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Archive for: 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 the Court would clarify the interpretation of article 117(2) of the IPL.

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 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 shall, as indicated by the Voivodeship Administrative Court in its judgment of 11 August 2009 case file VI SA/Wa 1088/08, and according to 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.

This judgment concerned the industrial design “Wiadro” (in English: Bucket) PRZ-1077.

PRZ-1077

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

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.

Industrial design, case VI SA/Wa 1038/09

May 21st, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in a judgment of 23 February 2010, case file VI SA/Wa 1038/09, held that the Polish Patent Office wrongly ruled that the admission of evidence based on the testimony of a witness will not bring anything new to the case, by stating that these witnesses were not credible evidence that the subject of disclosure in the shop (boards) was questioned industrial design. The VAC held that such ruling has the nature of prejudice and is contrary to the provisions of administrative procedure because the PPO made the assessment of usefulness and credibility of evidence, of which it has not get acquainted with.

Wzór Przemysłowy Rp-11243

This judgment concerned the industrial design “Tablica informacyjna” (in English: Information table) Rp-11243. 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, case VI SA/Wa 34/09

April 28th, 2010, Tomasz Rychlicki

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

This judgment concerned the industrial design “Teczka na dokumenty” (in English: Folder for documents) Rp-4223.

Wzór Przemysłowy Rp-4223

The VAC 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 assessed.

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

Industrial design, case II GSK 323/09

February 23rd, 2010, Tomasz Rychlicki

A 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 “Zadaszenie drzwi” (in English: door canopy) Rp-9198. 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) of 30 June 2000, 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, 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 judgment 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, VIII SA/Wa 332/09

February 11th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in a judgment of 15 December 2009, case file VIII SA/Wa 332/09, ruled that he “informed user” is a person who continues to use a product and therefore has some knowledge about its design. It is not a professional. This may be a very attentive consumer who knows what is he or she looking for and who draws attention to all visible elements of the product. The infromed user who uses cartridges for a roller blind, is certainly not an average user or an average purchaser of such product. While assessing the individual character of a cartridge for a roller blind, the scope of creative freedom should be assesed, taking into account the nature of the product and its utilitarian functions, and then, by establishing the characteristics of an “informed user”, the evaluation of a products and the differences should be performed through such prizm, bearing in mind that the “informed user” is one who knows that there are different types of cartridges and who examine them carefully. This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.

This judgment concerned the industrial design “Kaseta do rolet” (in English: cartridge for a roller blind), Rp-8019.

Wzór Przemysłowy Rp-8019

Industrial design, case II GSK 772/09

February 4th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw received two different complaints against the same decision of the Polish Patent Office (PPO) on the invalidation of the right in registration. The Court decided on both complaints and issued the resolution of 16 April 2009, case file VI SA/Wa 443/09, the parties in this case were the PPO and a Polish joint-stock company from Bydgoszcz (legal entity), and the resolution of 23 June 2009, case file VI SA/Wa 715/09, the parties in this case were Jan Romanik (natural person) and the PPO. The VAC rejected the complaint in the second case and hold that there exist the identity between case VI SA/Wa 443/09 and VI SA/Wa 715/09.

Jan Romanik brough a cassation complaint to the Supreme Administrative Court. The SAC in a decision of 9 December 2009, case file II GSK 772/09, ruled that the violation of law made by the VAC was based on a wrong assumption that the resolution case file VI SA/Wa 443/09 was related (the so-called “case sameness”) to VI SA/Wa 715/09, namely, because the case fell within the action between the same parties, which was the subject of the same decision of the Polish Patent Office.

Even if the natural person was the sole shareholder in the joint-stock company, both entities cannot be identified as one, because these are participants of legal transactions that are independent from each other and each of them acquire the rights and duties on its own behalf.

This judgment concerned the industrial design “Łopata” (in English: shovel) Rp-9834.

Wzór Przemysłowy Rp-9834

Industrial design, case II GSK 238/09

January 27th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 16 December 2009, case file II GSK 238/09, ruled that the essential features of the industrial design, are these characteristics that determine the overall impression that the design produces on the informed user. These are features of the shape/appearance which serve as a basis for identifying, distinguishing the design from other, already known designs. The forms of the industrial design differ (otherwise there would be no forms). But these differences include irrelevant features, i.e. those which do not affect the overall impression. The essential features, that decide on the overall impression are common for all forms of an industrial design. Forms of industrial design that are put in one application which are also having the essential features common, differ from each other only by features that are irrelevant. These forms are identical as defined in Article 103(1) – second sentence – of the IPL.

Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

This means that if some of the forms of the industrial design had already been made public, and lost its novelty, other forms, differing from them only by insignificant details, do not have the novelty characteristic, because they are considered by the law as identical, which means, they are devoid of the individual characteristic. This judgment was issued on the basis of the cassation complaint brought from the judgment of the Voivodeship Administrative Court (VAC) in Warsaw, of 11 December 2008, case file VI SA/Wa 1827/08. See “Industrial design case VI SA/Wa 1827/08“.

