sign staggered in time, by the use of a mark by an authorized entity and the relationship created in the minds of consumers between a sign with positive associations, particularly with regard to quality, usefulness, of product, the profitability of its acquisitions, and other characteristics relevant to the recipients of goods bearing the trade. Also the domestic case law provides that the reputation of a trade mark is characterized by 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, as it was decided in the judgment of the Supreme Administrative Court of 9 May 2008 case file II GSK 506/07, the judgment of the Supreme Administrative Court of 27 February 2008 case file II GSK 359/07.

The Court ruled that the PPO correctly concluded, based on the evidence presented that SOREMARTEC’s trademarks are reputable, and the sign at issue is similar in such a way that consumers can associate these characters with each other, and the use of this trade mark by VINPOL may bring unfair advantage due to the obvious use of the reputation of the trade marks owned by SOREMARTEC. The evidence showed that Raffaello pralines were present on the Polish market several years before the filing date of the contested trade mark, the sales were rising over the years, the high percentage of recognition of Raffaello, and a significant volume of promotion and advertising, created the image of the brand as a symbol of quality, delicacy and elegance. All this confirms the reputation of Raffaello pralines. At the same time as it was pointed by the Appellate Court in Warsaw in its judgment of 3 October 2007, case file I ACa 767/07, there is no requirement of likelihood of confusion in relation to reputed trade mark, only the possibility to associate a sign with a reputed trade mark that was registered earlier, which results that the first sign is able to attract customers through positive images carried by a reputable character. Associations between such trade marks occur when the designation used by the infringer automatically brings in minds of potential customers a reputable character originally used by the owner, even if the recipient is aware of the fact that both entities are completely independent. If these signs are also used to designate similar goods, there is no need to show any additional evidence. Apart whether consumers will confuse this trade mark as to the origin of the goods designated, it will draw attention to goods bearing a renowned trademarks. Such a situation would give unfair advantage resulting only from similarity to the earlier reputed mark, based mainly on the effect of interest that would arouse in the goods covered by the contested mark, without incurring any expenses for promotion of those goods.

Trade mark law, case C-236/08

September 6th, 2011, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of of 23 March 2010 joinded Cases C-236/08 to C-238/08 ruled that the Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

2. An internet referencing service provider which stores, as a keyword, a sign identical with a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 or of Article 9(1) of Regulation No 40/94.

3. Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned.

Internet domains, case I ACa 1087/10

August 2nd, 2011, Tomasz Rychlicki

The Court of Conciliation for Internet Domains at the Polish Chamber of Information Technology and Telecommunications (the CCID) in its award of 9 March 2010 case file 74/09/PA dismissed the complaint brought by Italian company Bisazza against Polish entrepreneur Rafał Kacprzak Installation.pl from Wrocław who registered the following domain names: bisazza.pl, bisazza.com.pl and bisazza-installation.com. Bisazza claimed that the registration of .pl domains infringed on its CTM BISAZZA no. 001494590 and word-figurative CTM “BISAZZA mosaico” no. 001500248. Surprisingly, the Court did not agree with arguments provided by the Italian company and held that there was no infringement because the regulations included in the Polish Industrial Property law that did not allow for such interpretation. According to the CCID, there was no delict/tort of unfair competition as activities of both companies should be deemed as complementary. The CCID noted that Bisazza could act more carefully and it should have registered both domain names much earlier. According to the Court, by advertising products of the Italian company, Mr. Kacprzak was not acting as a cyber squatter because he did not only intend to increase his financial benefits but he was doing it in order to maximise mutual benefits. The Court also said the Mr. Kacprzak did not infringe on the company name.

CTM no. 001500248

Bisazza S.p.A. filed a complaint against this controversial decision. The Company claimed the arbitration award is contrary to the public policy rules established in the Republic of Poland, including the protection of acquired rights, social justice, stable and secure law, comprehensive examination of the case, consistency of legal decisions and integrity of the legal system.

