The second issue of the International Free and Open Source Software Law Review has just been released.
Issue two is available without charge online at www.ifosslr.org and in PDF format at www.ifosslr.org/public/ifosslr-v1i2.pdf. There is also a call for papers for future issues so I invite all my P.T. readers to submit your articles.
Archive for: industrial property law
It is out again
January 28th, 2010, Tomasz RychlickiPolish case law on industrial designs
January 12th, 2010, Tomasz RychlickiLast updated on February 23, 2010.
I will try to provide my P.T. readers with a short review of Polish case law on industrial designs. I already wrote on this subject in my previous posts entitled “More on designs in Polish law“, “Polish case law on designs” and “R-6048“. Below, you will find a list of couple of judgments decided in the administrative proceedings. Finding cases that were decided in civil proceedings is more problematic becasue they are not so often publicily available. All judgments are presented in the chronological order. Just click on the link to find more about each case.
- Judgment of the Supreme Administrative Court of 20 January 2010, case file II GSK 323/09.
- 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 (VAC) in Warsaw, of 11 December 2008, case file VI SA/Wa 1827/08.
- 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. The parties may file a cassation complaint to the Supreme Administrative Court.
- Decision of the Supreme Administrative Court of 9 December 2009, case file II GSK 772/09.
- 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. The parties may file a cassation complaint to the Supreme Administrative Court.
- Judgment of the Voivodeship Administrative Court in Warsaw of 13 November 2009, case file VI SA/Wa 1376/09.
- Judgment of the Voivodeship Administrative Court in Warsaw of 9 October 2009, case file VI SA/Wa 189/09.
- Judgment of the Voivodeship Administrative Court in Warsaw of 29 September 2009, case file VI SA/Wa 211/09.
- Judgment of the Voivodeship Administrative Court in Warsaw of 19 August 2009, case file VI SA/Wa 664/09.
- Judgment of the Voivodeship Administrative Court in Warsaw of 10 June 2009, case file VI SA/Wa 498/09
- Judgment of the the Voivodeship Administrative Court in Warsaw of 8 June 2009, case file VI SA/Wa 536/09.
- Judgment of the the Voivodeship Administrative Court in Warsaw of 2 June 2009, case file VI SA/Wa 502/09.
- Judgment of the the Voivodeship Administrative Court in Warsaw of 4 April 2009, case file VI SA/Wa 109/09.
- Judgment of the Voivodeship Administrative Court in Warsaw of 4 February 2009, case file VIII SA/Wa 332/08.
- Judgment of the Supreme Administrative Court in a judgment of 27 January 2009, case file II GSK 612/08.
- Judgment of the Voivodeship Administrative Court (VAC) in Warsaw in a judgment 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.
- Judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 4 November 2008, case file VI SA/Wa 1053/08.
- Judgment of the Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 August 2008, case file VI SA/Wa 1088/08.
- Judgment of the Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 10 June 2008, case file VI SA/Wa 543/08.
- Judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 4 November 2008, case file VI SA/Wa 1054/08.
- 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.
As usually, I will try to update this post everytime I got any interesting judgment. So stay tuned folks.
Polish case law on designs
January 7th, 2010, Tomasz RychlickiI do not write too often about judgments of Polish courts regarding designs so I decided to fill this gap. The Voivodeship Administrative Court (VAC) in Warsaw in a 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.
This judgment interpreted inter alia provisions of article 103 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.
and article 104 of the IPL
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 my post entitled “Polish case law on industrial designs“.
Poland: new Chairman of the Polish Chamber of Patent Attorneys
November 27th, 2009, Tomasz RychlickiAnna Korbela is the new Chairman of the Polish Chamber of Patent Attorneys. The Chamber is a professional self-government of Polish patent attorneys responsible inter alia for taking action in order to provide the proper exercise of a patent attorney profession, representing patent attorneys and trainees and protecting their professional interests, cooperating in the development and exercise of industrial property rights, professional training and education of patent attorney’s trainees, supervision of proper practice of the profession by patent attorneys and trainees, conducting researches on industrial property law issues.
Is it invention or computer software?
October 13th, 2009, Tomasz RychlickiThe Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 10 June 2009, case file VI SA/Wa 2566/08 held that:
it is up to the Patent Office (PPO) to reconsider the matter in its entirety and refer to the statements and allegations contained in the request for the reconsideration the case taking into account the above guidance and administrative procedures by which the Office is bound.
Looks like no big deal, right? But if you could read the whole judgment, which unfortunately is not available in English, you would understand that the Polish Patent Office will have to issue an opinion, and will have to justify and explain it appropriately, on the subject what is an invention and what is a computer program and why the PPO does not grant patents to so-called “digital” solutions.
In this context, I look forward to the EPO decision in G 3/08 case and to the SCOTUS’ judgment In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).
Combination of colors can be a protected trademark in Poland
June 16th, 2009, Magdalena GadSuch a conclusion stems from the Supreme Court’s (SC) judgment of June 3, 2009, case act signature IV CSK 61/09. Pursuant to the SC, a combination of colors can be protected as a trademark, and shall not be deemed an attempt to monopolize the colors themselves. The issue arose in connection with the British Petroleum suit against Marcin S., a Polish entrepreneur, who used the characteristic green and yellow colors to attract the prospective clientele to his gas stations. The efforts of the legitimate holder of the BP trademark, to convince the infringer to substitute the yellow component of his stations’ logo with another color proved unfruitful, and the case ended up in court. British Petroleum based its claims primarily on 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 and the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with later amendments.
