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Trade mark law, case VI SA/Wa 1510/08

November 26th, 2008, Tomasz Rychlicki

BWS Poland sp. z o.o. applied for trade mark registration for the word-figurative sign “SUNLINE TOKAJI FURMINT” Z-246957 on 26 February 2002, in class 33 for alcoholic beverages. The Polish company BARTEX-Bartol reported observations as to the existence of grounds that may cause a right of protection to be denied. BARTEX-Bartol claimed that Polish Patent Office (PPO) would undermine the protection of third-party rights, namely the Hungarian company Tokaji Kereskedőház Rt., because the sign that BWS applied for contained the name of the Hungarian Company. BWS explained that it imported wine from another Hungarian company and that the label “SUNLINE TOKAJI FURMINT” would not lead customers in confusion as regards the orgin of goods.

However, the Polish Patent Office issued a decision denying protection rights for a trade mark that BWS has applied for. The PPO held that granting protection rights would be against provisions included in articles 131(1)(iii) and 131(3) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof.

(…)

Article 131(3) of the IPL
In the case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

BWS appealed to the Voivodeiship Administrative Court (VAC) in Warsaw. During the hearings, the company claimed that it imported the wine from the vineyard of Vagra Pincészet Kft, which sells Tokaji Furmit Sulina wine, and that the Hungarian company agreed the sign could be used by its Polish business partner. BWS argued that Tokaj and Furmit means the region and strain of grapes. BWS presented an opinion that it applied for trade mark protection for a specific word-figurative sign, and that it had no intention to prohibit anyone to use these names.

The Polish Patent Office emphasized that TOKAJI is geographical indication of this kind of alcoholic beverage, which is used by manufacturers in Hungary as had been already agreed with the European Commission (and procedures for the arrangements are discussed with Slovakia) – this is why the PPO is obliged to take such term into account as a GI. The PPO also pointed out that the company may distribute the wine under SUNLINE name and to use it toghether with TOKAJI word, but it is not allowed to gain exclusive rights in TOKAJI and FURMIT signs. The VAC in judgment of 25 September 2008, case file VI SA/Wa 1510/08, has fully agreed with PPO’s decision and dismissed BWS appeal. The judgment is not final.

Telecommunications law, case C-227/07

November 18th, 2008, Tomasz Rychlicki

The Court of Justice of European Communities in its judgment in case C‑227/07, Commission of the European Communities v. Republic of Poland, held that, by failing to transpose correctly Article 4(1) of Directive 2002/19/EC of the European Parliament and of the Council of 7 March 2002 on access to, and interconnection of, electronic communications networks and associated facilities (Access Directive), the Republic of Poland has failed to fulfil its obligations under that Directive.

Categories: Directive 2002/19/EC | EU law | Polish law | telecommunication law.

E-commerce law, case C-298/07

October 20th, 2008, Tomasz Rychlicki

The Court of Justice of European Communities in its judgment of 16 October 2008 in case C-298/07, deutsche internet versicherung, held that Article 5(1)(c) 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 a service provider is required to supply to recipients of the service, before the conclusion of a contract with them, in addition to its electronic mail address, other information which allows the service provider to be contacted rapidly and communicated with in a direct and effective manner. That information does not necessarily have to be a telephone number. That information may be in the form of an electronic enquiry template through which the recipients of the service can contact the service provider via the internet, to whom the service provider replies by electronic mail except in situations where a recipient of the service, who, after contacting the service provider electronically, finds himself without access to the electronic network, requests the latter to provide access to another, non-electronic, means of communication.

Trade mark law, case II GSK 92/05

April 30th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 29 June 2005, case file II GSK 92/05 ruled that the interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid.

R-116211

This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.

Trade mark law, case II GSK 305/06

March 28th, 2008, Tomasz Rychlicki

The Polish Patent Office in its decision of 15 March 2005 case Sp. 24/01 invalidated the trade mark R-116334 that was registered for Agencja Wydawnicza TECHNOPOL Spółka z o.o. for goods in Class 16 such as magazines and books with crosswords and charades, brochures, exercise books. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 May 2006 case file VI SA/Wa 1684/05. TECHNOPOL decided to file a cassation complaint.

