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Archive for: invalidation of a right in registration

Industrial design law, case VI SA/Wa 1744/11

July 13th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 16 February 2012 case file VI SA/Wa 1744/11 ruled that the term “public order” and “morality”, as defined in the provisions of Article 106(1) of the Polish 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, are not unequivocal.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

The Court ruled that it is assumed that the inadmissibility of the design that is contrary to “morality” is primarily aimed at preventing the circulation of designs that violate social moral order. From this point of view, a design (product incorporating the design) and its circulation on the market should be examined with regard to the collision with generally accepted moral principles. While “public order” is defined by the basic social and legal principles, in particular legal principles arising from the Constitution.

Rp-10113

This case concerned the industrial design “Zeszyt edukacyjny” (in English: educational exercise book) Rp-10113. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case II GSK 206/06

April 25th, 2011, Tomasz Rychlicki

On 16 July 1996, the Polish Patent Office refused to grant the right of protection for the figurative trade mark DVORAK IR-639197. On 27 August 2003, the PPO upheld its decision and ruled that the sign in question is similar to two figurative trade marks R-79913 and R-80064 that were registered with an earlier priority for POLMOS S.A., and it violates the rights of third party, by using elements that are incorporated in earlier registered industrial designs Rp-1 and Rp-2 that are also owned by POLMOS.

IR-0639197

The Supreme Administrative Court in its judgment of 18 January 2007 case file II GSK 206/06 held that the registration of a trade mark whose description largely overlaps with the description of the industrial design that was previously registered to another company, without its permission, is a violation of the rights from the registration of industrial designs and meet the grounds for refusal of registration of the mark because it infringes the personal or economic rights of third parties. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 736/10

January 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 736/10 ruled that the protection of unregistered Community design that results from the Community regulations does not allow for its extension through the registration of that design. Moreover, the protection of an unregistered Community design starts from the date of its first public disclosure.

Rp-12166

This judgment concerned the industrial design “Urządzenie treningowo-sportowe” (in English: Sports-based training device), Rp-12166. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 922/10

January 19th, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 September 2010 case file VI SA/Wa 922/10 ruled on three important factors of the design law. The VAC held that the “overall impression” refers to the design as a whole, and not to its individual characteristics. It is therefore a general effect, the general feeling that is caused by compared designs on an informed user – whether it is a different impression, or the same. The informed user is a person well informed and having a good understanding and knowledge in this field, who is using certain items or groups of items, with knowledge about this products which is more practical or theoretical than the average user and having more abilities to perceive the characteristics of the object then the average user, and being infromed in the state of industrial design in the given field and being capable of distinguishing the available designs. The scope of creative freedom is determined by the functional characteristics of the object and the earlier state of designs. The oriented user must have a sufficient knowledge to assess the scope of creative freedom and be able to see even relatively small differences, important for the designs of low creative freedom.

Rp-10794

This judgment concerned the industrial design “Uchwyt meblowy” (in English: furniture handle), Rp-10794. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1339/10

December 6th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2010 case file VI SA/Wa 1339/10 held that the “identicality” as understood in the definition of a novelty of an industrial design is not consistent with the meaning of the word “identical”, which means that the compared designs should be the same. Identical industrial design also means a design that differs only in unimportant differences. Thus it becomes necessary to identify the different elements and determine whether the observed differences are significant because only differences in the essential features will allow for the recognition of the novelty. In the three-dimensional designs, with the most specific form of the product and such a design was the issue of this case, the change to have an essential character may relate to each element of which is the essence of a particular three-dimensional form.

Rp-6063

This judgment concerned the industrial design “Chleb” (in English: bread), Rp-6063. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 921/10

December 6th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 September 2010 case file VI SA/Wa 921/10 ruled on three important factors of the design law. The VAC held that the “overall impression” refers to the design as a whole, and not to its individual characteristics. It is therefore a general effect, the general feeling that is caused by compared designs on an informed user – whether it is a different impression, or the same. The informed user is a person well informed and having a good understanding and knowledge in this field, who is using certain items or groups of items, with knowledge about this products which is more practical or theoretical than the average user and having more abilities to perceive the characteristics of the object then the average user, and being infromed in the state of industrial design in the given field and being capable of distinguishing the available designs. The scope of creative freedom is determined by the functional characteristics of the object and the earlier state of designs. The oriented user must have a sufficient knowledge to assess the scope of creative freedom and be able to see even relatively small differences, important for the designs of low creative freedom.

