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Archive for: invalidation of a right in registration

Industrial design, case VI SA/Wa 1053/08

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1053/08, said that according to 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 shall make a decision in litigation procedure.

This judgment concerned the industrial design “Butelka” (in English: bottle), Rp-8064.

Wzór Przemysłowy Rp-8064

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The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2009, case file VI SA/Wa 746/09 repealed the contested decision and held it unenforceable.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 (VAC) in Warsaw in a judgment of 19 August 2009, case file VI SA/Wa 664/09, ruled that according to articles 106, 106¹ and 107 of the IPL

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.

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).

This case concerned the industrial design “Kołek mocujący” (in English: fixing peg), Rp-10736.

Wzór Przemysłowy 10736

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

Industrial design, case II GSK 612/08

January 28th, 2009, Tomasz Rychlicki

The Supreme Administrative Court (SAC) in a judgment of 27 January 2009, case file II GSK 612/08, held that it 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 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 provisions of article 117(2) 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.

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 a judgment in a 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 (VAC) in Warsaw in a 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 article 97 § 1 point 4 of the Polish Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, 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.

This case concerned the industrial design “Butelka cylindryczna” (in English: cylindrical bottle), Rp-5873.

Wzór Przemysłowy 5873

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

August 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a 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.