The Court for the Community Trade Marks and Community Designs in its judgment of 20 September 2010 case file XXII GWzt 17/10 annulled the questioned award. To begin with, the Court reminded that the Polish legislator sought to strengthen the arbitration proceedings by limiting the possibility of challenge of the awards issued by courts of arbitration. The competence of common courts in controlling the correctness of awards issued by arbitration courts are very limited and strictly defined. The petition for the reversal of the arbitration award belongs to the category of special appeals. It has a cassatory character (annulment of a judicial decision is allowed only in certain cases under strict conditions). In such proceedings the Court will not examine the merits of the dispute (if the facts warrant issued ruling) or verify the correctness of the findings that were made and accepted. All the grounds justifying of the petition for the reversal of the arbitration award are included in the Article 1206 §1-2 of the Civil Proceedings Code – CPC – (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments.

§ 1 By way of an application a party may apply for the award to be set aside if:
1) there was no arbitration agreement, the agreement is not valid, ineffective or has expired under the law applicable to it;
2) the party was not given proper notice of the appointment of an arbitrator, of the arbitration proceedings or was otherwise unable to present its case before the arbitration tribunal;
3) the award deals with a dispute not contemplated by or beyond the scope of the arbitration agreement, provided that, if the decisions on matters submitted arbitration can be separated from those not so submitted or falling beyond the scope of the arbitration agreement, then only that part of the award which relates to the matters not submitted or falling beyond the submission may be set aside; the fact that a matter is beyond the scope of the arbitration agreement cannot constitute a ground for setting aside the award if a party who participated in the proceedings did not object to those claims being heard;
4) the composition of the arbitration tribunal or the fundamental rules of arbitral procedure were not in accordance with the agreement of the parties or with a provision of law;
5) the award was obtained by way of a crime or on the basis of a forged or falsified document,
6) a final judgment has already been made in the same case between the same parties.

§ 2. The arbitration award shall also be set aside if the court finds that:
1) the dispute was not capable of settlement by arbitration under the law;
2) the award is contrary to the public policy rules in the Republic of Poland (public order clause).

The Court noted that when assessing whether an arbitration award is contrary to the fundamental principles of law, the Court should take into account its content and not the correctness of the proceedings that were held before the arbitration body. The basic principles of the law underlying the assessment of the award should be understood not only as the constitutional rules but also as the general norms and rules in particular areas of law. The breach by an arbitration body of the proper substantive law justifies the reversal of the arbitration award only if the award is contrary to legal order. The arbitration body shall decide on the dispute according to the law of the legal relationship and when the parties explicitly mandated it – by the general principles of law or equity/fairness. The Court for the Community Trade Marks and Community Designs concluded that the interpretation of basic principles of trademark law both national and Community, that was provided by the CCID in its award, shows lack of understanding of the merits of law and lack of the ability to apply existing rules to the facts of this case. The arbitration court committed various irregularities: by qualifying the rights to Bisazza trade marks as national property rights, in examining the infringement based on only one character – probably a word trade mark – without considering the reputation, by dismissing the infringement claims on the basis of facts that do not have any meaning in trademark law while failing to examine identity/similarity of the marks and signs included in Internet domains and the goods and services of each party. The court reminded the arbitrator that the rules and regulations under the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, the CTMR and the case law of the Court of Justice of the UE apply directly in disputes over infringement of the Community trade mark. These rules and regulations must be applied also by national courts including arbitration bodies. Incorrect choice of legal norms and wrongful interpretation led to an unjustified deprivation of protection which is afforded to Bisazza in relation to its trademarks. Mr Kacprzak appealed.

The Appellate Court in Warsaw in its judgement of 1 April 2011 case file I ACa 1087/10 overturned the judgment of the Court for the Community Trade Marks and Community Designs. The Appellate Court found that since the CCID ruled that it has no jurisdiction to hear and decide upon some of the demands made by Bisazza, and rejected them in the suit, the decision was final and could not be controlled at all by the civil courts, including the proceedings caused by an action for annulment of an arbitration award. The findings stating that the CCID had no jurisdiction, that were based on the domain names regulations issued by the Scientific and Academic Computer Network (Naukowa i Akademicka Sieć Komputerowa), did not constitute a breach of the basic principles of the law (the public order clause), because Bisazza could take these demands to a civil court. In the opinion of the Appellate Court, the District Court failed to consider whether the erroneous application of the Polish law rather than the EU by the CCID was tantamount to violation of the basic principles of the law. It could have been so, only if it had a significant impact on the content of the decision rendered by the CCID. In the opinion of the Appellate Court, however, there was no such effect in this case. The Appellate Court ruled that the relevant regulations provided in the Polish law are the result of the implementation of the Directive 89/104/EEC and its relevant provisions required for this case to be then included in the CTMR. The Court decided that the solutions provided in the Polish law are similar to those of EU legislation, and the classification of infringement of trade mark rights is done by the same rules. The Appellate Court noted that the CCID found that Mr Kacprzak used, in the course of trade, a trademark identical to a protected mark not in relation to identical or similar goods but to goods protected by this trademark. The defendant is an installer of Bisazza mosaics but not identical or similar mosaics. The CCID examined also whether or not there is an infringement of reputed trademark, however, found no such breach. The Appellate Court also ruled that the award of the CCID did not violate the rules and principles of a stable and secure law because these rules should relate to the creation of law and not its application.

