Today is the official “premiere” of the Office for Harmonization in the Internal Market’s website and beginning July 1, 2008, the US Copyright Office is offering online registration of claims to copyright through the electronic Copyright Office (eCO) website.
Archive for: industrial property law
New websites, new possibilities
July 1st, 2008, Tomasz RychlickiNot fencing
June 30th, 2008, Tomasz RychlickiAccording to the recent judgment of the Polish Supreme Court of 30 June 2008, case act signature I KZP 8/08, PDF file, in Polish language, buying counterfeited goods is not fencing. For more information and commentary please refer to Class46 website.
Non-traditional trademarks in Polish case law
April 30th, 2008, Tomasz RychlickiLast updated on 11 January 2010.
This post was inspired by a question and request I have recieved from my nice friend. I must admit that the Polish case law is not too rich in decisions regarding the issue of non-traditional trade marks, however some judgments are worth mentioning.
- Three-dimensional marks
- Trade dress
- Single colour
- Composition of colours
The judgment of the Supreme Administrative Court (SAC) of 29 June 2005, case act signature II GSK 92/05.
The interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.
This judgment concerned
The judgment of the Provincial (Voivodeship/District) Administrative Court (VAC) in Warsaw of 2 March 2006, case act signature VI SA/Wa 1705/05.
I. According to article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
II. There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation.
III. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9 sec. 1 pt 1 and 2 of the Act on Trade marks, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions.
and the judgment of the Supreme Administrative Court of 20 February 2007, case act signature II GSK 247/06, in which the SAC rejected a cassation complaint brought by the K. Company.
It can not be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer.
This judgment concerned TERRAVITA trade mark R-142204.
I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark? We may discuss.
The judgment of the Provincial (Voivodeship/District) Administrative Court in Warsaw of 3 August 2005, case act signature VI SA/Wa 1482/04. This judgment concerned separate Color RED Pantone 485 C for goods in class 30 such as confectionery, chocolate confectionery, sweets.
A single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.
The judgment of the Voivodeship Administrative Court in Warsaw of 31 October 2006, case act signature VI SA/Wa 1420/06. This judgment concerned separate Color RED Pantone C32, IR-803195.
1. While examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for.
2. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.
3. It is difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies.
The judgment of the Supreme Administrative Court of 23 November 2004, case act signature GSK 864/04. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks. The sign was presented as double coulour composition (lower part in orange, top part in white).
According to article 4 sec. 1 and article. 7 sec. 1 of the Act on 31 January 1985 on Trade marks, undefined trademark, which is not represented in one form, does not possess any sufficient ability to distinguish goods.
The judgment of the Supreme Court of 3 June 2009, case act signature IV CSK 61/09. This judgment concerned inter alia trade mark registrations for color trade marks. For instance R-115842 and R-115843.
Combination of colors can be a protected trademark in Poland.
I will try to update this post everytime I got any interesting judgment. Stay tuned.
If you are keen on trade marks I’d like to present you a small “case study”. On 1 March 2004, the Polish Patent Office has registered word-figurative trade mark CZUWAJ R-152214 (“Be Prepared” in English). Związek Harcerstwa Polskiego – Główna Kwatera is the owner, its proffesional representative was JOTBIS Biuro Techniczno-Patentowe Żebruń Anna. The mark looks exactly the same as the one in the topic of this post and it is simply and undoubtedly the Scouts Cross.
The final design of Scout’s Crass was approved during ZHP’s unification conference held on October 1-2 1918 which has choosen this sign as the official badge of Polish scouting In November 1918 the Polish Ministry of War decreed that the Krzyż Harcerski was the only civilian emblem that might be worn on military uniforms. The tradition continues to this day.
Nowadays, there are three major scouting organizations in Poland. Związek Harcerstwa Polskiego, Związek Harcerstwa Rzeczypospolitej and Stowarzyszenia Harcerstwa Katolickiego Zawisza.
Now, here are some hints from 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.
Art. 129.
(…)
Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(…)
3) signs which have become customary in the current language and are used in fair and established business practices.Article 131
1. Rights of protection shall not be granted for signs:
(…)
(ii) that are contrary to law, public order or morality, or
(…)
2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
(…)
(v) it incorporates elements being symbols, in particular of a religious, patriotic or cultural nature whose use could hurt religious feelings, sense of patriotism or national tradition,
Poland: no confusion between MAKROTERM and MAKRO
March 19th, 2008, Tomasz RychlickiIn 2000 the PHU Makroterm K. Wąchała & A. Wąchała applied for the registration of the figurative and word mark MAKROTERM in classes 6, 9, 11 and 42. The Makro Cash and Carry company, who applied for the registration of the figurative and word mark MAKRO in classes 1–45 on 22 March 2000, opposed to the registration. Upon finding the observations groundless, the case was then decided by the Polish Patent Office (PPO).
Makro Cash and Carry claimed that the disputable mark imitated the MAKRO mark, used its renown and infringed the company’s right to a company name. Makroterm in turn said there was no likelihood of confusion since the disputed mark did not use the renown of the MAKRO mark because of the fact that Macro Cash and Carry failed to prove the MAKRO mark had been renowned. The Makroterm representative also said the MAKRO mark had not been universally known.
