Archive for: industrial designs

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, the 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), 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.

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.

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, case VI SA/Wa 1376/09

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 13 November 2009 case file VI SA/Wa 1376/09 ruled that the objections with regard to the lack of novelty and individual character of the industrial design may be raised only when we are dealing with the industrial design as defined in the provisions of Article 102 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.

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.
2. Any industrial or handicraft item, including, in particular, packaging, get-up, graphic symbols and typographic typefaces, but excluding computer programs, shall be considered to be a product.
3. The following shall also be considered to be a product:
(i) a product which is composed of multiple components, which can be replaced permitting disassembly and reassembly of the product (complex product),
(ii) a component part, if, once incorporated into the complex product, it remains visible during normal use of the latter, the use being understood as excluding maintenance, servicing or repair work.
(iii) a component part, if it may, by itself, be subject of commercialisation.
4. In case of a design applied to or incorporated in a product which constitutes a component part of a complex product within the meaning of paragraph (3)(i), assessment of novelty and individual character shall only be made in consideration of its visible features.

Wzór Przemysłowy 12053

This case concerned the industrial design “Przeciwpożarowa klapa odcinająca” (in English: fire severing flapper), Rp-12053. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 189/09

October 10th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 9 October 2009 case file VI SA/Wa 189/09 interpreted the provisions of Article 103 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.

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.

The VAC ruled that it is not about the mere fact of the disclosure of the design, but whether it was possible for an unlimited number of persons from the circles specialised in the sector, to which the design belongs, to actually get acquainted with the given design.

Wzór Przemysłowy 12269

This case concerned the industrial design “Tkanina meblowa” (in English: furniture fabric), Rp-12269. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 211/09

September 29th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 29 September 2009 case file VI SA/Wa 211/09 held that the prerequisite for registration as an industrial design is the recognition that there is the “appearance of the whole or a part of a product”, and therefore the subject of the application is visible on the outside. This assumption was based on the provisions of Article 102(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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

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

The conditions of novelty and individual character should be examined later. An invisible item, hidden from the visual perception of the buyer, or the “end user” (consumer) does not constitute an industrial design. It does not have a form of “a product” which meas its appearance. It’s not about the appearance of the component of a product which is visible after separated from the whole, but it is about the possibility to get visually acquainted with it when you buy it, and especially – during the so-called normal use.

Wzór Przemysłowy 9737

This case concerned the industrial design “Ogranicznik wylewu” (in English: overflow limiter), Rp-9737. 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.

See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

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 VI SA/Wa 536/09

June 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 8 June 2009 case file VI SA/Wa 536/09 held that according to the provisions of Article 102(1) of the IPL, the appearance of the whole or a part of a product decides about the possibility to qualify it as an industrial design, i.e. its appearance – visually perceived elements of a product that constitute a single entirety, not the product itself and its functional value or utility.

Wzór Przemysłowy 5041

This judgment concerned the industrial design “Obudowa dzwonka” (in English: bell casing), Rp-5041. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 498/09

June 18th, 2009, Tomasz Rychlicki

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

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

Wzór Przemysłowy 9605

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

Industrial design, case VI SA/Wa 502/09

June 10th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2009 case file VI SA/Wa 502/09 ruled that the examination of the novelty of an industrial design consists of carrying out a comparative analysis of various elements of a solution included in the opposed design and the industrial design applied for the registration and next, indicating of the existing differences and resolving what is their nature.

Wzór Przemysłowy 11780

This judgment concerned the industrial design “Zestaw podstawek reklamowych Ring Fala” (in English: Set of advertising coasters Ring Fala), Rp-11780. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 109/09

April 19th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 April 2009 case file VI SA/Wa 109/09 ruled that is not important, who disclosed the design. The PPO correctly pointed out on the wording of the provisions of Article 103(3)(ii) 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.

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.
(…)
3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(…)
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.

Only the disclosure by the creator, his legal successor, or – with the consent of the holder – by a third party, and if the disclosure was made as a result of abuse in relation to the creator or his successor in the 12 months period before the priority date, does not harm the novelty requirement, any other publicly available disclosure of a design is an obstacle for the novelty requirement.

Wzór Przemysłowy 10571

This case concerned the industrial design “Parapet okienny” (in English: windowsill), Rp-10571. See also “Polish case law on industrial designs“.

Industrial design, case VIII SA/Wa 332/08

February 10th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 February 2009 case file VIII SA/Wa 332/08 ruled that not every method of disclousure of an industrial design is relevant, as it provides the opportunity to familiarize with it to persons acting in a professional manner in the same sector. It must be remembered that in accordance with the views of the legal doctrine and commentators, this possibility must be a real, materially relevant, and therefore it has to occur in circumstances that allow to assume the actual knowledge, which is the result of normal proffesional activity, specialized in the given sector. Therefore, it is not about the mere fact of disclosure of a design, but about whether specific people have actually an opportunity to get acquainted with the design.