Rp-10801

This judgment concerned the industrial design “Uchwyt meblowy” (in English: furniture handle), Rp-10801. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 852/10

November 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 September 2010 case file VI SA/Wa 852/10 held that an industrial design has individual character if the overall impression it produces on the informed user differs from the overall impression caused by the design that was publicly available before the date according to which the priority is claimed. The scope of creative freedom in developing the design should be taken into account in assessing individual character of the industrial design. The VAC agreed with the Polish Patent Office that the opposed designs are determined by the function to which they were intended. The condition for invalidation of a design is not an infringement of an exclusive right but the statement that the use of industrial design violates personal or property rights of third parties, and the applicant has based its opposition on such arguments. The assessment whether the condition occurs in the light of that provision is therefore within the exclusive jurisdiction of the Polish Patent Office that should decide such case in the litigation procedure.

Rp-13123

This judgment concerned the industrial design “Ubranko ochronne dla zwierząt” (in English: animal protective gown), Rp-13123. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 505/10

November 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 23 June 2010 case file VI SA/Wa 505/10 held that as the informed user should be considered a person who orders from the manufacturer a set of advertising pads to promote his or her own business and to distribute such pads to places of their use. This is undoubtedly a model of an informed user, and so a hypothetical user who physically does non-exist, who uses the product continuously, so it is not the average consumer neither professional. From his or her point of view, the Polish Patent Office shall assess the overall impression on users of a given design and opposed designs. Nevertheless, it is the informed user who compares industrial designs. The scope of creative freedom in developing the design, is determined by the functional characteristics of the object and the earlier designs.

Rp-11754

This judgment concerned the industrial design “Podstawka reklamowa świecąca Star light” (in English: flashing advertising pad Star light), Rp-11754. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1764/09

September 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2009 case file VI SA/Wa 1764/09 held that the examination of all of the evidence should include all evidence taken in the proceedings, as well as taking into account all the circumstances surrounding an individual evidence and relevant to assess their strength and reliability. The PPO while considering the evidence, cannot skip any of the proof, it may, however, in accordance with the principle of the free assessment of evidences included in Article 80 of the APC, refuse the reliability of an evidence, but then it is obliged to justify all the reasons of such decision.

Article 80
The public administration body shall assess whether a given circumstance has been proven on the basis of the entirety of the evidential material.

Rp-3506

This case concerned the industrial design “Noga fotela” (in English: chair leg), Rp-3506. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 2026/09

September 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 May 2010 case file VI SA/Wa 2026/09 held that for the purposes of assessing the probative value of the document, the reliability and accuracy of the information contained therein should be first examined. In this regard, in particular, the PPO should take into account the origin of the document, the circumstances of its preparation, its recipient, and then ask a question whether, given its content, it seems sensible and reliable.

Rp-8329

This judgment concerned the industrial design “Panel perforowany” (in English: perforated panel), Rp-8329. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design case, VI SA/Wa 1727/09

September 20th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Industrial design law, case VI SA/Wa 1215/07“. The Polish Patent Office invalidated the right in registration based on the guidelines outlined in the mentioned judgements. The Polish company Gerlach S.A. filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2009 case file VI SA/Wa 1727/09 ruled that the PPO correctly examined all evidences and dissmissed the case. The Court held that in accordance with the views of Polish legal doctrine and the established case law, the informed user is one who knows the scope of creative freedom and the state of design.

