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Meta tags in Polish case law

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in a judgment case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict.

I know that I should mention the opinion of the Advocate General Poiares Maduro of 22 September 2009 in joined cases C‑236/08, C‑237/08 and C‑238/08, Google France, Google Inc. v. Louis Vuitton Malletier, Google France v. Viaticum, Luteciel and Google France v. CNRRH, Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis.

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).

This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking.

Do not argue about copyrights and trade marks or you land in jail

March 14th, 2009, Tomasz Rychlicki

Indeks 73 is a new initiative created and developed on the national level in Poland at the beginning of 2008 by the people of cultural professions. Our aim is to protect freedom of artistic expression and scientific researches guaranteed by the constitution
(…)
Freedom of artistic creation and scientific research, as well as free access to cultural goods, is guaranteed in Article 73 of the Constitution of the Republic of Poland, and on the international level – in the Universal Declaration of Human Rights (article 27).

This was for the begining. You may find more interesting news at indeks73.pl website.

On 10 March, Waldemar Tatarczuk (artist, performer) has sent an alert to the net about the arrest of Zygmunt Piotrowski. Piotrowski is a recognized theoretician on individual concepts of avant-garde art, he combines the art with social and political reality. The artist works at the crossroads of philosophy, visual arts and science (he developed many technical patents).

Indeks 73 learned that Piotrowski’s detention was caused by his refusal to pay the court’s ordered fine to Lew Rywin. Piotrowski argued that his property will not be disclosed to such criminals as Rywin. Of course, the court did not agree with his statement and at the request of Heritage Films (owned by Lech Rywin) ordered Zygmunt Piotrowski to serve 8 days of detention. He should be released on 13 March 2009.

The dispute between Piotrowski and Lech Rywin (Heritage Films) is pending for more than ten years. It has started as a copyright dispute regarding Zygmunt Piotrowski’s creation of word-figurative logotype “Heritage”. Piotrowski created this logo for the Polish company Heritage Promotion of Music and Art. It presented the state court porch of Elizabeth and Christopher Penderecki with “heritage” word included. In 1991, Lew Rywin used this logotype to build the image of the new company, Heritage Films. Zygmunt Piotrowski has brought a copyright infringement case and won. The court’s judgment has forced the Heritage Films company to remove the sign.

Update on March 14, 2009.
It was late when I did the post so I forgot to add something important. Indeks 73 did not learn what was the exact reason that Piotrowski was obliged to pay a fine for Heritage Films.

And as regards courts’ judgments about trade marks including “heritage” word, the Supreme Administrative Court of the Republic of Poland (SAC) has issued two opinions. I have no specific information about civil courts’ rulings. The SAC in a judgment of 14 December 2001, case file II SA 3446/01, clearly ruled.

The English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark.

Just to remind you. Judgments of the Court of Justice of the EC in case C-3/03 P, Matratzen Concord GmbH vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs), [2004] E.C.R. I-3657 and C-421/04, Matratzen Concord AG vs. Hukla Germany SA, [2006] E.C.R. I-2303, have been issued couple of years later. ;)

One may say, that the SAC in a judgment of 12 March 2003, case file II SA 1867/02, provided very obvious holding.

In accordance with the general rules, in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

Translation, anyone?

February 13th, 2009, Tomasz Rychlicki

There is no English nor Polish translation available for Advocat General Verica Testenjak’s opinion in case C-5/08, Infopaq International A/S v. Danske Dagblades Forening. Anyone, please help.

How to straighten out the Polish law?

January 22nd, 2009, Tomasz Rychlicki

Just read the judgment of the Court of Justice of the EC of 22 January 2009 in case C-492/07, Commision v Republic of Poland. Sadly to say, for the time being, it is only available in Polish and French. So, how to straighten out the EU’s abilities to provide better and faster translations?

Categories: EU law | Judgments of Court of Justice of the EC.

Well written…

January 20th, 2009, Tomasz Rychlicki

The judgment of the Court of Justice of the EC in case C‑240/07, Sony Music Entertainment, is written in a really brief manner. It has only 39 paragraphs. I enjoyed a lot reading the opinion of the Advocate General, which unfortunately, is not available in English.

Categories: EU law | Judgments of Court of Justice of the EC | copyright law.

Tell what you have to if you are provider

October 20th, 2008, Tomasz Rychlicki

Judgment of the Court of Justice of European Communities of 16 October 2008 in case C-298/07, deutsche internet versicherung.

1. Article 5(1)(c) of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’) must be interpreted as meaning that a service provider is required to supply to recipients of the service, before the conclusion of a contract with them, in addition to its electronic mail address, other information which allows the service provider to be contacted rapidly and communicated with in a direct and effective manner. That information does not necessarily have to be a telephone number. That information may be in the form of an electronic enquiry template through which the recipients of the service can contact the service provider via the internet, to whom the service provider replies by electronic mail except in situations where a recipient of the service, who, after contacting the service provider electronically, finds himself without access to the electronic network, requests the latter to provide access to another, non-electronic, means of communication.

Typosquatting and trade mark infringement

October 15th, 2008, Tomasz Rychlicki

There is this case pending Vulcan Golf, LLC v. Google Inc. et al., No. 07 CV 3371 (N. Dist. Ill. June 15, 2007). You’ll have all necessary documents available at justia.com website. Ben Edelman from Harvard University made the whole case much more worse to argue for Google.

Edelman and other lawyers have filed a class action lawsuit representing domain owners who claim the Google Adsense for Domains (AFD) program is assisting in violating trademarks. A hearing is scheduled for as early as next month in which Edelman will ask an Illinois federal judge to allow the case against Google to proceed.

