Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Directive 98/71/EC

Trade mark law, case XXII GWwp 19/10

September 4th, 2013, Tomasz Rychlicki

ZIMBO Fleisch- und Wurstwaren GmbH & Co. KG sued Wanda Szczupak for the infringement of Community Designs nos. 000729694-0001, 000729694-0002, 000729694-0008 and 000729694-0009, and the CTM ZIMBO no. 006462592. ZIMBO argued that Mrs. Szczupak distributes her products in packagings similar to ZIMBO’s. This similarity is reflected in the choice of colors, arrangement of individual elements of the package, with the dominant red color in the upper part in the white frame surrounding the window showing the product, with figurative floral patterns in green. ZIMBO argued that such packaging did not create a different overall impression on the informed user, and the identity of the goods and the similarity of Viando and ZIMBO trade marks create the likelihood of confusion as to the origin of the products offered by the parties. ZIMBO provided some evidence on consumer confusion. Mrs. Szczupak requested dismissal of the action and reimbursement of costs of legal representation. She alleged lack of standing, and explained that on 31 VII 2010, she sold the entire enterprise to the company Zakłady Mięsne “VIANDO”, all together with the right of protection for a trade mark Viando R-188683 that was granted with priority of 8 April 2004.

R-188683

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 4 April 2011 case file XXII GWwp 19/10 dismissed the complaint. The Court agreed with Mrs. Szczupak and ruled that the word-figurative trade marks are not identical or even similar in the visual, phonetic and conceptual aspects. Moreover, VIANDO’s packaging and CDRs nos. 000729694-0008 and 000729694-0009 fundamentally differ in number of elements, and they produce on the informed user (consumer of meats, employee of shops with meat products) different overall impression.

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.

Industrial design and trade mark law, case II GSK 481/09

July 14th, 2010, Tomasz Rychlicki

This is the continuation of the history described in “Industrial design and trade mark law, case VI SA/Wa 710/08“. Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J. decided to file a cassation complaint to the Supreme Administrative Court, hoping that the Court would clarify the interpretation of Article 117(2) of the Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

The Supreme Administrative Court in its judgment of 15 May 2010 case file II GSK 481/09 ruled that there is no issue of wrong implementation of the provisions of Article 11 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The Court noted that even the preamble of Design Directive explicitly states that Member States should remain free to fix the procedural provisions concerning registration, renewal and invalidation of design rights and provisions concerning the effects of such invalidity. Therefore, there is no need to refer a question to the Court of Justice of EU for a preliminary ruling. The SAC did not agree with arguments that the issue of finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall be decided by civil court and not by the PPO. The question of similarity of the questioned design and 3D trade mark should also be decided by the PPO. The Court did not follow arguments presented by the General Court in its judgment of 12 May 2010 in case T-148/08, Beifa Group Co. Ltd v Office for Harmonisation in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG. However, the SAC did agree with the Polish company that facts of the case were not handled properly by the Voivodeship Administrative Court. Therefore, the SAC annulled the questioned judgments and returned the case to the VAC for reconsideration and ordered the Polish Patent Office to pay the Polish company a reimbursement of costs of the cassation compliant.

The Court noted also that if the trade mark that was used as a basis of the application for invalidation of the industrial design, is a sign that was registered with an earlier priority in Germany, which is not identical with the Community design that was questioned in the aforementioned application, is similar to this design, the law of the Member State (in this case § 14 section 2 pt 2 of Markengesetz, similar to Article 296 of the IPL) affords Unilever, the proprietor of the mentioned trade mark, the right to prohibit use of this sign in a later design only if because of the similarity of the design to the said trade mark and identical or similarity of the goods or services, which relate to the trade mark and the later design, there is a likelihood of confusion.

Telecommunications law, case C‑99/09

July 2nd, 2010, Tomasz Rychlicki

The Court of Justice of the European Union in its judgment of 1 July 2010, Case C‑99/09, Polska Telefonia Cyfrowa sp. z o.o. v. Prezes Urzędu Komunikacji Elektronicznej, ruled that article 30(2) of Directive 2002/22/EC of the European Parliament and of the Council of 7 March 2002 on universal service and users’ rights relating to electronic communications networks and services (Universal Service Directive) is to be interpreted as obliging the national regulatory authority to take account of the costs incurred by mobile telephone network operators in implementing the number portability service when it assesses whether the direct charge to subscribers for the use of that service is a disincentive. However, it retains the power to fix the maximum amount of that charge levied by operators at a level below the costs incurred by them, when a charge calculated only on the basis of those costs is liable to dissuade users from making use of the portability facility.

Polish case law on industrial designs

January 12th, 2010, Tomasz Rychlicki

Below, you will find a list of judgments on industrial designs that were decided upon in administrative proceedings. Finding cases that are decided upon in civil proceedings is more problematic becasue they are rarely available to general public. You can find a more detailed discussion on each judgment under the link provided with the case file. All judgments are given in chronological order.

