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Archive for: press title

Trade mark law, case VI SA/Wa 611/11

April 30th, 2012, Tomasz Rychlicki

The Polish Patent Office partially refused to grant the right of protection for the word-figurative trade mark moja historia Z-338905. This sign was applied for PHOENIX PRESS Sp. z o.o. Sp.k. from Wrocław for goods and services in Class 09, 16, 35, 39, 41 and 42. The PPO based its refusal in Class 09, 16 and 41 on the earlier registration of the word-figurative trade mark Moja historia R-187793 owned by WYDAWNICTWO ERA Sp. z o.o. from Straszyn. PHOENIX only agreed that both companies are publishers, but the signs are meant for other goods and are directed to another recipients. Phoenix is a press publisher whose clients are adult women and WYDAWNICTWO ERA is a publisher of school history textbooks (mainly the history of Poland), which customers are students in primary schools.

R-187793

The PPO decided that there exists similarity of signs and goods and services which may lead to consumers confiusion. PHOENIX filed a complaint against this decision. The Company argued inter alia that the PPO could grant the right of protection and it would not deprive WYDAWNICTWO ERA of protection provided for instance in the Polish Act on Combating of unfair competition, if PHOENIX’s trade mark would actually threaten the existence and functions of the trade mark owned by ERA.

Z-338905

The Voivodeship Administrative Court in Warsaw in its judgment of 8 June 2011 case file VI SA/Wa 611/11 dismissed the complaint. The Court ruled that regulations on combating unfair competition are provided in a separate act, and it is justified by both the construction of the Polish legal system and due to the method of regulation. The law on combating unfair competition does not create absolute rights, but only the system of legal claims that provides protection in the event of unwanted and objectionable market behavior and actions (unfair competition delicts or torts), which is a different approach than those adopted in the Polish Industrial Property Law, which are based on the granting of absolute rights (monopolies) by an administrative decision.

Trade mark law, case II GSK 1033/10

February 22nd, 2012, Tomasz Rychlicki

This is another part of the saga of trade marks consisting of numerals. On March 2003, Agencja Wydawnicza TECHNOPOL Spółka z o.o. applied for the word trade mark 100 PANORAMICZNYCH Z-261876 for goods in Class 16 such as newspapers, charade magazines, booklets, brochures, flyers, calendars, posters, exercise books.

The Polish Patent Office decided that it cannot grant rights of protection for signs which cannot constitute a trade mark, or are devoid of sufficient distinctive character. The PPO reminded that the following are considered as being devoid of sufficient distinctive character (i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied, (ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods, (iii) signs which have become customary in the current language and are used in fair and established business practices. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 24 April 2010 case file VI SA/Wa 410/10. TECHNOPOL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 8 November 2011 case file II GSK 1033/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC agreed with allegations of violation of administrative proceedings that was based on erroneous findings that the disputed trade mark could not acquire secondary meaning. The Court noted that when the PPO is assessing whether or not a sign has a sufficient distinctive character, any circumstances accompanying its use in marking the goods in trade should be taken into consideration. Grant of a right of protection under previously mentioned rules may not be denied in particular where prior to the date of filing of a trademark application with the PPO, the trademark concerned has acquired, in consequence of its use, a distinctive character in the conditions of the regular trade. This indicates the possibility of acquiring secondary meaning by descriptive signs. In principle, secondary meaning can only be acquired by signs that are devoid of any distinctiveness, including descriptive or generic designations. Thus, the mere fact that the sign is purely informational does not preclude the acquisition of secondary meaning. Descriptive signs refer to the qualities or characteristics that may affect goods from various manufacturers.

Personal interest, case III CSK 120/09

April 8th, 2011, Tomasz Rychlicki

The Supreme Court in its judgment of 5 February 2010 case file III CSK 120/09, published in LEX no 585820 ruled that the registration of a newspaper or a journal does not prejudge the right to the press title and does not rule on conflict or lack of rights of the other party to the registered press title.

Categories: personal rights or interests | Polish courts | Polish Supreme Court | press title.