Rp-6048

This case concerned the industrial design “Rękojeść sztućców” (in English: handle for cutlery), Rp-6048. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1706/09

September 15th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 December 2009 case file VI SA/Wa 1706/09 held that there is no doubt that only the specialist is qualified to comment on the general impression that questioned designs produced on an informed user, as this specialist is also deemed as the informed user within the meaning of Article 104 of the Polish 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.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

The Court also noted that in the assessment of evidence and proper application of the rule of law provided in Article 104 the IPL, the concept of “informed user”, “general impression” and “degree of creative freedom in developing the design”, which have not beed defined by the legislature, had to explained by the PPO and the Court. In the opinion of the Court, the essential arguments of the Supreme Court’s judgment of 23 October 2007 case file II CSK 302/07 could be applied to this case case. See “Industrial design case, II CSK 302/07“.

Wzór Przemysłowy Rp-11355

This judgment concerned the industrial design “Kanapa tapicerowana rozkładana” (in English: upholstered sofa bed) Rp-11355. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 504/10

August 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 504/10 held that the scope of creative freedom is determined by the functional features of the object and the previous designs. In case of designs that must meet particular functional requirements, the scope of creative freedom is smaller than in the case of designs, which have more of the aesthetic features. Where the scope of creative freedom is broader, the differences between designs should be more noticeable than in the narrow scope of that freedom. The informed user must have information on the object, that is sufficient to assess the scope for creative freedom and be able to see even relatively small differences, that are important in the case of designs with little creative freedom.

Wzór Przemysłowy Rp-11748

This judgment concerned the industrial design “Podstawka reklamowa Star base” (in English: advertising pad Star base) Rp-11748. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 598/10

August 2nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 12 May 2010 case file VI SA/Wa 598/10 held that the court’s review of a decision issued by the PPO does not include a requirement to make additional findings for a case. The factual justification of the decision should contain the facts that the PPO regards as proven, the evidence relied upon and the reasons for which other evidence has been treated as not authentic and without probative force. The legal justification should contain the legal authority for the decision with reference to the relevant law. Only justification prepared in accordance with these requirements allows for a full review of the contested decision.

Wzór Przemysłowy Rp-12224

This judgment concerned the industrial design “Ramię ozdobne do opraw oświetleniowych” (in English: Decorative Arm for luminaires) Rp-12224. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

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.

Industrial design law, case VI SA/Wa 33/10

June 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 7 May 2010 case file VI SA/Wa 33/10 ruled that the illustration of the industrial design shall consist in particular of drawings, photographs or samples of a textile fabric. The description describing the illustration of the industrial design should present the design in a manner clear and detailed enough to enable the design to be reproduced on the basis of the illustration in any form indicated in the application. In particular, the description shall contain the definition of the industrial design and indicate what it is intended for, determine the figures of the illustration or indicate numbers of samples, include a numbered list of the forms of the industrial design where the application contains such forms, and finally designate those features of appearance, which distinguish the filed design from other known designs and enable its identification. Therefore, that abstract and claims are not required in the application for industrial design. However, some applicants continues to file design applications with protection claims included, which is the remnant and a habit, pursuant to old provisions on ornamental designs.

In the assessment of the design application, the Polish Patent Office should, as indicated by the Voivodeship Administrative Court in its judgment of 11 August 2009 case file VI SA/Wa 1088/08, and according to the provisions of Article 153 of the PBAC, include analysis of the documentation referred to in Article 107(2) of the IPL.

Article 107
1. The right in registration of an industrial design shall not subsist in features of a product:
(i) which are solely dictated by its technical function,
(ii) which must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to, or to interact with, another product.

2. The provision of paragraph (1) shall be without prejudice to the registration of an industrial design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

The Court held that the abovementioned practice exercised by applicants and the PPO with regard to accepting applications with protection claims and the registration process, does not exempt the PPO from the duty to examine industrial design applications according to Article 107(2) of the IPL.

Rp-1077

This judgment concerned the industrial design “Wiadro” (in English: Bucket) Rp-1077. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 506/10

May 27th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 27 may 2010 case file VI SA/Wa 506/10 held that due to the fact that the Polish Patent Office did not timely corrected the deficiency of the reasons of its decision and it did not decided and ruled on this issue in its response, although irregularities were indicated in the complaint, the Court had to decide at this stage of proceedings that the contested decision infringes the rules of administrative proceedings in the aspect that could significantly affect the outcome of the case.