When it comes to trade mark infringement and keywords then all I can say is that European trade mark lawyers are eagerly awaiting for the Court of Justice of the EC to answer couple of important questions. In case C-236/08, Google France and Google, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark[2] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering infringing goods is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that the trade marks have a reputation, may the proprietor oppose such use under Article 5(2) of the directive and Article 9(1)(c) of the regulation?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or the regulation, may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000,[3] so that that provider cannot incur liability until it has been notified by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-237/08, Google France, French Cour de Cassation reffered the following questions.

1) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks[1] be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

2) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, [3] so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

In case C-238/08, Google France, French Cour de Cassation reffered the following questions.

1) Does the reservation by an economic operator, by means of an agreement on paid Internet referencing, of a keyword triggering, in the case of a request using that word, the display of a link proposing connection to a site operated by that operator in order to offer for sale goods or services, and which reproduces or imitates a trade mark registered by a third party in order to designate identical or similar goods, without the authorisation of the proprietor of that trade mark, constitute in itself an infringement of the exclusive right guaranteed to the latter by Article 5 of First Council Directive 89/104/EEC of 21 December 1988?[1]

2) Must Article 5(1)(a) and (b) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks be interpreted as meaning that a provider of a paid referencing service who makes available to advertisers keywords reproducing or imitating registered trade marks and arranges by the referencing agreement to create and favourably display, on the basis of those keywords, advertising links to sites offering goods identical or similar to those covered by the trade mark registration is using those trade marks in a manner which their proprietor is entitled to prevent?

3) In the event that such use does not constitute a use which may be prevented by the trade mark proprietor under the directive or Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark,[2] may the provider of the paid referencing service be regarded as providing an information society service consisting of the storage of information provided by the recipient of the service, within the meaning of Article 14 of Directive 2000/31 of 8 June 2000, 3 so that that provider cannot incur liability before it has been informed by the trade mark proprietor of the unlawful use of the sign by the advertiser?

I may presume that there will be another questions asked, and not only from France.

Think before extracting

October 10th, 2008, Tomasz Rychlicki

Judgment of the Court of Justice of European Communities of 9 October 2008 in case C‑304/07, Directmedia Publishing GmbH.

The transfer of material from a protected database to another database following an on‑screen consultation of the first database and an individual assessment of the material contained in that first database is capable of constituting an ‘extraction’, within the meaning of Article 7 of Directive 96/9 of the European Parliament and of the Council of 11 March 1996 on the legal protection of databases, to the extent that – which it is for the referring court to ascertain – that operation amounts to the transfer of a substantial part, evaluated qualitatively or quantitatively, of the contents of the protected database, or to transfers of insubstantial parts which, by their repeated or systematic nature, would have resulted in the reconstruction of a substantial part of those contents.

Categories: Directive 96/9 | EU law | Judgments of Court of Justice of the EC | computer law | digital economy.

Please pay more attention

October 7th, 2008, Tomasz Rychlicki

Almost every day, I read the electronic version of Polish newspaper Rzeczpospolita. I think that it is a really professional magazine. I do not want to discuss the issue of paid archives – it’s their vision of publishing and how to do the business. However, there are sometimes errors that appear in different articles and it discourages me from reading the whole newspaper.

It challenged before the court of first instance a decision of European patent clerks (OHIM) regarding the refusal of cancellation of one registration of a trademark.

The emphasis of mine. This quote comes from the article written by Michał Kosiarski, entitled “Kurier równorzędny z listem poleconym“, in which, the author discussed the latest judgment of the Court of Justice in case C-144/07 P, K-Swiss v. OHIM.

At the same time I ask my P.T. readers to let me know of any mistakes you find on my website.

Categories: Judgments of Court of Justice of the EC | legal research | trademark law.

May 8th, 2008, Tomasz Rychlicki

Adidas Am., Inc. v. Payless Shoesource, Inc., 3:01-cv-01655 (D. Or. Nov. 8, 2001). $305 million judgment. The issue was a trade mark infringement of 3 stripes. So, that’s more than $100m per stripe as Marty Schwimmer has noted. There are some documents related to this case at Marty’s website too. Adidas is very protective when it comes to this sign/mark. As an example you may read cases that were brought before The Court of Justice of the European Communities. Case C-102/07, adidas and adidas Benelux.

First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the requirement of availability cannot be taken into account in the assessment of the scope of the exclusive rights of the proprietor of a trade mark, except in so far as the limitation of the effects of the trade mark defined in Article 6(1)(b) of the Directive applies.

C-408/01, Adidas-Salomon AG and Adidas Benelux BV v. Fitnessworld Trading Ltd., OJ C 304, 13.12.2003, p. 5.

1. A Member State, where it exercises the option provided by Article 5(2) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark.

2. The protection conferred by Article 5(2) of Directive 89/104 is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.

3. The fact that a sign is viewed as an embellishment by the relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of Directive 89/104 where the degree of similarity is none the less such that the relevant section of the public establishes a link between the sign and the mark. By contrast, where, according to a finding of fact by the national court, the relevant section of the public views the sign purely as an embellishment, it necessarily does not establish any link with a registered mark, with the result that one of the conditions of the protection conferred by Article 5(2) of Directive 89/104 is then not satisfied.

Well, what can I say? Such marks and sign will always bring public controversy. I can unmodestly recommend you my post titled “Non-traditional trademarks in Polish case law” and “Reclaim Magenta“.