R-116334

The Supreme Administrative Court in its judgment of 29 March 2007 case file II GSK 305/06 held that even if the provisions of Article 4(2) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, allow for the protection of trade mark consisting of the compositions or combinations of colors, it does not mean that each of such compositions is capable of being registered.

4(1) For the purposes of this Law, a trademark shall be any sign capable of distinguishing the goods or services of a given enterprise from similar goods or services of another enterprise.
(2) The following, in particular, are considered as trademarks: words, designs, ornaments, combinations of colors, plastic forms, melodies or other acoustic signals, and a combination of such elements.

The Court ruled that this sign lacks abstract distinctiveness, because the average recipient is not able to remember both the composition of colors and each color of the edges of sheets i.e. a color scheme, or colored side, due to the commonly used by publishers of books and journals practice of coloring sheets of the books and other periodicals. The lack of abstract distinctiveness excluded the possibility to examine its concrete distinctiveness. The Court noted also that regulations protecting industrial property should be applied by the Polish Patent Office and courts in such a way that their interpretation is consistent with the goals and content of the Directive 89/104, and the jurisdiction of the Court of Justice. This follows from the principle of pro-European interpretation of national law. Its essence is the interpretation of national law, which will achieve an outcome that is consistent with the content or purpose of the provision of Community law. National courts must interpret national law in conformity with Community law “as far as possible”. It means that pro-European interpretation of national law is fully admissible if national legislation does not specify clearly an issue, or if the provisions of Community law are more detailed than these afforded in domestic law.

Copyright law, case VI ACa 1259/06

March 17th, 2008, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 17 October 2007 case file VI ACa 1259/06 held that the Polish Act on Protection of Competition and Consumers – APCC – (in Polish: Ustawa o ochronie konkurencji i konsumentów) 16 February 2007 published in Journal of Laws (Dziennik Ustaw) No. 50, item 331, with subsequent amendments, define an entrepreneur very broadly. According to the Court, this definition will even cover such entities whose activity is not associated with a typical business. Therefore, there was no reasons to deny such a status to the Polish Association od Writers and Composers (Stowarzyszenie Autorów – ZAiKS), a collecting society. This argument was confirmed by the Supreme Court in its judgment of 7 April 2004 case file III SK 22/04, published in OSNP 2005/3/46. The Court had no doubt that ZAiKS is active in providing professional services, in a structured and continuous manner, on its behalf, in the field of collective management of assigned copyrights, and thus it participates in business transactions. In applying the provisions of the APCC, “commercial purpose” as the last of the important parameters of economic activity means to obtain certain benefits for the operator of such activities. The use of such obtained benefits is, however, indifferent.

The European Court of Justice in its judgment of 27 March 1974 Case C-127/73 BRT v. SABAM published in ECR 1974, p. 313, ruled that the association of authors can be deemed as an entrepreneur, because an association whose object is to exploit and manage copyrights for gain “pursues a business activity consisting in the provision of services in respect of composers, authors, and publishers”.

It was undisputed that ZAiKS grants licenses for fee, and it also collects appropriate fees for the management of assigned rights. Therefore it has a measurable financial benefits from its activities. The fact that these benefits are fully allocated to the statutory objectives does not mean, in light of the abovementioned comments that ZAiKS work has nothing to do with the commercial objectives. The Court ruled that the Society of Authors ZAiKS being a non-profit organizations, is also a legal person providing services to the public, because it is organizing public access to creative activity, and licenses the use of this creativity. Therefore, ZAiKS is an entrepreneur as defined in the APCC.

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

C-275/06, Promusicae

January 29th, 2008, Tomasz Rychlicki

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 information society, Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, and Directive 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) do not require the Member States to lay down, in a situation such as that in the main proceedings, an obligation to communicate personal data in order to ensure effective protection of copyright in the context of civil proceedings. However, Community law requires that, when transposing those directives, the Member States take care to rely on an interpretation of them which allows a fair balance to be struck between the various fundamental rights protected by the Community legal order. Further, when implementing the measures transposing those directives, the authorities and courts of the Member States must not only interpret their national law in a manner consistent with those directives but also make sure that they do not rely on an interpretation of them which would be in conflict with those fundamental rights or with the other general principles of Community law, such as the principle of proportionality.

Details about this case in the judgment C-275/06, Promusicae.