– The judgment of the Voivodeship Administrative Court of 16 February 2012 case file VI SA/Wa 1744/11.

– The judgment of the Voivodeship Administrative Court in Warsaw of 4 October 2010 case file VI SA/Wa 736/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 3 October 2010 case file VI SA/Wa 1339/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 20 September 2010 case file VI SA/Wa 852/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 13 September 2010 case file VI SA/Wa 922/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 13 September 2010 case file VI SA/Wa 921/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 23 June 2010 case file VI SA/Wa 505/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 16 June 2010, case file VI SA/Wa 134/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 27 May 2010, case file VI SA/Wa 506/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 19 May 2010 case file VI SA/Wa 2026/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 12 May 2010 case file VI SA/Wa 599/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 12 May 2010 case file VI SA/Wa 598/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 11 May 2010 case file VI SA/Wa 504/10.

– The judgment of the Voivodeship Administrative Court in Warsaw of 26 February 2010, case file VI SA/Wa 34/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 23 February 2010, case file VI SA/Wa 1038/09.

– The judgment of the Supreme Administrative Court of 20 January 2010, case file II GSK 323/09.

– The judgment of the Supreme Administrative Court of 16 December 2009, case file II GSK 238/09. This judgment was issued on the basis of the cassation complaint brought from the judgment of the Voivodeship Administrative Court in Warsaw, of 11 December 2008, case file VI SA/Wa 1827/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 15 December 2009, case file VIII SA/Wa 332/09. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

– The judgment of the Voivodeship Administrative Court in Warsaw of 14 December 2009 case file VI SA/Wa 1764/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 14 December 2009 case file VI SA/Wa 1727/09.

– The decision of the Supreme Administrative Court of 9 December 2009, case file II GSK 772/09.

– The Judgment of the Voivodeship Administrative Court in Warsaw of 4 December 2009 case file VI SA/Wa 1706/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 19 November 2009, case file VI SA/Wa 703/09. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

– The judgment of the Voivodeship Administrative Court in Warsaw of 13 November 2009, case file VI SA/Wa 1376/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 9 October 2009, case file VI SA/Wa 189/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 29 September 2009, case file VI SA/Wa 211/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 19 August 2009, case file VI SA/Wa 664/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 10 June 2009, case file VI SA/Wa 498/09

– The judgment of the Voivodeship Administrative Court in Warsaw of 21 July 2009, case file VI SA/Wa 518/09.

– The judgment of the Supreme Administrative Court of 17 June 2009, case file II GSK 1034/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 8 June 2009, case file VI SA/Wa 536/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 2 June 2009, case file VI SA/Wa 502/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 4 April 2009, case file VI SA/Wa 109/09.

– The judgment of the Voivodeship Administrative Court in Warsaw of 4 February 2009, case file VIII SA/Wa 332/08.

– The judgment of the Supreme Administrative Court of 27 January 2009, case file II GSK 612/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 11 December 2008, case file VI SA/Wa 1827/08. The cassation compliant bought before the Supreme Administrative Court was rejected in a decision of 16 December 2009, case file II GSK 238/09.

– The judgment of the Voivodeship Administrative Court of 21 November 2008, case file VI SA/Wa 710/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 4 November 2008, case file VI SA/Wa 1053/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 11 August 2008, case file VI SA/Wa 1088/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 10 June 2008, case file VI SA/Wa 543/08.

– The judgment of the Voivodeship Administrative Court in Warsaw of 4 November 2008, case file VI SA/Wa 1054/08.

– The judgment of the Supreme Court – Civil Chamber of 23 October 2007, case file II CKS 302/07.

– The judgement of the Voivodeship Administrative Court in Warsaw of 11 October 2007, case file VI SA/Wa 1215/07.

– – The judgment of the Supreme Administrative Court of 20 March 2007, case file II GSK 277/06, published in the electronic database LEX, under the no 321283.

– The judgment of the Supreme Administrative Court of 18 January 2007 case file II GSK 206/06

See also “Polish regulations on industrial designs“.

Industrial design, case VI SA/Wa 498/09

June 18th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 10 June 2009, case file VI SA/Wa 498/09, ruled that the document based on the industrial property rights is assigned to more serious legal consequences than a document issued on a different legal basis. It was the result of the erga omnes protection of intellectual property rights. The right in registration does not cover the appearance or characteristics of a design, which arise solely from a technical function, or those which are necessary to connect such a product. Nevertheless, in Court’s opinion that was based on the interpreation of the text of Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs, there is no reason to exclude the individual features (also these which are conditioned by technical functions they perform, so being excluded from protection) to assess the overall impression.

This case concerned the industrial design “Listwa osłonowa” (in English: lath curly), Rp-9605.

Wzór Przemysłowy 9605

See also my post entitled “Polish case law on industrial designs“.