The Court of first instance found in favor of the claimant, stating that the respondent had indeed committed not only the acts of unfair competition as described in articles 5 and 10 CUC,
Article 5. The designation of the undertaking in a way which may mislead customers in relation to its identity, due to the use of trade mark, name, emblem, letter abbreviation or another characteristic symbol already lawfully used to indicate another undertaking, shall be the act of unfair competition.
Article 10.1. Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
2. Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
but primarily, that he had infringed article 296(2)(ii) of the IPL that is, he had unlawfully used – in the course of trade – a trademark similar to a trademark registered in respect of identical goods, and the use of such mark is likely to mislead part of the public, in particular by evoking associations between the marks concerned (here Marcin S. gas station logo and the BP gas station trademark). Unfortunately on appeal, the Court of II instance refused to share this view and the case was subsequently dismissed in whole, as the BP’s attempt to monopolize the colors of green and yellow. BP filed a cassation complaint. The SC did not understand why having made the same factual findings as the court of first instance, the court of appeals refused to recognize that the respondent had indeed committed the alleged acts of unfair competition. The SC noted also that the court of appeals should have and yet failed to address the important issue of whether the claimant’s trademark does indeed deserve protection under the PIP. As a result, the Supreme Court remanded the case back to the lower court for retrial.
BP owns several Polish trade mark registration for color trade marks. For instance R-115842 and R-115843.
Those of you interested in the earlier Polish case law regarding color trademarks check out Tomasz’s post entitled “ Non-traditional trademarks in Polish case law“.
Some stats at the end of the year
December 30th, 2008, Tomasz RychlickiThe Polish Ministry of Justice has sent me some official statistics regarding IP cases in 2006, 2007 and 2008. You may expect a post regarding this issue which will be available at class46.eu soon. Meanwhile, I recommend you my old post titled “Some stats“.
Some stats
November 25th, 2008, Tomasz RychlickiIn Poland, all infringement cases in the field of industrial property, copyright and unfair competition are decided by civil courts. The number of cases in the first half of 2008, was as follows:
1. Circuit Courts (first instance):
- Industrial Property, the courts’ statistic symbol 034 – total: 25 cases.
- Copyright, the courts’ statistic symbol 033 – total: 117 cases.
- Unfair competition, the courts’ statistic symbol 652 – total: 93 cases.
- Cases under the scope of protection of trademarks and designs, the courts’ statistic symbol 653 – total: 89 cases.
2. Courts of Appeal (second instance):
- Industrial Property, the courts’ statistic symbol 034 – total: 5 cases.
- Copyright, the courts’ statistic symbol 033 – total: 34 cases.
- Unfair competition, the courts’ statistic symbol 652 – total: 24 cases.
- Cases under the scope of protection of trademarks and designs, the courts’ statistic symbol 653 – tota:l 24 cases.
Ethics
August 20th, 2008, Tomasz RychlickiThe Rules of Ethics for Patent Attorney Profession, PDF file, in Polish language. This is the unifed text with changes that were passed during IV National Convention of Patent Attorneys of 7 September 2005.
§ 3
Patent attorney shall perform his/her professional duties according to his/her best will and knowledge with
appropriate precision and conscientiousnes, acting in proper moderation and dignity.
Please note that Polish patent attorneys may represent clients in all industrial property law matters (i.e. patents, trademarks, designs, etc.) and there are no specific professions such as trademark agents.
Poland: proving the fame of a trade mark
July 30th, 2008, Tomasz RychlickiThe Polish Supreme Administrative Court (SAC) in its recent judgment of 9 May 2008, case file II GSK 506/07, gave an interpretation and clarified what is a famous (renown or reputed) trade mark.
This case concerned a cassation complaint brought from the judgment of the Voivodeship Administrative Court (VAC) in Warsaw of 4 September 2007, case file VI SA/Wa 2195/06, regarding a decision of the Polish Patent Office (PPO) in case of BOSS LIGHTS trade mark R-136520. Reemtsma Cigarettenfabriken GmbH from Hamburg had registered this trade mark in class 34 for goods such as tobacco, tobacco products, smokers’ articles, cigarettes, cigarillos, matches. The owner of the following trade marks: BOSS R-66417, registered for goods in classes 9, 14, 18, 25 and 28, HUGO BOSS R-66418, registered for goods in classes 9, 14, 18, 25 and 34, BOSS HUGO BOSS R-156696, registered for goods in class 34 and word-figurative mark BOSS R-82792 filed before the Polish Patent Office a request for cancellation of the right of protection to BOSS LIGHTS trade mark. The PPO found that there was a likelihood of consumer confusion with reference to the origin of goods in the market turnover. The PPO also held that the registration of the BOSS LIGHTS trade mark violated the prior rights of HUGO BOSS Trade Mark Management GmbH & Co. KG, including its company name.
Reemtsma Cigarettenfabriken appealed to the Voivodeship Administrative Court in Warsaw. The Court sided with the PPO’s decision. Reemtsma Cigarettenfabriken referred to the last instance and it has filed a cassation complaint before the Polish Supreme Administrative Court. However, The SAC agreed with the court of first instance findings that famous trade mark has a reputation and that, besides its recognition, it must also be characterized by the following characteristics:
- market share/participation (both quantity and value of sold goods),
- range and long-lasting of an advertisment of the product bearing a trade mark,
- territorial and temporal range of use,
- licences granted for trade mark use, quality of goods bearing a trade mark,
- value of a given sign in assessment of an independent financial institution,
- size and extent of expenditures spent on promotion of a mark,
- the relationship on prices of substitute goods,
- if (and to what extent) the mark is used by third party.