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Archive for: International law

Unfair competition, case II CR 367/87

January 3rd, 2008, Tomasz Rychlicki

The French company Interagra, seated in Paris, demanded the cease of use of the same name by an international enterprise established in Poznań by a Dutch citizen. The company was registered in 1983 in the Register of International Companies in Poznań by Barthold Asauerus van Doom, and operated on the whole Polish market. This company has also registered Interagra trade marks R-61166 and R-61280. However, long before these events, the company Interagra SA started its operation in France. Both companies operated in the field of agricultural products and food. The company Interagra from Poznań knew about the existence of the French one, because Interagra SA had established commercial links with Polish foreign trade centrals (entities that were allowed to cooperate with foreign businesses during the communism era in Poland).

The Supreme Court in its judgment of 14 June 1988 case file II CR 367/87 held that in case of marking/designating of the undertaking in a way which may mislead customers in relation to its identity, any act that infringes or violates the rules of fair competition exhausts the conditions set out in Article 2 of the Act of 1926 on combating unfair competition, which is also valid for the provision of the Article 5 of 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 subsequent amendments.

Trade mark law, case II GSK 247/06

August 11th, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. This judgment concerned the figurative trade mark TERRAVITA R-142204. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 247/06 dismissed a cassation complaint brought by the K. Company.

R-142204

The Court ruled that it cannot be assumed that in case of word-figurative signs, a word element of a such sign has a decisive character because it’s 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. 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 (3D).

Trade mark law, case II GSK 173/06

November 8th, 2006, Tomasz Rychlicki

On 10 December 2003, Eska Nord Sp. z o. o. requested the Polish Patent Office to decide on the lapse of the right of protection for “Radio 73,2 Fm ESKA” R-98909 trade mark due to the non-use. The applicant explained that since 1993 it operates as a commercial radio station that broadcasts its program in the Tri-City region (Gdańsk, Sopot and Gdynia) and the surrounding area, using the ESKA-NORD brand. The applicant has claimed its legal interest (locus standi) from the fact that the District Court in Gdańsk issued on 1 August 2003 an order prohibiting Radio ESKA S.A. the broadcasting at radio frequency 94.6 MHz in Gdynia and 90.7 Mhz in Gdansk, and prohibiting radio broadcasting and advertising under the names Eska and Eska Trójmiasto.

R-98909

Radio Eska S.A. sought to dismiss the request and provided the correspondence with the National Broadcasting Council on the use in 1999, of the questioned trade mark in the registered form. The company explained also that it ceased using in “73.2” number in the questioned sign as it was justified because it changed the broadcasting frequency under the Regulation of the Minister of Communications dated 16 December 1999 on the frequency allocation and frequency ranges in the Republic of Poland and the conditions of their use Official Journal No 109, item 1252.

The PPO its decision of 21 February 2005 dismissed the request and pointed out that timeframe to be considered whether disputed trade mark was used and in what form includes the period of 5 year, i.e. between dates of 10 December 1998 and 10 December 2003.

The Voivodeship administrative Court in Warsaw in its judgmen of 7 February 2006 case file VI SA/Wa 1749/05 dismissed the complaint. The Court, pointed out to the fact that the use of the trade mark in broadcasted programs and in correspondence was the use in the course of trade and it met the requirement of genuine use as referred to in the IPL. The Court also noted that under Article 19(1) of the TRIPS the important reasons of the non-use is justified, are import restrictions or other government requirements for goods or services protected by a trademark.

The Supreme Administrative Court in its judgment of 10 October 2006 case file II GSK 173/06 held that the use of a trade mark in a form that differs from that for of a trade mark for which it was granted a right of protection, but in elements which do not alter its distinctive character, is also deemed as the genuine use. The SAC ruled also that there was the use of the trade mark in the form of RDS (Radio Data System) during the broadcast of radio programs and within a website available at eska.pl, presenting the logo of the station. In the first case while listening to the station with a radio equipped with RDS there were presented verbal communications, including communication with the station name (in this case: Radio Eska).

Trade mark law, case II GSK 377/05

October 6th, 2006, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005 case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.

The Supreme Administrative Court in its judgment of 5 April 2006 case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.