Wzór Przemysłowy Rp-9201

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9201. 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 (VAC) in Warsaw in a judgment of 19 November 2009, case file VI SA/Wa 703/09 ruled that the entitled person 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 case concerned the industrial design “Stelaż fotela” (in English: seat frame), Rp-8808.

Wzór Przemysłowy 8808

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

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 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 examines 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“.

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 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, II CSK 302/07

January 8th, 2010, Tomasz Rychlicki

I have to write about another important judgment I forgot to report two years ago. This time it is the judgment of the Supreme Court – Civil Chamber of 23 October 2007, case file II CSK 302/07, published in the Jurisprudence of the Polish Courts (in Polish: Orzecznictwo Sądów Polskich) of 2009, No 6, p. 451, together with the gloss by Maria Poźniak-Niedzielska at p. 455.

Some of my P.T. readres may be confused with regard to different courts deciding the same subject matter – in this case – designs and I need to explain that the administrative proceedings in designs’ cases, in general, concerns all decisions made or orders issued by the Patent Office of the Republic of Poland (the PPO takes decisions on granting, refusal to grant of a right in registration for an industrial design etc.) which are liable to complaint lodged to the Voivodeship Administrative Court (VAC) in Warsaw. Judgments made by the VAC may be a subject of a cassation complaint filed before the Supreme Administrative Court (SAC). However, cases with regard to infringement of a right in registration granted for an industrial design are decided in civil law proceedings. That was the reason the aforementioned case was decided at the last stage by the Supreme Court. See my post entitled “Administrative, civil and criminal proceedings in trade mark cases in Poland“.

The Supreme Court had to give an interpretion of provisions of article 104 and 105 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.

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 105
1. For an industrial design a right in registration may be granted.

2. The right in registration shall confer the exclusive right to exploit the industrial design for profit or for professional purposes throughout the territory of the Republic of Poland.

3. The holder shall enjoy the right to prevent any third party from making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes.

4. The right conferred by the registration of an industrial design shall include any design which does not produce on the informed user a different overall impression. Article 104(2) shall apply accordingly.

5. The right conferred by the registration of an industrial design shall be limited to the kind of products, in respect of which the protection has been applied for.

6. Subject to Article 111, the term of a right in registration shall be 25 years counted from the date of filing of an industrial design application with the Patent Office, the said term being divided into 5-year periods.

Wzór Przemysłowy 6751

The SC held that the examination whether there was any infringement of the registered industrial design requires a comprehensive comparison of designs from the perspective of the person using (on a permanent basis) these items, which belong to specific group of goods, a person being oriented/informed in designs that originate from the creative freedom and to examine/assess whether the overall impression produced by the questioned design on such a person differs or not from the general impression caused by the registered design.

Legal commentators stressed the fact that the concept of “informed user” (oriented) was implemented in the IPL following the adjustment of Polish law to protection standards that exist within the EU law. The person being an informed user is a newcomer in the pantheon of fictional characters of industrial property rights, functioning as a certain pattern. In article 26(1) of the IPL already exists such character called “a person skilled in the art”.

1. An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

The Polish commentators also noted and commented on foregin judgments such as Procter & Gamble Company v Reckitt Benckiser (UK) Ltd., [2007] EWCA Civ 936 and Woodhouse UK Plc v Architectural Lighting. Systems t/a Aquila Design and Urbis Lighting Ltd. [2005] ECPCC (Designs) 25, [2006] RPC 1 and OHIM Invalidity Division’s decisions such as Eredu S Coop v Arrmet SRL, ICD 24, 27 April 2004 and Honda Motor Company Ltd v Kwang Yang Motor Company Ltd, ICD 1006, 30 August 2006.

Industrial design law, case VI SA/Wa 518/09

January 7th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 21 July 2009 case file VI SA/Wa 518/09 ruled that where the scope of creative freedom is greater, the assessment of the originality of the design may justify the thesis that the differences should have easily discernible character. By contrast, in the case of a design with a small range of creative freedom, even small differences will not remain unnoticed by the informed user. The design must be different from designs already known and cannot create the impression that a product of such a form of a design has already been seen. It is necessary to examine the compared designs, including the overall impression which is triggered by the design in terms of the so-called “informed user”. The term “informed user” indicates the person who uses the product/design on a permanent basis, so it is not, nor is the average consumer, or the average expert.

Wzór przemysłowy 11751

This judgment interpreted inter alia provisions of articles 103 and 104 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.

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.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(i) has been disclosed to a third party under explicit or implicit conditions of confidentiality,
(ii) has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse in relation to the designer or his successor in title.

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.

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