Wzór Przemysłowy Rp-11779

This judgment concerned the industrial design “Zestaw podstawek reklamowych Star Fala” (in English: Set of advertising coasters Star Fala) Rp-11779. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 34/09

April 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 26 February 2010 case file VI SA/Wa 34/09 ruled that there is no doubt that the industrial design must be assessed in such a form in which it will be possible to visually acquaint with it and with all the features of a product. The Court ruled that the use of folders for documents is also based on their opening and closing in order to place the relevant documents inside, therefore, the discussed “inside” features must also be examined.

Wzór Przemysłowy Rp-4223

This judgment concerned the industrial design “Teczka na dokumenty” (in English: Folder for documents) Rp-4223. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case II GSK 323/09

February 23rd, 2010, Tomasz Rychlicki

A Polish company filed a notice of opposition to a final decision of the Polish Patent Office (PPO) on the grant of a right in registration for the industrial design. The opposition has been filed under the provisions of Article 102(1), Article 103(1), Article 104(1) and (2) and Article 106(1) of the Polish 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.

Article 102
1. Any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design.

Article 103
1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

The opposing party claimed the lack of novelty becuse the disputed design was disclosed inter alia during the exchange of correspondence with the owner and the lack of the individual character of a product. The PPO rejected the opposition and ruled that the industrial design is new. While referring to the cooperation between the opposing company and the owner, the PPO noted that the disclosure of a design was only approved between both parties. The PPO stated that the industrial design in question was not disclosed publicly. In the proceedings before the PPO and the courts no other evidence with regard to public disclosure of the design was submitted.

The Voivodeship Administrative Court in its judgment of 19 November 2008 case file VI SA/Wa 1767/08 dismissed the complaint against the decision of the PPO. The Supreme Administrative Court in a judgment of 20 January 2010 case file II GSK 323/09 dismissed the cassation complaint. The SAC held that any correspondence, not only commercial, bears the characteristics of confidentiality due to the fact that by its nature it is addressed to the designated entity, and refers the specific content associated with a certain confidence on the part of the sender. Its publication requires the consent of both parties. Therefore, it coould not be argued that the disclosure of a new design could take place in the correspondence between the two businesses working together. The cassation complaint also presented the argument of exceeding the principle of formality. The Court ruled it unfounded based on provisions of Articles 255 and 256 of the IPL.

Article 255¹
1. Litigation proceedings in the cases referred to in Article 255(1)(i)-(viii) shall be initiated at a written request.
2. A request for initiation of a proceeding shall be subject to payment of a fee.
3. A request shall contain:
(i) identification of the parties and their addresses
(ii) brief presentation of the case
(iii) clear definition of the decision sought
(iv) reference to the legal ground
(v) indication of evidence
(vi) signature of the requesting party and a date
4. The request shall be accompanied by:
(i) a power of attorney, where the request is submitted by the representative
(ii) copies of the request in a number corresponding to the number of the parties to the litigation proceeding
(iii) a receipt for the payment of the fee referred to in paragraph (2).
5. The Patent Office shall check whether the request for initiation of a litigation proceeding satisfies the formal requirements referred to in paragraphs (3) and (4).
6. Where the request fails to satisfy the formal requirements, the Patent Office shall invite the requesting party to remove the defects, under pain of discontinuance of the proceeding, within 30 days.

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law.
2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.
3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.
3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

Because of the adversarial nature of proceedings before the PPO, the party has to prove the circumstances from which it derives the legal consequences that are more favorable. The proceedings before the Polish Patent Office are reduced of principles set out in the of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, including the principle of formality, or the principle to watch over the interests of the parties by the public administration bodies.

Wzór Przemysłowy Rp-9198

This case concerned the industrial design “Zadaszenie drzwi” (in English: door canopy) Rp-9198. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 703/09

January 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 November 2009 case file VI SA/Wa 703/09 ruled that the person entitled to file a request for invalidation of a right in registration of an industrial design may be an owner of the industrial design registered with an earlier priority, if the existence of this deisgn is an obstacle to the novelty or individual character of the later design. The entitled person to file a request for invalidation may also be an entrepreneur that produces a product with a solution that is covered by the wrongly granted right in registration and to whom this wrongly granted right interferes with the freedom of business establishment and operation.