See also “Polish case law on domain names“.

Trade mark law, case II GSK 611/10

July 12th, 2011, Tomasz Rychlicki

Tiffany & Broadway Inc. Div. of Texpol Corporation from Huston filed a cassation complaint against the judgment of the Voivodeship Administrative Court in Warsaw of 19 October 2009 case file VI SA/Wa 643/09. The VAC dismissed the complaint against the decision of the Polish Patent Office in which the PPO invalidated the right of protection for the word-figurative trade mark TIFFANY R-153644. The request for invalidation was filed by Tiffany & Co. from New York. The New York’s company claimed the similarity of signs and a breach of its over 150-years reputation applied to jewellery products.

R-153644

The Supreme Administrative Court in its judgment of 31 May 2011 case file II GSK 611/10 overturned the questioned judgment and sent the case back for reconsideration. The SAC ruled that the reputation of a trade mark is associated with its high distinctive ability, and such ability is weakened if more entrepreneurs are using the same or similar trade marks to designate their goods. The Court noted that the reputation is a matter of facts and the evidence suggesting that this sign could be well-known and considered to be attractive also in Poland, due to the popularity of Truman Capote’s book and the movie “Breakfast at Tiffany’s”, was not sufficient. What was also important is the fact that the SAC noted that cases between the same parties relating to trade marks with the word “Tiffany” were already the subject of recognition by this Court. See “Trade mark law, case II GSK 1110/08“, “Trade mark law, case II GSK 1111/08” and “Trade mark law, case VI SA/Wa 214/08“. Although there were similar arguments presented by the parties, each case brought before the SAC was related to the legality of separate and non-identical decisions. The VAC has to consider these differences, but the SAC also ruled that it would be advisable to take into account the views expressed in earlier judgments of the Supreme Administrative Court based on the background of similar cases between the same parties.

Trade mark law, case VI SA/Wa 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case II GSK 466/10

July 5th, 2011, Tomasz Rychlicki

Aquatherm GmbH registered a single green color determined by RAL 150 60 40 as a trade mark IR-863506 for goods in Class 19 such as rigid pipes of polypropylene for the supply of drinking water and heating and air conditioning systems in houses, office buildings and industrial buildings. The Company sought the recognition of the protection of its trade mark on the territory of the Republic of Poland based on the provisions of the Madrid Agreement Concerning the International Registration of Marks.

IR-863506

On 11 July 2006, the Polish Patent Office transmitted to the International Bureau in Geneva a notification of the grounds which prevent the protection of an international trademark to be recognised on the territory of the Republic of Poland. The PPO decided that according to Article 120 of the Polish Industrial Property Law this trade mark cannot distinguish the goods, because it is a single color and it is devoid of sufficient distinctive character.

On 20 April 2007, the Patent Office sent a letter to the International Bureau with information concerning the correction of a clerical error in the notification dated 11 July 2006, informing that the provisional refusal to recognize the protection should include Article 129(1)(ii) and Article 129(2)(i) of the IPL and not Article 120 of the IPL. At the same time, the PPO did not consider the request of the Aquatherm GmbH to initiate an administrative hearing on the correction of this error. The PPO pointed out that the correction did not change the legal basis of the notification. The difference in the numbering of Articles 120 and 129 was a result of unfortunate, in this case, close arrangement of numbers 9 and 0 on the computer keyboard.