Trade mark law, case VI SA/Wa 11/10

November 23rd, 2010, Tomasz Rychlicki

On 22 October 1999 Jarosław Synowiec Agencja Kurier-Media from Iława applied for the word-figurative trade mark “KURIER Iławski TYGODNIK POWIATU IŁAWSKIEGO” Z-208891 for goods and services in class 16 and 42 such as publishing and printing a newspaper. The Polish Patent Office refused to grant the right of protection. The PPO found that the applied trade mark is also the title of the magazine with the same graphics and colors, which is published by Wydawnictwo Pomorskie in which Jarosław Synowiec previously worked as editor in chief. Due to long-term presence on the Polish market, this sign became widely known in public. Jarosław Synowiec filed a complaint against this decision.

Z-208891

The Voivodeship Administrative Court in Warsaw in its judgment of 6 July 2010 case file VI SA/Wa 11/10 dissmissed the complaint. According to the Court, the PPO reasonably assumed that the registration of the questioned trade mark was inadmissible because of the conflict with the law and rules of social coexistence. The registration of signs, whose use as a trade mark could be an act of infringement of property rights of third parties, such as the right to the company, the right to press title, copyright, etc. is not allowed. The VAC held also that whenever the collision of the rules specific to the system of formal protection (the principle of registration of signs) with the principle of protection of designations used effectively and genuinely in business occurs, the priority is given to the latter.

Trade mark law, case V CSK 293/09

September 2nd, 2010, Tomasz Rychlicki

Polish company Technopol sp. z o.o. succeeded to register in the Polish Patent Office over a hundred word and word-figurative trade marks in the form of Arabic numeral “100” and its multiples (200, 300, etc.) together with the word “Panoramicznych” or “Panoram”. Technopol was sued by another Polish entrepreneur, Roman Oraczewski who publishes crossword magazines under such titles as “222 Panoramiczne”, “333 Panoramiczne”, “500 Krzyżówek”, “300 Krzyżówek z Uśmiechem”, “300 Krzyżówek Panorama Rozrywki”. Mr Oraczewski claimed protection to its press titles and Technopol filed counter claims based on Article 10 of the Polish 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.

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.

Technopol requested the court to issue preliminary injuction ordering Mr Oraczewski to cease the sale and introduction to the market of all his magazines bearing titles that are identical or similar to Technopol’s trade marks. The Court granted the injunctive relief. Mr. Oraczewski did not agree with such order and after couple of years this case ended in a final dismissal of the application for preliminary injunction. Mr. Oraczewski sued Technopol for the compensation for the loss incurred due to the enforcement of the injunction. He claimed over 67.000.000 PLN loss. According to Article 746 §1 of the 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, when a preliminary injunction has been granted and the plaintiff fails to file the principal claim, withdraws it, the claim fails for procedural reasons, or is dismissed as unfounded, the defendant may demand compensation for the loss incurred due to the enforcement of the injunction. The claim expires if it is not pursued within one year from the moment the loss occured. This provision makes a plaintiff who obtained a preliminary injunction but ultimately failed with its principal claim liable towards the defendant for the loss caused by the injunction.

100_panoramicznych-cover

The Supreme Court in its judgment of 25 February 2010 case file V CSK 293/09 held that the liability provided under Article 746 § 1 of the CPC is independent of plaintiff’s fault. However, the Court dismissed Mr Oraczewski complaint because he did not follow the preliminary injunction order.

Press law, case II SA/Wa 1885/07

October 30th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in its order of 30 October 2008 case file II SA/Wa 1885/07 held that the legislature clearly included in the definition of the press all existing and emerging as a result of technical progress, means of mass communication (…), to disseminate periodical publications in print, video, audio, or other distribution technology, and although there are no established views on the recognition of internet communication as the press therefore the content of the provisions of Article 7(2) pt 1 of the Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), published in Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendmets, should, however, allow for the broad understanding of the concept of “press”, as it was also interpreted by the Supreme Court in its order of 27 July 2007 case file IV KK 0174/07. See “Press law, case IV KK 174/07“. The court found that the Internet journals that can be considered as press publications, do not need to have a typical electronic “newspaper” form, similar to that published in the on line system by the big companies with the well-known news titles. Of course, it may also mean that the status of “the press” will get everything that is posted on the Internet, just because it is the result of technological progress and gets a potentially unlimited audience. Whether a publication that is available online has press characteristics should decided by the goal/objective/tasks of such publications. Since the role and task of the press is to disseminate information, the periodicity of communication, the cyclic information of the public of certain facts of social, economic, political, educational, cultural, music, film and art issues, etc., under the title, name, address or even a link it would indicate the purpose pursued by the editors, the publisher and the author of an electronic publication, a website that was created specifically for this purpose.