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

Wzór Przemysłowy 8808

This case concerned the industrial design “Stelaż fotela” (in English: seat frame), Rp-8808. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case II GSK 1034/08

January 20th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 17 June 2009 case file II GSK 1034/08 ruled that it is obvious that the Polish Patent Office should first examine whether there is a right for which the applicant files request for invalidation, then the PPO should examine the legal interest of the applicant, and only then it should consider whether the legal grounds for invalidity are well founded. If at the time of examination of the request for invalidation, that right at issue no longer exists, due to the fact that its earlier decision on the grant of such right has been annulled, any further action is unnecessary and inadmissible as irrelevant. The PPO should terminate the proceedings without examination of the legal interest of the applicant and without considering the merits of the grounds of law. The dispute between the parties does not start due to the lack of action and any arguments of any party are no longer considered by the PPO. In this situation, there is no “winner” or “loser” because the merits of the request are not subject to examinations.

Rp-9476

This judgment concerned the industrial design “Opakowanie zwłaszcza na lody” (in English: Package especially for ice creams), Rp-9476. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 1053/08

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 November 2008 case file VI SA/Wa 1053/08 ruled that according to the provisions of Article 117(2) of the IPL, the finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall also constitute a ground for invalidation of the right in registration. The Patent Office should make a decision in litigation procedure.

Wzór Przemysłowy Rp-8064

This judgment concerned the industrial design “Butelka” (in English: bottle), Rp-8064. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 746/09

August 23rd, 2009, Tomasz Rychlicki

The Polish Patent Office registered the design of a bottle in the form of a contour map of Poland Rp-11003, applied for by Przedsiębiorstwo Wielobranżowe Euro-Kamil Polska sp. z o. o. from Wrocław.

Rp-11003

Jacek Andruszkiewicz from Warszawa filed a request for invalidation of this design. Mr Andruszkiewicz argued that the questioned design lacks of novelty. He pointed out to the 3D trade mark registration R-91920 owned by Jacek Andruszkiewicz Jolanta Duch s.c. DAYGLOB Biuro Exportowo-Importowe from 6 October 1995.

R-91920

The PPO invalidated the right in registration in its decision of 14 January 2009, case file Sp. 555/07. The PPO held that Jacek Andruszkiwicz had a legal interest in seeking the invalidation, as a competitor in the market of bottles. Euro-Kamil filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2009, case file VI SA/Wa 746/09 repealed the contested decision and held it unenforceable. The Court ruled that the PPO did not examine if the legal interest was real and sent this case for reconsideration.

Industrial design, case VI SA/Wa 664/09

August 20th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 August 2009 case file VI SA/Wa 664/09 interpreted the provisions of Articles 106, Article 106¹ and Article 107 of the Polish 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

2. Subject to the exceptions provided for in this Law, rights in registration shall neither be granted for industrial designs that include the signs referred to in Article 131(2)(ii)-(v).

Article 106¹
1. Protection conferred by the registration of a design shall not exist for a product which constitutes a component part of a complex product used for the purpose of the repair of that complex product so as to restore its original appearance.

2. Third parties shall be permitted to use the product referred to in paragraph 1 in a form of making, offering, putting on the market, importing, exporting or using of the product in which the design is incorporated or to which it is applied, or stocking such product for those purposes.

Article 107
1. The right in registration of an industrial design shall not subsist in features of a product:
(i) which are solely dictated by its technical function,
(ii) which must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to, or to interact with, another product.

2. The provision of paragraph (1) shall be without prejudice to the registration of an industrial design serving the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

The Court ruled that it is apparent that the protection does not cover the features of a product, which are determined solely by their technical functions and those which must be reproduced in their exact form and measurements in order to allow mechanical connection or interaction with other product (spare parts).