The Polish Patent Office in its decision of 9 May 2008 case DT-IR-863 506 refused to recognize the protection. Aquatherm GmbH filed a request for re-examination of the matter, but it was dismissed by the PPO in its decision of 10 June 2009 case PT-430/08 IR-863 506. The PPO did not agree with the Aquatherm GmbH that the registration on its behalf of the earlier trade marks such as IR-832895 or IR-837655 justifies the registration of the applied sign because each case is decided according to individual circumstances. The PPO held that it has not changed, as a result of correcting errors, the legal basis of the refusal.

Aquatherm GmbH filed a complaint against these decisions. The Company argued that the PPO infringed on Article 5(2) of the Madrid Agreement because it took its decision after the expiration of one year term that is calculated from the date of the international registration of the mark. The provisions that were used as the basis for refusal, were first indicated in the letter of 20 April 2007. Aquatherm GmbH argued also that the PPO mistakenly determined that the goods included in the list of goods and services are everyday consumer goods targeted for mass audiences, and that the green color is commonly used for the determination of water supply pipes, and aqueous solutions. According to the Company, the PPO has not made an exhaustive evaluation of the evidence, in particular, it completely ignored the key evidence submitted by the company in a statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology which included information on whether a given color may indicate the manufacturer
on the market of installations polypropylene systems, and whether the green color used as designation of pipes or installations allows the buyers to identify these products with Aquatherm GmbH.

The Voivodeship Administrative Court in its judgment of 3 December 2009 case file VI SA/Wa 1452/09 dismissed the complaint. The VAC held that the provisional refusal cannot be considered ineffective. According to the Court, the PPO indicated the grounds for refusal which was in accordance with the Rule 17 of the Common Regulations under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to that Agreement. The Court noted that in the case of color per se its concrete distinctive ability must be interpreted in the light of public interest, which is based on the rules of the limited reduction of the availability of colors for other entrepreneurs who offer goods or services of the same kind as the goods or services covered by the registration application. The basic function of the trade mark is to guarantee the final consumer or user the identity of the origin of the goods or designated services bearing the trade mark by letting them distinguish the goods or the service of goods or services of different origin. The distinctive character of the sign is based on such features which in the minds of consumers clearly indicate that a particular product bearing a given trade mark comes from the specific company. The VAC noted that in relation to the color per se, it is assumed that the existence of primary distinctive characteristic (without any prior use) is possible only in exceptional circumstances, especially when the number of goods or services for which the mark is applied for is very limited and when the relevant market is very specific. The Court noted that the green color in relation to the applied goods is not unusual. The VAC agreed with the PPO that, in the case of green color used for the pipes used for water flow, there is a risk that consumers will associate it with nature, therefore, it should not be monopolized by one company, in particular, that this shade of green RAL 150 60 40 is also not original.

Moreover, the VAC found that the Patent Office has rightly used the example of PN-70/N-01270 standards Guidelines for marking of pipelines. The standard recommends that the painting for the identification of pipelines made of carbon steel or other materials susceptible to corrosion should be coordinated with anticorrosive painting in which the topcoat should also fulfill the function of identification. It is customary to use green for water and chemical solutions that pose no chemical and thermal threat. The Court noted that the statement of the Polish Corporation of Sanitary, Heating, Gas and Air-Conditioning Technology could be helpful to support Aquatherm position, but also found that such a document can not be regarded as expert evidence under the provisions of Polish Administrative Proceedings Code or substitute evidence for opinion polls.

The Supreme Administrative Court in its judgment of 15 April 2011 case file II GSK 466/10 dismissed the cassation. The SAC agreed with the findings included in the judgment of the VAC and ruled that the provisional refusal to recognize the protection is, by its very nature, some kind of a general statement issued by an authorized body of the state that is the party to the Madrid Agreement, and it includes the grounds which prevent the protection of an international trademark to be recognized on the territory of the Republic of Poland. The reasons given in the notification of provisional refusal set the boundaries within which the Polish Patent Office then investigates the case and its matter. However, as it was mentioned, the notification is of a general (signaling) nature and it is clarified in a subsequent administrative proceedings. In the event of a dispute, the position included in the notification is subject to detailed examination by the administrative courts, reflecting inter alia the context of a trade mark application, the nature of the applied sign, etc. As a consequence, the reasons of a provisional refusal should be explained in general terms and take into account all the circumstances specified in the notification by the authority.