Trade mark law, case II GSK 279/07

January 8th, 2008, Tomasz Rychlicki

The Company Plus Warenhandelsgesellschaft mbH tried to register the word trade mark AZOR in Class 3 in Poland, but the same mark was already registered and had been in force since 1995. Its owner – ORO Produkte Marketing International GmbH – reached an agreement with Plus regarding its registration. However, the Polish Patent Office rejected Plus’ trade mark application. The Voivodeship Administrative Court in Warsaw in its jugment of 14 March 2007 case file VI SA/Wa 2314/06 dismissed a complaint brought by Plus. The Court uphold the PPO’s decision and ruled that the Polish Act on Industrial Property Law provides no exceptions for registration of a mark that is identical to an earlier trade mark, and the goods or services for which the trade mark is applied for are identical.

The Supreme Administrative Court in its judgment of 20 December 2007 case file II GSK 279/07, has confirmed the lower Court’s judgment and ruled that a letter of consent cannot be used as ground to register such trade mark since the Republic of Poland did not implement Article 4(5) of the First Council Directive 89/104. This article is one of the provisions of Community law which leaves the freedom of Member States regarding the implementation of their national law. It has no direct effect for individuals. This provision has been implemented into the Polish Industrial Property Law, only with regard to trade marks for which protection has lapsed.

Polish regulations on unfair commercial practices

December 30th, 2007, Tomasz Rychlicki

The Act of 23 August 2007 on Combating Unfair Commercial Practices – CUCP – (in Polish: ustawa o przeciwdziałaniu nieuczciwym praktykom rynkowym) published in Journal of Laws (Dziennik Ustaw) No. 171, item 1206, came into force on 21 December 2007. It implemented the Directive 2005/29 of the European Parliament and of the Council of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450, Directives 97/7, 98/27 and 2002/65 of the European Parliament and of the Council and Regulation 2006/2004 of the European Parliament and of the Council (“Unfair Commercial Practices Directive”).

Among others things, it defines in article 5(1) misleading commercial practices as actions connected with introduction of products into the market which may lead to mistake as regards to products, its packaging, trade marks, trade names or other signs capable of identifying entrepreneurs, particularly comparative advertising.

The Act also deals with crypto-advertising which is defined as using commentary content in mass-media sources to promote a product where the business/entrepreneur paid for such action but it is not clearly indicated in the content, images or sounds and it is not easily identified by the consumer.

The Act also covers aggressive commercial practices. It defines such actions as (i) onerous processes which are not connected with consumers’ actions or (ii) desisting from acting, i.e. inducing the purchase of products via phone, fax, electronic mail or other means used to communicate in distance.

Trade mark law, case II GSK 207/07

December 4th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 21 November 2007, case file II GSK 207/07, held that even if the reputed mark is protected against the use on any goods, if this would bring a user an unfair advantage or it would be detrimental to the distinctive character or the reputation of the trade mark, it does not mean that the both signs at issue shouldn’t be a subject to examination to determine their similarity or lack of it. The case concerned a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection to “dodoni A MOŻE MY JESTEŚMY DLA CIEBIE LEPSI COLA” trade mark R-149636, that was registered for Pepsi Corp. The SAC also ruled that the findings that both trade marks are not similar also implies that there is a lack of association between these trade marks by potential recipients.

Patent attorneys, case C-131/01

February 25th, 2006, Tomasz Rychlicki

Judgment of the Court (Sixth Chamber) of 13 February 2003, case C-131/01, Commission of the European Communities v. Italian Republic.

1. Declares that by retaining rules requiring patent agents established in other Member States to be enrolled on the Italian register of patent agents and to have a residence or place of business in Italy, in order to provide services before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under Articles 49 EC to 55 EC.

Categories: case law | EU law | Judgments of Court of Justice of the EC | Polish patent attorneys.

Patent attorneys, case C-478/01

February 21st, 2006, Tomasz Rychlicki

Judgment of the Court (Fourth Chamber) of 6 March 2003, case C-478/01, Commission of the European Communities v. Grand Duchy of Luxembourg.

