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Archive for: Polish Chamber of Patent Attorneys

Procedural law, case II GSK 248/14

February 26th, 2014, Tomasz Rychlicki

On August 2011, the Polish Patent Office invalidated the right of protection for a trade mark owned by a Polish entity. On 12 September 2012, the Austrian company and the Polish business filed a complaint against the decision of the PPO. The Austrian entrepreneur claimed that it is a legal successor in the case of the invalidated trade mark. As evidence, the company provided an agreement of transfer of trade mark rights.

In a letter of 6 November 2012, the Voivodeship Administrative Court in Warsaw called on the applicant, represented by the patent attorney, to submit a document setting out the authority to represent the applicant, i.e. the original or certified copy of an extract from the official register of companies, which would prove that a person who signed the PoA was a persons properly authorized to represent the applicant on the day of granting the power of attorney that has been attached to the complaint, together with a sworn translation into Polish, within thirty days under pain of dismissal of the action. The letter was delivered to the patent attorney on 12 November 2012. On 12 December 2012, the Court received a request for an extension of the deadline for filing the requested documents. The applicant argued that the person responsible in the applicant’s company for providing such documents was on leave in November 2012, and later, the document was sent by mail, however, it has not been delivered on time.

The Voivodeship Administrative Court in Warsaw in its order of 31 January 2013 case file VI SA/Wa 1810/12 rejected the complaint due to the failure to comply with the Court’s request of 6 November 2012. The Court noted that the deadline to correct formal deficiencies of a complaint is a statutory deadline. Statutory deadlines that are set for parties and participants in the proceedings cannot be extended or shortened. In addition, the VAC cited the order of the Supreme Administrative Court of 20 December 2006 case file I FSK 29/06, and noted that the applicant, while deciding to start its business in Poland, should properly protect its interests, by preparing documents that would authenticate PoAs granted to persons who represent the company, among others, in administrative proceedings. The Court also noted that 80 days have passed from the date of delivery of the letter to the attorney of the Austrian company, but the requested documents were not received by the Court.

In the letter of 20 March 2013, both applicants filed a request to restore the deadline in order to supplement formal deficiencies of the complaint. The request was based on the fact that the person authorized to issue and deliver of the document was long absent, and finally in December 2012, a copy of this document in German, was sent by mail. The whole delay was caused by the Christmas holidays, abroad stay, and his illness in January 2013. The application had attached a copy of the scanned document in German that was received via e-mail.

The Voivodeship Administrative Court in its order of 25 July 2013 case file VI SA/Wa 1810/12 refused to restore the deadline and ruled that the action in the administrative proceedings that was taken by the party after the expired deadline is deemed as ineffective, while, in the case where a party has failed to act without its fault, the court decides on the request to restore the deadline. The request should be submitted to the court in which the action was to be made within seven days from the time of cessation of the cause of failure to comply with the deadline. The requesting party must substantiate circumstances indicating a lack of its fault in complying with the established deadline. The criterion of lack of fault, which is a prerequisite for the validity of the request to restore the deadline is based on the party’s fulfillment of an obligation to act in special care when making a procedural step. Both legal comentators and the case law of the Supreme Administrative Court states, that in assessing the occurrence of this evidence, the court should adopt an “objective measure of care” which may be required of each party who duly cares about their interests. The lack of fault can only be proved when the party could not remove the obstacle even with the greatest effort. The Court decided that the circumstances indicated by the applicant did not exclude the possibility to meet the deadline in order to fulfill formal deficiencies of the complaint.

The Supreme Administrative Court in its order of 19 February 2014 case file II GSK 248/14 dismissed the cassation complaint filed by both companies.

Polish patent attorneys, case VI SA/Wa 912/12

October 31st, 2012, Tomasz Rychlicki

On February 2012, the Polish patent attorney requested the President of the Polish Patent Office to delete her from the list of patent attorneys. She pointed out that due to lack of interest in services provided by her, she decided to return the Patent attorney identity card issued for her by the Polish Patent Office, and she also announced that on 18 October 2003, she has changed marital status and surnname. The PPO requested her to clarify the request. She did not respond to this properly delivered letter. On March 2012, The President of the PPO deleted the patent attorney from the list of professional representatives. She filed complaint against this decision.