The PPO overruled MAKRO’s opposition. It decided that in assessing similarity one should not focus solely on one element – the “makro” word. It also said the MAKROTERM mark was one word combining the “makro” and “term” words into an original name that moreover had been put in a colourful design. According to the Office both marks brought about different associations in the minds of the relevant public. It decided that the marks themselves differed and did not examine similarity in goods offered by the companies. The Office also pointed out that the provided advertising materials concerned only the MAKRO CASH AND CARRY mark. With regard to the infringement of the right to a company name it decided the name was a compound one so there could not have been any infringement.
Makro Cash and Carry filed an appeal against the decision of the Polish Patent Office. It read that the Office had not assessed the similarity of goods offered by both companies and with identical goods the criteria for assessing similarity of marks are much stricter. Makro Cash and Carry also said the Polish Patent Office assessed only the differences but it should have assessed similarities.
Makroterm in turn underscored that the universal recognition of the MAKRO sign had not been adequately demonstrated and that the mark had been recognized by a half of the relevant public. It also questioned the research commissioned in 2006 by the MAKRO company.
The Voivodeship Administrative Court (VAC) in Warsaw, in a judgment of 22 March 2007, case file VI SA/Wa 1325/06, rejected the appeal. The Court held that the PPO had already compared the marks with regard to all three planes and decided that the marks bore fundamental differences. It decided that the “makro” word was a common one and had little distinctive value. Apart from that it found the “term” word much more distinctive, which together with colourful design of the MAKROTERM mark made both marks different.
MAKRO filed a cassation appeal to the Supreme Administrative Court (SAC). The Supreme Court in the judgment of 15 January 2008, case file II GSK 298/07 fully agreed with the earlier judgement of the Voivodeship Court and the decision of the Polish Patent Office. It also decided there was no similarity between the marks that would lead to a confusion neither on the phonetic, nor conceptual, nor figurative plane. The mark also had not infringed the appellant’s right to the name of his company.
Women and intellectual property
February 18th, 2008, Tomasz RychlickiOn March 14, 2008, The Polish Patent Office together with The WIPO, The United Nations Economic Commission for Europe, The Polish Agency for Enterprise Development, The National chamber of Commerce and The Polish Confederation of Private Employers LEWIATAN organize a conference “IP protection as a condition for women’ success in science and business” which will be located in Warsaw at The Polish National Library. During the above mentioned conference there will be also held an official ending of the 3rd edition of “The Woman-Inventor” competition-plebiscite.
Types of trade mark’s distinctiveness
February 11th, 2008, Tomasz RychlickiThe distinctive character of a trade mark may orginally arise from the nature of a sign or may later originate from the use of such trade mark on the market (acquired distinctiveness). A sign acquires the secondary meaning, if it lacked the distinctive character earlier, but during the use it became the source of information about the origin of a product. Such findings are presented in the judgment of the Supreme Administrative Court from 28 November 2007, case file II GSK 236/07.
There is a very interesting judgement of the Voivodeship Administrative Court in Warsaw of 11 October 2007, case file VI SA/Wa 1215/07. It concerns a dispute regarding an industrial design of a handle for cutlery which is registered for Gerlach S.A. The Court had to decide about the novelty of a 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.
See also my post entitled “Polish case law on industrial designs“.
IP rights in IT businesses
November 2nd, 2007, Tomasz RychlickiInnovators Network has invited me to chair a workshop focusing on SMEs from the IT sector. I’ll teach them how to define intellectual assets and protect it, as well as, to raise capital, develop partnerships, and create new streams of revenue. This workshop is titled “Discover a New Source of Income for Your Company through Usage of Intellectual Property. Turning Your Innovation into a Successful Business”. It will take place on December 6, 2007, in beautiful Kraków. If you are around during this time and you’d like to meet then let me know.
I think that if someone is really interested in industrial property law issues then such a person would admire this part of human creation as well, for instance typography art. I track news about this kinf of activities in the Internet all the time and I found a list of music videos that use typography effects lately. The whole playlist is available at yuxt.com website.
Now, maybe a little bit more about the law. Christoph Mueller, who is the author of Mom’s typewriter typeface which as you may have noticed I used in the topic of this post, can seek for protection of his creation based on industrial property law regulations within Poland and European Union. Unfortunately, unless such work is a digital one (popular term font) he won’t be able to get proper protection from the US copyright law (sic!). I recommend you to read the judgment in the case Adobe Sys. v. Southern Software, Inc., 45 U.S.P.Q.2D (BNA) 1827, 1998 U.S. Dist. LEXIS 1941 (D. Cal. 1998) and 37 C.F.R. § 202.1(e) (1998). Additionally, it is always worth reading some paper. Check, J. L. Mezrich, “Extension of Copyright to Fonts—Can the Alphabet be Far Behind?“, The Computer Law Review and Technology Journal 1998. PDF file, 28 kB.