1. Declares that, having regard to the requirement that patent agents, when supplying services, should elect domicile with an approved agent, and having regard to the fact that the Luxembourg Government has not provided information concerning the precise conditions for the application of Article 85(2) of the Law of 20 July 1992 amending the rules on patents and Articles 19 and 20 of the Law of 28 December 1998 governing access to occupations in craft trades, business and industry, and to certain liberal professions, the Grand Duchy of Luxembourg has failed to fulfil its obligations under Article 49 EC and Article 10 EC.

Patent attorneys, case C-76/90

February 13th, 2006, Tomasz Rychlicki

Judgment of the Court (Sixth Chamber) of 25 July 1991 in Case C-76/90, Manfred Säger v Dennemeyer & Co. Ltd.

Summary

1. Article 59 of the Treaty requires not only the elimination of all discrimination against a person providing services on the grounds of his nationality, but also the abolition of any restriction, even if it applies without distinction to national providers of services and to those of other Member States, when it is liable to prohibit or otherwise impede the activities of a provider of services established in another Member State where he lawfully provides similar services. In particular, a Member State may not make the provision of services in its territory subject to compliance with all the conditions required for establishment and thereby deprive of all practical effectiveness the provisions of the Treaty whose object is, precisely, to guarantee the freedom to provide services. Such a restriction is all the less permissible where, unlike the situation governed by the third paragraph of Article 60 of the Treaty, the service is supplied without its being necessary for the person providing it to visit the territory of the Member State where it is provided.

2. Having regard to the particular characteristics of the provisions of services in certain sectors of activity, specific requirements imposed on the provider, which result from the application of rules governing those types of activities, cannot be regarded as incompatible with the Treaty. However, as a fundamental principle of the Treaty, the freedom to provide services may be limited only by provisions which are justified by imperative reasons relating to the public interest and which apply to all persons or undertakings pursuing an activity in the State of destination, in so far as that interest is not protected by the rules to which the person providing the services is subject in the Member State in which he is established. In particular, those requirements must be objectively necessary in order to ensure compliance with professional rules and to guarantee the protection of the recipient of services and they must not exceed what is necessary to attain those objectives.

3. Article 59 of the EEC Treaty precludes provisions of a Member State which prohibit a company established in another Member State from providing patent-owners in the territory of the first State with a service for monitoring those patents and renewing them by payment of the requisite fees, on the ground that, by virtue of those provisions, such activities are reserved to persons holding a special professional qualification, such as a qualification as patent agent.

Categories: case law | Judgments of Court of Justice of the EC | Polish Chamber of Patent Attorneys | Polish patent attorneys | Treaty on European Union.

Trade mark law, VI SA/Wa 1482/04

August 11th, 2005, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 August 2005, case file VI SA/Wa 1482/04 held that a single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.

Z-206238

This judgment concerned separate Color RED Pantone 485 C applied for by Firma Cukiernicza SOLIDARNOŚĆ – rok założenia 1952 Spółka z o. o. from Lublin for goods in class 30 such as confectionery, chocolate confectionery, sweets.

Trade mark law, case II SA 3446/01

August 10th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 14 December 2001, case file II SA 3446/01 ruled that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

The udgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later.

Trade mark law, case GSK 864/04

April 11th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 23 November 2004 case file GSK 864/04 held that according to Article 4(1) and Article 7(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985 Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, an undefined trademark, i.e. a trade mark which is not represented in one form, does not possess any sufficient ability to distinguish goods. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks.

IR-667827

The trade mark IR-667827 owned by FERRERO S.p.A. is represented in the double color composition (the lower part is in white and the top part is in orange). The Court ruled that there was no justification for the argument that the composition or combination of colors, that could serve as a trade mark, has to meet other and additional requirements, such as novelty and originality of form or compositions of colors, i.e. it has to be a manifestation of creativity. However, an undefined sign, that does not exist in one and the same form, is not able to create and capture the consumer associations as to the origin of goods from one and the same entrepreneur. So, such a sign is not sufficiently distinctive. A simple composition of two or more colors, without shape or contour, or the combination of these colors in every possible configuration, does not meet the accuracy and uniformity that is required to perform the function of the trade mark in order to be registered. Such inaccurate representation of the sign which is the combination of colors presented in an abstract (no contours) may lead to many different variations, which in turn, will not allow the consumer to perceive and remember this sign, and thus re-purchase the goods originating from the same company.