Trade mark law, case II GSK 368/10

June 10th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated in part the right of protection for 100 R-156995 trade mark that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade journals, prints, forms, newspapers, calendars, calendars with tear loose, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stickers, notepads, covers, stationery, bookmarks, drawing kits, notebooks. Technopol filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2009 case file VI SA/Wa 1677/09. Technopol decided to file a cassation complaint.

R-156995

The Supreme Administrative Court in its judgment of 15 March 2011 case file II GSK 368/10 dismissed the complaint in part. The SAC held that the designation, which in fact is the number 100, is a highly informative sign for magazines and journals containing charades, and, as such may not be the monopolized by one entity that would like to use it for marking crosswords magazines. The Court noted also that adding to a trade mark any image does not yet give the sign a concrete distinctive character.

Trade mark law, case II GSK 522/10

May 31st, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 31 May 2011 case file II GSK 522/10 held that the reputation of trade mark is a matter of fact and it is not enough to show that there is evidence that suggests that the sign could be known and recognized as attractive in Poland. It was necessary to examine and assess whether according to the methods developed by the doctrine and jurisprudence, the sign on the date it was applied for in Poland, was known and recognized as a reputed trade mark in this country.

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.

Trade mark law, case VI SA/Wa 1104/10

March 17th, 2011, Tomasz Rychlicki

DOMAIN MENADA Sp. z o.o. applied for the right of protection for the word trade mark “TCHERGA – ŻYJ KOLOROWO” for goods in Class 33 such as alcoholic beverages (except beers). The Polish Patent Office refused to grant the right of protection because it found similarity with the earlier trade mark TCHERGA IR-0829406 owned by Droujestvo S Ogranitchena Otgovornnost BELVEDERE Capital Management.

IR-0829406

DOMAIN MENADA pointed out that it is a controlled company and the Bulgarian entrepreneur is the controlling one, where both enterprises form a homogeneous capital group and remain inseparable commercial contacts and in the interest of both parties is that DOMAIN MENADA is granted the right of protection for a trademark in question and a letter of consent signed by the Bulgarian company was a proof of such an approach. DOMAIN MENADA argued that the same evidence was brought in case of the “TCHERGA CRAZY FOR COLOUR” trade mark R-196255, in which the Polish Patent Office granted the right of protection.

The PPO noted that all relationships between entrepreneurs, can only be the basis for granting a license to use the trade mark. The provisions allowing for a letter of consent in relation to the trade mark rights remaining in force are not provided in Polish law. The Polish Industrial Property law introduced regulations on a letter of consent in a limited extent in the case of applying for the right of protection for a trade mark in respect of identical or similar goods, if the trade mark is identical or similar to a trade mark earlier registered in the Republic of Poland, whose registration has terminated. The right holder of the earlier right may give his/her consent for the later trade mark being granted a right of protection. The PPO noted that the TCHERGA CRAZY FOR COLOUR R-196255 was registered before the Supreme Administrative Court rendered a judgment case file II GSK 279/07. The SAC held that a letter of consent cannot be used as ground to register a trade mark since Poland did not implement Article 4(5) of the First Council Directive 89/104. See “Trade mark law, case II GSK 279/07“. Domain Menada filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 12 January 2011 case file VI SA/Wa 1104/10 dismissed it and ruled that capital or organizational or personal links between enterprises cannot justify and serve as the sole reason for granting the right of protection for a trademark.

Database protection, case C-46/02

February 7th, 2011, Tomasz Rychlicki

The Court of Justice of the EU in its judgment of 9 November 2004 Case C-46/02 Fixtures Marketing Ltd v Oy Veikkaus Ab, held that the expression “investment in … the obtaining … of the contents” of a database in Article 7(1) of Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases must be understood to refer to the resources used to seek out existing independent materials and collect them in the database. It does not cover the resources used for the creation of materials which make up the contents of a database. In the context of drawing up a fixture list for the purpose of organizing football league fixtures, therefore, it does not cover the resources used to establish the dates, times and the team pairings for the various matches in the league.