Press law, case IV KK 174/07

March 31st, 2008, Tomasz Rychlicki

The Supreme Court in its order of 27 July 2007 case file IV KK 0174/07 held that publishing news within Internet website which was available under szyciepoprzemysku.prv.pl domain name, is the deemed as equivalent to press publishing. They were charged by the Prosecutor for publishing the press without registration which was the breach of the provisions of Article 45 of the Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), published in Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendments.

Anybody who publishes a daily newspaper or a periodical without registration or with registration suspended is subject to a fine penalty or the restriction of liberty.

All periodicals and newspapers must be registered at a local court and the registration form must contain: title of the publication, address of the editorial office, personal data of the editor-in-chief, the name and address of the publisher and frequency of publication. The Supreme Court stated that it is undisputed that the newspapers and magazines by the fact that they appear in the form of Internet transmission do not lose their characteristic of the press title, both when online communication is accompanied by the transfer of messages established on paper, printed, being their different electronic form which is available online and when the message exists only in electronic form on the Internet, but appears periodically, meeting the requirements referred to in Article 7(2) of the APL.

A daily is a general-information periodical print or a message transmitted via sound or sound and image published more frequently than once a week.

The Supreme Court once again stressed that the precondition for the recognition of mass media as the press, resulting from technical progress, depends on the periodic dissemination of publications and communications periodicals distributed via the Internet may take the form of newspapers or magazines, depending on the interval of appearance.

See also “Press law, case II K 367/08“.

Trade mark law, case V CK 280/04

November 23rd, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 17 June 2004 case file V CK 280/04 held that the owner of rights listed in Article 8(2) of the TMA can claim, with reference to the normative basis of these rights, for their protection, to prohibit the activities covered by the exclusive right, arising from the decision to register a trade mark, which violate these laws, without first having to invalidate the registration of the trade mark.

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;

The Court ruled that legal protection resulting from registration of the trade mark is only formal and does not constitute an obstacle to a prohibition of infringement of rights of a particular entity. The court is not bound by a final decision of the Polish Patent Office on the registration of the trade mark when it comes to assessing the facts underlying the judgment that was rendered in civil proceedings.

Press law, case I CKN 540/00

August 29th, 2005, Tomasz Rychlicki

The Supreme Court in its order of 5 March 2002 case file I CKN 540/00 held that provisions of the Polish 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, should not be applied in proceedings for registration of newspapers and magazines. The institution of registration of press titles was introduced to prevent the existence of identical or concurrent titles on the press market only.

Press law, case I ACr 159/92

July 28th, 2005, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 2 April 1992 case file I ACr 159/92 held that the name of a newspaper/gazette differentiates such periodical in the course of trade and thus it is deemed as personal right/interests (i.e. intangible personal property) eligible for protection under Articles 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 23
The personal interests of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.
§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.
§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

Press law, case I ACa 848/99

July 12th, 2005, Tomasz Rychlicki

The Appellate Court in Warsaw in its order of 18 November 1999 case file I ACa 848/99 interpreted the provisions of Article 21 of Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), published in Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendmets.

A registrar body shall deny the registration if:
[1] the application does not contain data that the Act describes (the daily newspaper’s or the periodical’s title, the seat of the publisher and the exact address of the editorial office, the particulars of the editor-in-chief, the particulars of the publisher, the frequency of publishing of the daily newspaper or the periodical) and

[2] if granting registration would constitute infringement of the right to the legal protection of an existing press title.

The Court held that the APL requires the court to refuse to register for the press title when such registration would infringe the right of protection of the existing title. The mere finding that the name of the journal/newspaper/gazette is convergen with the existing title is not sufficient to refuse registration. The refusal may occur if the convergence violates the right of protection to the existing press title.