Wzór Przemysłowy 6991

This case concerned the industrial design “Podstawa słupa” (in English: column base), Rp-6991. 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 law, case VI SA/Wa 1827/08

December 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 December 2008 case file VI SA/Wa 1827/08 ruled that the protection of an industrial design may only apply to the appearance of an object – its external appearance, not to its internal structure. The Supreme Administrative Court in its judgment of 16 December 2009 case file II GSK 238/09 dismissed the cassation compliant.

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 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“.

See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

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“.

Industrial design law, case VI SA/Wa 543/08

June 28th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 June 2008 case file VI SA/Wa 543/08 wrongly named the design rights calling it “the right of protection”, although the proper legal terminology is “the right in registration” according to Article 105 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 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.

See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1215/07

January 2nd, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 October 2007 case file VI SA/Wa 1215/07 decided on the novelty of an industrial design based on electronic evidences. The court ruled that such evidences are not sufficient. A CD print-out from a database can not be treated as a legal document with an unquestionable date since there are graphical tools which make a modification of such data an easily possibility. In this case such a proof can not be deemed a proper evidence if it is not properly certified. Also a statement issued by a private company is not enough unless it is supported by invoices or official publications of catalogues of exhibitions where such product was shown. A compact disk has to be certified by an expert as regards to a date it was burned.

The Supreme Administrative Court in its judgment of 29 July 2008 case file II GSK 267/08 upheld this decision.

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, case II GSK 277/06

March 28th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 20 March 2007 case file II GSK 277/06 published in the electronic database LEX, under the no 321283, ruled on the definition of the appearance of the product. It refers to the appearance given by certain characteristics or patterns perceived visually and thus causing certain general impression while watching the product of which the design has been applied or is included, in the form in which it occurs in the market during the presentation and the acquisition of goods. Elements of the goods that are not visible or because of its characteristics may not be visible without a significant change in the form of a product during its examination on the market, are not relevant for assessing novelty and individual character of the industrial design, and thus cannot be protected.

Wzór Przemysłowy 7461

This case concerned the industrial design “Lód ekstrudowany jednosmakowy z nadzieniem” (In English: ice cream extruded with single taste stuffing), Rp-7461. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Polish regulations on industrial designs

March 17th, 2005, Tomasz Rychlicki

I. The law
The main sources of binding laws in the Republic of Poland are the Constitution of 2 April 1997, acts passed by the Parliament, ratified international treaties and regulations issued, for example, by the Prime Minister or the Council of Ministers – Polish government. Regulations are issued for the purpose of implementation of acts. The main legal acts on industrial designs protection in the Republic of Poland are the following.

I.A. Substantive law

  • 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.
  • Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), published in Journal of Laws (Dziennik Ustaw) No 47, item 211, with subsequent amendments.

I.B. Procedural law

  • 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.
  • Act of 30 August 2002 on Proceedings Before Administrative Courts – PBAC – (in Polish:Prawo o postępowaniu przed sądami administracyjnymi), published in Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments.
  • Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments.
  • Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments.

I.C. Case law
See “Polish case law on industrial designs“.

II. Definition of an industrial design
A product that is new and has individual character, appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture or materials of a product or of its ornamentation may constitute an industrial design. As “product” is considered, in this context, any industrial or handicraft object, among others including packaging, get-up, graphic symbols and typographic characters, but excluding computer programs. Also considered as “product” are furthermore: (i) a product composed of multiple components which can be replaced allowing disassembly and re-assembly of the product (“complex product”); (ii) a part of a complex product if, once it has been incorporated into the complex product, it remains visible during normal use of that product (whereby maintenance, servicing or repair work are not considered “normal use”); and (iii) a part of a component product as such if it may by itself be subject of commercialization. Design protection cannot be obtained for: (i) features of a product which are exclusively dictated by the technical function of the product concerned; and (ii) features of a product which must necessarily be reproduced in their exact form and dimensions in order to allow the product in which the design is incorporated or to which it is applied to be mechanically connected to or to interact with another product. However, an industrial design which serves the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system may be protected. Design protection cannot be obtained for products constituting a component part of another complex product, usable for repair of that complex product in a way enabling recovery of its original appearance. Third parties may use the said component part in the meaning of its production, offering, introducing to the market, import, export or the use of a product comprising the said component part.

III. Applicant
The creator of the design or any assignee of the same. Foreigners may apply for and obtain registration to the same extent as nationals of Poland provided that reciprocity exists. Applicants residing abroad must be represented by an admitted patent attorney permanently residing in Poland.

IV. Procedure for Registration
Applications for the registration of a design are examined as to compliance with the formal requirements, and as to whether the design belongs to any of the categories mentioned above under “Not registrable. There is no examination as to novelty. If no objections are found a decision on grant of registration will be made, and applicant will be invited to pay within three months the fee for the first protection period of five years from grant and the publication fee; if the fees are not timely paid the decision on the grant will be revoked. After registration particulars thereof are published in the Patent Office Journal. The registration will be recorded in the Industrial Designs Register. A certificate of registration, of which the design specification, that is, the description of the design and the drawing(s) and (where applicable) the photographs or the textile samples form an integral part, will be issued. During the period until registration the Office will give information on the application only with the consent of applicant. During the procedure amendments that would alter the design and the forms of the design as presented in the description, drawings and photographs are not allowed; however, if the claimed form of a product is modified a corresponding amendment might be acceptable if the identity of the product is retained and the amendment is necessary for the grant of the registration.