R-135047

The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17. The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property, published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 of the CC). This protection arises from the date of the first use of a firm in business.

Trade mark law, case II SA 2971/01

April 28th, 2006, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 MArch 2002 case file II SA 2971/01 held that the allegation of illegality, which is being a prerequisite for inadmissibility of trade mark registration, does not only concern a trade mark itself. This issue has already been explained by legal commentators, who argued that it is not only a conflict with the law or rules of social coexistence of the trade mark itself (its content), but also the unlawful use of the trade mark, i.e., certain actions and intentions of the person who applied for the trade mark registration. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, pp. 74-75.

This understanding of the registration of a trade mark violated the principles of social coexistence. The circumstances of the disputed case have indicated that the party who filed a complaint against the decision of the Polish Patent Office in which the right of protection was invalidated, was acting in bad faith when it applied for the registration. This case concerned the invalidation proceedings of BELET R-109473 trade mark registered for Belet-Polska Spółka z o.o. from Poznań.

Trade mark law, case III RN 50/96

October 11th, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 10 December 1996, case file III RN 50/96 held that while assessing whether the sign has the distinctive character one should take into the account the economic interests of all market participants, which is characterized by free access to all signs that inform about name or characteristics of goods or services. The Court simply ruled that purely informational signs may not serve as trademarks. This case concerned 100 PANORAMICZNYCH R-102531 trade mark owned by TECHNOPOL Agencja Wydawnicza Sp. z o. o.

Copyright law, case I CK 232/04

July 11th, 2005, Tomasz Rychlicki

According to the judgement of the Polish Supreme Court of 23 November 2004 case file I CK 232/2004, it is possible to quote another’s work even in its entirety, if for the purposes described in Article 29 of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, 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.

Article 29
1. It shall be permissible to reproduce in the form of quotations, in works that constitute an integral whole, fragments of disclosed works or the entire contents of short works to the extent justified by explanation, critical analysis or teaching or by the laws of the creative genre concerned.

It is permissible so long as the quotation remains in such a proportion to the personal creative input of the author incorporating it, so as to eliminate any doubts as to whether a new, individual work has been created. Under the said article one can quote a fragment of or an entire work of others already made public by referencing or reproducing such fragment/work and using it in one’s own work within the scope justified by explanation, critical analysis, teaching or the rights governing a given kind of creative activity. If these requirements are met the quotations are allowed without the author’s authorization.

On 26 April 2001, the District Court in Warsaw held in favor of the claimant Tomasz Sarnecki who filed a lawsuit against the weekly magazine “Polityka”, the Labor Cooperative in Warszawa and the editor in chief Jerzy B. for copyright infringement. The Court found the respondents liable (jointly and severally) to a fine of PLN 5.000 as a compensation for the willful infringement of the author’s moral rights, a fine of PLN 15,000 as a compensation for the author’s economic rights and obliged them to publish in their magazine a press declaration communicating to the public the fact that the claimant’s work was used without his permission.

On the cover of its 5 June 1999 issue, the “Polityka” magazine published a substantial fragment of the famous Solidarity Citizens’ Committee election poster from June 1989, authored by Tomasz Sarnecki. The poster, titled “High Noon, June 4, 1989” pictured a sheriff holding a paper sheet with the word “Election”, and a characteristic “Solidarność” logo pinned to his chest right above the sheriff’s star. It is worth to mention that the image of sheriff was taken from the movie “High noon” and depicted Gary Cooper. The “Polityka” magazine cover incorporated that very same poster, save for minor modifications. In particular, the respondent left out the word “Solidarność” placed above the head of the sheriff as well as the poster’s title (“High Noon, June 4, 1989”) replacing it with the wording “10 years of freedom. The history of the III Republic of Poland. Special report”. The cover referred to an article published in that issue of the magazine, commemorating the 10th anniversary of the first free democratic election in Poland. However, the editor’s office used the poster without it’s author’s knowledge or permission, not bothering even to indicate his authorship or to pay him any remuneration. This of course led to the author to file a suit in the court.