The Voivodeship Administrative Court in its judgment of 29 august 2012 case file VI SA/Wa 912/12 dismissed the complaint. The Court ruled that the change of the surname of a patent attorney in connection with marriage does not cause a loss of power to conduct her professional activities, however, it may the basis to change of an entry in the list of patent attorneys. The PPO properly deleted the applicant from the list of patent attorneys as requested. The request left the PPO no chances to make any other decision than delivered.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys | Voivodeship Administrative Court.

Access to public information, case I OSK 2026/11

May 23rd, 2012, Tomasz Rychlicki

On 5 February 2011, Bogusław Kler, a Polish patent and trade mark attorney, requested Anna Korbela, the President of the Polish Chamber of Patent Attorneys, to disclose information concerning, inter alia, copy of the audio recording of the National Convention of Patent Attorneys that was held in 2010. The President answered that such request should be dealt with and decided by the National Council of Patent Attorneys. Bogusław Kler filed a complaint for failure to act (administrative inaction). Mr Kler argued that the President did not properly consider his request or did not issue a refusal decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 July 2011 case file II SAB/Wa 142/11 obliged the President of the Polish Chamber of Patent Attorneys to examine the application filed by Mr Kler. The Court found that the position of the President could not be accepted because it was is inconsistent. Once the President said that she did not remain inactive, because the request was passed to do another, appropriate body, and then later, she found that the requested information is not public information. Once the President announces that it hasn’t got the requested recordings, and then she states that Mr Kler may listen to them at the seat of the authority. The President filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2011 case file I OSK 2026/11 dismissed it and ruled that information about the activities of the professional self-government of the Polish patent attorneys is a public information. It was indirectly interpreted from the provisions of Article 17 of the Polish Constitution, under whose self-governments may be created within a profession in which the public repose confidence, and such self-governments should concern themselves with the proper practice of such professions in accordance with, and for the purpose of protecting, the public interest. This simply means that the activities of the government and its bodies fail within the meaning of a public character or matters, and such information concerning these activities – has the nature of public information.

Access to public information, case I OSK 1550/11

May 7th, 2012, Tomasz Rychlicki

On 22 November 2010, Bogusław Kler, a Polish patent and trade mark attorney, requested the President of the Polish Patent Office to disclose public information concerning the word trade mark PRINCE POLO R-148617, in order to know, whether during the examination, the trade mark POLO R-69429, or other marks containing this word were taken into account, and in particular, if the expert who was proceeding and examining the trade mark application, noted and listed any signs with the word “polo” in the examination card of the trade mark PRINCE POLO R-148617. In addition, Mr Kler requested for information on whether in a possible conflict between “Prince Polo” and the earlier “POLO” signs, the examiner considered any settlement actions of the owners of such trade marks, indicating that he is not requesting the full texts of documents, but seeking to confirm whether such documents if any, were submitted to the trade mark file and they were used in the assessment for the trade mark PRINCE POLO.

The President of the PPO expressed the opinion that the examination card of the trade mark PRINCE POLO R-148617 is not deemed as public information, because it is not directed the parties of the proceedings, and therefore it cannot be disclosed. With regard to information on materials concerning possible settlement between the trademark owners, the President explained that such information can be obtained by directly asking the entitled entities. At the same time, the President pointed out that decisions on the granting of exclusive rights belong to independent experts, and the requested filed by Mr Kler can be read as an unfounded and unjustifiable attempt to control of examinations conducted by experts and the procedures for the granting of exclusive rights. The President argued that such control process of the legality of decisions undertaken by the Polish Patent Office falls within the competence of administrative courts. The method of preparing and filing of the examination card of a trade mark is not regulated in any legislation being in force. Information to be included in it depends on the expert. The examination card is somehow a reflection of thinking of a person who was handling a given case.

Bogusław Kler filed a complaint for failure to act (administrative inaction). Mr Kler argued that the President of the PPO did not consider his request or did not issue a refusal decision.

The Voivodeship Administrative Court in its judgment of 13 May 2011 case file II SAB/Wa 88/11 dismissed the complaint. The VAC held that information requested by Mr Kler is not public, in particular, these are not public data. The Court held that the examination card is not an official document since it does not contain a declaration of will/intent or knowledge of a public official. Based on the card, it is not possible to unambiguously determine conditions, that were followed by the authority granting the right of protection for a trade mark. The card is a working internal document of the PPO, which provides information of operational activities aimed at a comprehensive assessment and examination of the validity and legitimacy for granting the protection of the sign applied for. Mr Kler filed a cassation complaint.