Press law, case I CKN 1344/00

June 28th, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 24 October 2002 case file I CKN 1344/00 held that the current Polish legal system of registration of newspapers’ titles is not a pure system of notification, because it requires the registration court to consider the interest of both publisher and readers during the registration process, therefore, the registration process include some elements of control, but which does not violate the principle of freedom of the press. The Court deliberated on the provisions of Article 21 of Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), published in Journal of Laws (Dziennik Ustaw) No. 5, item 24, with subsequent amendmets.

A registrar body shall deny the registration if:
[1] the application does not contain data that the Act describes (the daily newspaper’s or the periodical’s title, the seat of the publisher and the exact address of the editorial office, the particulars of the editor-in-chief, the particulars of the publisher, the frequency of publishing of the daily newspaper or the periodical) and

[2] if granting registration would constitute infringement of the right to the legal protection of an existing press title.

According to the Court, the provision of providing the protection of an existing press title, was introduced not only because of the interests of a publisher, but also in the interest of readers, allowing them to select and buy a title, which they actually want to.

Press law, case V CKN 1040/00

June 21st, 2005, Tomasz Rychlicki

The Supreme Court in the order of 13 June 2002, case file V CKN 1040/00, held that the Registration Court which operates the Registry of titles of newspapers and periodicals shall not be entitled to settle the dispute over who is the publisher and who has the rights to the title of the press.

Press law, I ACa 216/98

June 10th, 2005, Tomasz Rychlicki

The Appellate Court in Warsaw in the order of 19 May 1998, case file I ACa 216/98, ruled that the refusal to register a press title is allowed when press titles are identical. The protection for the existing press title is based solely on article 21 of Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), Journal of Laws (Dziennik Ustaw) No. 5, item 24, with later amendmets.

A registrar body shall deny the registration if:
[1] the application does not contain data that the Act describes (the daily newspaper’s or the periodical’s title, the seat of the publisher and the exact address of the editorial office, the particulars of the editor-in-chief, the particulars of the publisher, the frequency of publishing of the daily newspaper or the periodical) and

[2] if granting registration would constitute infringement of the right to the legal protection of an existing press title.

The Court held that the protection exists only if both names/titles are identical.

Personal interests, case I ACa 560/04

February 10th, 2005, Tomasz Rychlicki

The Appellate Court in Katowice in its judgment of 4 November 2004 case file I ACa 560/04 ruled that the company, which in this case was understood as the company name (firm), is often intellectual interest/asset of significant value, which according to the will of the legislature is protected by the law. This is an absolute subjective right which is effective erga omnes, and it’s personal interest/right that is associated with an entrepreneur. The broadest spectrum protection that may be enforced not only in commerce but also may be brought against anyone who is in breach of the interest of entrepreneurs, is provided in Articles 23 and 24 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 23
The personal interests/rights of a human being, in particular to health, dignity, freedom, freedom of conscience, surname or pseudonym, image, secrecy of correspondence, inviolability of home, and scientific, artistic, inventor’s and rationalizing achievements, shall be protected by civil law independent of protection envisaged in other provisions.

Article 24
§ 1 The person whose personal rights are threatened by someone else’s action, may require the desist of that action, unless it is not illegal. In the event of the infringement one may also require, the person who committed the violation, to fulfill the actions necessary to remove its effects, in particular, to make a statement of the relevant content and appropriate format. According to the conditions laid down in the Code one may also require monetary compensation or payment of an appropriate amount of money for a social purpose indicated.

§ 2 If as the result of a breach of personal rights one has suffered pecuniary prejudice, the aggrieved person may claim compensation based on general principles.

§ 3 The above shall not prejudice the entitlements provided by other regulations, in particular in copyright law and the patent (invention) law.

The Court also ruled that if a press title is encroaching a realm of personal property, and if such action violates or threatens the interests of another entrepreneur, the sufferer may exercise his power by seeking civil protection through civil process. There must exist the real apprehensive of an infringements and valid registration for the press title for the effectiveness of such a claim.