The court of first instance found, based on an expert’s opinion, that the cover of the “Polityka” magazine cannot be classified as an independent work inspired by the poster, because it incorporates the poster directly, using 90% of its plastic form without any – even the slightest – modifications. The designer of the cover did not modify the poster in any way and maintained the substance of the claimant’s work, hence infringing the latter’s moral right to sign the work with his name or pseudonym and his economic right to use the work, to dispose of it and to receive remuneration for the use of that work. Additionally, such infringement was willful, as the respondents did not exercise due professional care in identifying the author of the poster. The court found that Article 29 of the ARNR could not apply in the case at hand because the respondents’ behavior had exceeded the scope of fair use, as described in Article 34 of the ARNR.

Article 34
It shall be lawful to make use of works within the recognized limits of use on condition that the creator and the source are expressly mentioned. Their creator shall not be entitled to remuneration unless the law provides otherwise.

The above reasoning was subsequently adhered to by the Court of Appeals in Warsaw, which dismissed the respondents’ appeal on 18 September 2003. The court stated that the scope of quotation incorporated in the respondents’ work was so substantial that it was impossible to treat it as a permissible borrowing of a “snippet” of someone else’s work, as understood by article 29 of the ARNR and emphasized that the respondents did not even attempt to change the “atmosphere” of the poster in any way. The court found also that the fact that the poster was politically propagandist in nature was irrelevant and underlined that the commercial character of the use of it was illegal.

The respondents therefore filed a cassation claim with the Supreme Court, based in particular on an improper interpretation of the provisions of the ARNR. Amongst others, the respondents accused the Court of Appeals of having misinterpreted 1) Article 29 by wrongly assuming that it applies solely to cases where only a fragment of another’s work (as opposed to a whole work) is borrowed; 2) Article 29(1) in conjunction with Article 35, by wrongly assuming that for the purposes of setting the limits of fair use, the politically propagandist nature of the work is irrelevant and by disregarding the elements of this genre; 3) Articles 16(2), Article 34 and Article 78(1) – by wrongly applying those provisions and wrongly assuming, that the author’s moral rights had been infringed by not indicating the author’s personal information on the cover; 4) Article 17 and Article 79(1) by wrongly applying those articles and by wrongly assuming that the respondents infringed the author’s economic rights and 5) Articles 34 and 29(1) and (3) by not having applied those articles and by wrongly assuming that the claimant therefore has the right to remuneration. In conclusion the respondents requested that the sentence be changed and the lawsuit dismissed or alternatively that it be reversed and remanded.

Article 35
Lawful use shall not be prejudicial to the normal exploitation of the work or to the legitimate interests of the creator.

In turn, the Supreme Court upheld the Court of Appeals judgment. In particular it disagreed with the respondents’ opinion that the cover of their magazine constituted an independent work, inspired by another’s creative activity and incorporating that another’s work in the form of a quotation, as permitted under the fair use doctrine, rooted in the ARNR. The SC stated that a cover of a magazine can indeed constitute a work (be it an entirely independent one or inspired by someone else’s creative activity), but only on condition that such work, even though incorporating quotations, is primarily a result of one’s own intellectual efforts. In the Court’s opinion the cover of the “Polityka” magazine of 5 June 1999 could not constitute an independent creative work (resulting from the respondents’ own intellectual efforts) and incorporating a permissible quotation. The cover incorporated over 90% of the claimant’s work without any modifications, save for removing some of the subtitles and inserting others (such as the issue’s special report’s title). The respondents raised that their incorporation constituted a permissible quotation, justified by the rules governing this kind of creative activity. They also pointed out that the scope of the incorporation (90%) did not amount to an infringement of the author’s rights, since Article 29(1) explicitly allows to quote in works constituting an independent whole, not only fragments of disseminated works but also minor works in their entirety. According to the SC, incorporating such a vast majority of elements of the claimant’s poster could under no circumstances be qualified as a mere borrowing of snippets of the claimant’s work, because it is not the size of the quoted work but the purpose of the quotation coupled with the relation between the work and the quotation that it incorporates, that is of importance under Article 29. The Court stated that in certain justified cases it is permissible to quote even the entire work; however this is so only for as long as the quotation is incorporated for the purposes of explanation, critical analysis and teaching or is justified by the rules governing a given type of creative activity (genre). In any event, the quoted fragment (or even an entire work) must remain to one’s own intellectual input in such a proportion, so as to eliminate any doubts as to whether an independent work was created. And although there are no strictly defined rules describing the exact size of the permissible quotation, the Court held that by its nature, the quotation must be subordinate vis-à-vis the work that incorporates it. However, the issue of whether a particular quotation is permissible based on its size and scope will have to be analyzed on a case by case basis. In the case at hand, the Court found that the respondents’ own input into the cover was very limited and consisted of removing the subtitles (10% of the poster), minimizing the picture, and replacing the original slogan with the special report’s title. It is therefore impossible to justify the respondents’ theory that such “input” led to the creation of an entirely new and wholly independent work, merely inspired by the claimant’s poster.