Wzór Przemysłowy 10736

This case concerned the industrial design “Kołek mocujący” (in English: fixing peg), Rp-10736. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case II GSK 612/08

January 28th, 2009, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 27 January 2009 case file II GSK 612/08 held that the Court cannot deny the legitimacy to submit in the opposition proceedings before the Polish Patent Office, a request for invalidation of a right in industrial design registration, to a person, who was charged with the allegation of committing the offense of assigning to itself the authorship of this exclusive right (plagiarism), if that person alleges and argues that the questioned right was granted in violation and against of legally binding regulations.

This judgment concerned the industrial design “Rozetka pod pieczęć i plastyczną oprawę dokumentów” (in English: Rosette under seal and plastic binding documents), Rp-632. See also “Polish case law on industrial designs“.

Industrial design and trade mark law, case VI SA/Wa 710/08

November 25th, 2008, Tomasz Rychlicki

On 10 April 2001, the Polish company Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J (this is the actual company name – the firm, which consist of names of partnes “Rosinski Andrzej Rosinski Michal Rosinska Joanna”, the name “packages production plant” and the type of legal entity they operate “general/partnership company”) applied for the design registration for bottle with top. On 14 January 2003, the Polish Patent Office has registered the design, Rp-2543.

Rp-2543

In 2006, Unilever NV of Holland asked the PPO to annul its decision regarding Rp-2543. Unilever based its claims on the provisions of Article 117(2) of the Polish 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with subsequent amendments.

A finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights will also constitute a ground for invalidation of the right in registration.

Unilever’s legitimate interest to request the invalidation was based the earlier 3D trade mark registration, R-134678, which was granted by the PPO in a decision of 28 January 1999. However, the problem with applying article 117(2) lays in the rules of Polish administrative procedure. The PPO is not allowed to decide if third parties rights are infringed.

R-134678

The PPO in its decision of 19 October 2007, act signature Sp. 187/06 invalidated the contested design. The Office recognized the similarity between the trade mark and the design based on arguments presented by Unilever’s patent attorney. The Polish company appealed. Its representative called into question the correctness of PPO’s decision in applying provisions of article 117(2). In his opinion the infringement issue should be decided by the civil court, not the administrative body which the Polish Patent Office is. However, the Voivodeship Administrative Court in Warsaw in its judgment of 21 November 2008 case file VI SA/Wa 710/08 did not agree with the Polish company arguments. In Court’s opinion the PPO has been given the opportunity to assess similarities between a registered trade mark and a design. PPO’s conclusions that there exist a significant similarity may entitle the Office to decide with regard to the infringement of third parties rights.

This judgment is not yet final. A cassation complaint was filed to the Supreme Administrative Court. It will clarify the interpretation of Article 117(2) of the IPL. See “Industrial design and trade mark law, case II GSK 481/09“.

Industrial design, case VI SA/Wa 1054/08

November 10th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 November 2008 case file VI SA/Wa 1054/08 ruled that the requirement for the issuance of a preliminary decision by other authority or a court, is one of the conditions for stay of the administrative proceedings pursuant to the provisions of Article 97 § 1 point 4 of the Polish Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, but while looking for the justification that there exists the preliminary issue in a given case, one has to establish a causal connection between the settlement of the case and the preliminary issue. The lack of such connection makes the stay of proceedings under Article 97 § 1 point 4 of the APC unacceptable. The issue of the infringement of the exclusive right referred to in Article 284(6) of the IPL, and civil claims relating thereto are decided by a civil court under civil procedure and the question wheather the use of industrial design that violates personal rights or property of third parties within the meaning of article 117(2) of the IPL, which come with the Polish Patent Office duties (the condition for invalidation of the rights in registration) are separate issues. Therefore, there is no reason to assume that the preliminary issue occurs in this case because the civil court is a proper one to settle the matter of the infringement of an exclusive right.

Wzór Przemysłowy 5873

This case concerned the industrial design “Butelka cylindryczna” (in English: cylindrical bottle), Rp-5873. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1088/08

August 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 August 2008 case file VI SA/Wa 1088/08 ruled that it is not enough to prove that the design applied for differs from opposed designs, but it must also be proved that it does not contain the characteristics of these designs – further – that it is not in fact the sum of the characteristics of these designs, it is not a combination of opposed designs.

This judgment concerned the industrial design “Wiadro” (in English: bucket), PRZ-1077. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.