IV.1. Requirements for Registration
An application may comprise up to ten forms of a design for which the essential features are common, except if the various forms together constitute a complete set of products, in which case the limitation to ten forms does not apply. All the forms of the industrial design contained in one application shall be presented in a form of figures on one of the illustrations (drawings or photographs);

The required documents are:
– request, comprising the full name and domicile of the applicant(s) and full names of the creator(s), and an indication of the article to which the design is to be applied; if applicable, comprising claim to priority,
– Power of attorney, not legalized,
– description of the main features of the design, in Polish language, in triplicate. (Claims and an abstract are not required for an industrial design application),
– Drawings, three sets, sizes of A4. An industrial design application shall contain illustrations, in particular drawings or photographs. An industrial design application may also contain samples of a textile fabric. The drawings must be made on sheets of white, flexible paper in solid lines, and must be made in such manner that all details can still be clearly distinguished after reduction in size to one third. At any rate a drawing or photographs presenting a perspective view must be filed. Additionally, drawings may be filed of other views, and also photographs of min. size 5 cm X 5 cm, max. size 13 cm X 18 cm (coloured photographs allowed). In the case of an application relating to more than one form of the design all of them should be presented on common illustration in perspective view, and additional illustrations may be filed for each form;
Priority claim priority must be claimed on filing, giving date, country and number of the application whose priority is claimed. A priority document, i.e. a certified copy of the application whose priority is claimed, must be filed (may be filed within three months from the filing date). If the priority document is not in English, French, German or Russian, a certified translation thereof must accompany the document.

IV.2. Registrable designs
Two dimensional, three dimensional, single deposits, multiple deposits.

IV.3. Not registrable designs
– Designs not complying with the definition of a design;
– Designs lacking the required novelty or individual character;
– Designs, the exploitation of which would be contrary to public order or morality, provided that exploitation of a design shall not be deemed to be contrary to public order only because it is prohibited by law;
– Designs including the name or abbreviated name of the Republic of Poland or its symbols, the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organizations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or insignia, or other official or generally used distinctions and medals, in particular those of the government administration, local self-administration or social organizations performing activities in vital public interests, if the activities of these organizations extend to the entire territory or a substantial part of the territory of the State, unless applicant can furnish evidence (such as an authorization from a competent State agency or a permission given by an organization) of his right to use the sign concerned in the course of trade;
– Designs incorporating the abbreviated names, armorial bearings, flags or emblems of other countries or international organizations, or official signs or hallmarks indicating control and warranty adopted in other countries, if the prohibition to register these follows from international agreements, except if applicant can produce an authorization from a competent authority allowing him to use the sign concerned in the course of trade.
– Designs incorporating officially recognized signs accepted for use in trade, such as safety marks, quality marks, hallmarks etc., in so far this could mislead the public with regard to the nature of those signs, unless applicant can prove his right to use these.
– Designs incorporating elements which are symbols of a religious, patriotic or cultural nature, in so far as this could hurt religious feelings, sense of patriotism or national tradition.

IV.3. The novelty requirement
An industrial design must be new and have an individual character. A design will be considered to be new if, before the date of filing the application for its registration or, if priority is claimed, before the priority date, no identical design has been made available to the public anywhere in the world by use, exhibition or any other means. In this context it must be noted that designs are still considered identical if their characteristics differ only in immaterial details. A design will not be deemed made available to the public if before the filing or priority date it could not have become known to the circles specialized in the sector to which the design belongs.

A design will be considered to have individual character if the overall visual impression that it produces on the informed user differs from that produced by any design made available to the public before the date of filing the application for registration or, if priority is claimed, before the priority date. For the assessment of the individual character, the degree of freedom of the creator in developing the design is to be taken into consideration.

The novelty and individual character of a design incorporated in or applied to a product which is a component part of a complex product will only be assessed in consideration of its visible features. (As “complex product” is considered, a product composed of multiple components which can be replaced allowing disassembly and re-assembly of the product).

Not a bar to novelty are (i) disclosure of the design to a third party under explicit or implicit conditions of confidentiality;(ii) disclosure of the design during the 12 months preceding the filing date or, if priority is claimed, during the 12 months preceding the priority date by the creator or his successor in title, or by a third party with the consent of the creator or his successor in title; (iii) disclosure of the design during the 12 months preceding the filing date or, if priority is claimed, during the 12 months preceding the priority date as a consequence of an abuse in relation to the creator or his successor in title.

IV.4. Publication
Industrial design are kept secret prior to registration. Description of a registered design is available to the public in the Polish Patent Office.

V. Copyright Protection
A product according to a registered industrial design and put on the market after the lapse of the registration of the design shall not benefit from the the material copyrights under the provisions of the Polish Act of 4 February 1994 on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych), published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments.

VI. Duration of the rights in registration for industrial designs
25 years from the date of filing of the application, which period is divided into five five-year periods.