The Supreme Court has also rejected the respondent’s allegation, that the use of the complainant’s work was justified by the rules of that particular genre (political propaganda). The respondents claimed that the cover of a magazine may consist of various graphic elements constituting pastiche, caricature or collage. And although the Court agreed with that statement, it nonetheless stressed that whenever speaking of a quotation of an artistic work (commonly used in pastiche, caricature and collage techniques), one must remember that all of the works so created must change the substance and the meaning of the work incorporated in them, so as to demonstrate their own view of the issues touched upon in the original work and not amount to a mere copycatting. Only then, will the permission of the author be unnecessary. Since the respondents’ cover did not meet those requirements, their reliance on Article 29(1) was unfounded and the use of the poster constituted a copyright infringement.

The Court also noted that even if the respondents were entitled to quote the entire work, without the author’s permission (as per Article 34) they were still under the duty to identify the author and the source of the work quoted, irrespective of whether such work was commonly recognized or not. Placing the author’s name and the source of the work quoted is a “conditio iuris” applicable to all works, not only those created by obscure authors but also to those whose authors are famous and widely recognized. The respondents’ excuse, that it was impossible to identify the author of the poster because he published his work anonymously also failed. The SC stated that it is the author’s moral right to publish his work anonymously, and if he chooses to do so this does not mean he authorizes others to claim authorship of that work. If it was indeed impossible to identify the author of the work, the respondents’ could have always placed information that the quotation comes from an anonymous author, and hence avail themselves of article 34 exception. The Courts has also stressed that the respondents had entirely disregarded the existence of article 8(3), which lists the entities authorized to represent authors who cannot be identified because they wished to remain anonymous3. The Court has also rejected the respondents’ argument, that the politically propagandist nature of the poster deprived it of the protection granted by the ARNR, since there is no such provision to this effect under the said Act. The Court added also, that the fact that the poster was a political propaganda, destined to be used as a source of pastiche, collage or caricature does not mean that its author cannot claim remuneration for such use (pursuant to proper licensing agreements).

Bearing in mind all of the above, the Supreme Court held, that both the court of I instance and the court of appeal rightly found the respondents liable for the infringement of the claimant’s moral and economic author’s rights and that the latter did indeed deserve the protection of the ARNR. Therefore, the Supreme Court upheld the lower courts’ decisions and ruled that it is possible to quote another’s work (even in its entirety) only if made for the purposes described in Article 29 of the ARNR and so long as the quotation remains in such a proportion to the personal creative input of the author incorporating it, so as to eliminate any doubts as to whether a new, individual work was created.

The case unequivocally sets the limits of a permissible quotation, interpreting the law very strictly and leaving no place for maneuver for those who want to free ride on other’s creativity under the veil of freedom of press and information. It also raises the standard of due care for professionals, such as magazines, who now need to exercise the highest level of due care when referencing or reproducing works of others.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Trade mark law, case II SA 2914/01

January 6th, 2005, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 February 2002, case file II SA 2914/01 published in Monitor Prawniczy 2002/7/291 held that Article 8 of the Convention does not constitute an independent basis for the protection of the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law.

R-107547

This case concerned trade mark invalidation proceedings of ROLEX R-107547 trade mark owned by Woźniak Krzysztof ROLEX Przedsiębiorstwo Produkcyjno Handlowo Usługowe. The proceedings were started by ROLEX SA company who owns ROLEX R-64281 trade mark.