The Supreme Administrative Court in its judgment of 1 December 2011 case file I OSK 1550/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that according the Constitution of the Republic of Poland, a citizen should have the right to obtain information on the activities of organs of public authority as well as persons discharging public functions. Such right should also include receipt of information on the activities of self-governing economic or professional organs and other persons or organizational units relating to the field in which they perform the duties of public authorities and manage communal assets or property of the State Treasury. Limitations upon the right of information may be imposed by the Act solely to protect freedoms and rights of other persons and economic subjects, public order, security or important economic interests of the State. The principle of the “right to information” provided in the Constitution sets basic rules of interpretation of this right. It is a constitutional right, therefore, the law defining the procedures for access to information should be interpreted broadly, and any exceptions to this right should be construed and interpreted narrowly. This implies the use in relation to these acts of interpretation, which favor expanding rather than narrowing the obligation to disclose information. The enumeration, what is deemed as public information, is provided in the Polish Act on Access to Public Information, however this enumeration includes exemplary situations, and it does not cover all cases in which information is disclosed. The Court noted that public information is each information or data that was created or referred to the widely defined public authorities, or was created or referred to other entities performing public functions in the execution of tasks of public authority. The Supreme Administrative Court shared the view that all files of entire administrative proceedings conducted by a public authority, constitutes public information – including both documents created and held by the authority in connection with a particular case. Therefore, the Court held that, in principle, all that is in the file of the proceedings, regardless of whether it will be a public document or private, should be disclosed. It does not matter whether the document in the file is an “internal” or “working”. Even giving up the assumption that the whole proceedings constitute public information, it cannot be excluded that given documents from these files have such nature. In each case, every request for disclosure of public information requires a detailed analysis. Only as a result of such analysis, the authority should decide whether the requested information is public, followed by what standards govern the procedure of its disclosure.

Polish patent attorneys, case II GSK 833/10

January 20th, 2012, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 1 September 2011 case file II GSK 833/10 decided the cassation appeal that was filed by the National Council of Patent Attorneys in the case of the candidate for the patent attorney traineeship. The candiate did not agree with grades that she received during the entry exam. The SAC held that the cassation complaint was unjustified because of the lack of clarity in the rules of operation of the examination committee could cause significant differences in the assessments and grades that were issued by individual members of the committee. Grades that were issued for the same answer for the same question were so significantly different (4 and 10, 3 and 10) that it could indicate only that not all members of the committee acted in accordance with objective, reliable rules. The Supreme Administrative Court held that the Voivodeship Administrative Court in its judgment of 11 February 2010 case file VI SA/Wa 1713/09 correctly annulled the resolution of the National Council of Patent Attorneys, because the Council did not use clear criteria for assessing candidates for the patent attorney traineeship, thus giving rise to the recognition by the VAC that such resolution violated the requirements for reasons and justification of the administrative decision. The SAC held that the sufficient guarantee of proper operation of the committee would be, apart from the personal reliability of its members, formulation and disclosure of clear criteria for evaluation in all fields of the exam.

Polish patent attorneys – amendments to the law

January 26th, 2011, Tomasz Rychlicki

On 26 January 2011, the Act of 24 September 2010 amending the Polish Act on Patent Attorneys, published in Journal of Laws No. 197, item 1308, came into force. According to recent changes Polish patent attorneys may now represent clients in matters related to combating unfair competition. Patent attorney whose practice is based on the employment agreement takes an independent position in the entity that employs him/her and is directly subordinate to the head of an organizational unit, and if the organizational unit employs two or more patent attorneys, one of them is responsible for coordinating the work done by all employees.

A patent law firm may be organized as a stock company in which only inscribed shares are allowed. The Act introduced also the obligation of professional development for patent attorneys. Meanwhile it liberalized advertising rules.

EU nationals who meet the conditions prescribed by law are allowed to practice in Poland. A foreign citizen has to be able to speak Polish language to the extent necessary to practice on the Polish territory, in particular, to act as a representative in proceedings before the Polish Patent Office, as well as in judicial and administrative courts.

The Act also introduces the rules on cross border services. These services are deemed as temporary and occasional activities of assistance in matters of industrial property that are performed by citizens of EU Member States or third country nationals who hold a long-term residence permit of the European Communities, which are also authorized to perform these actions in the Member State.

The person who wants to star cross-border services for the first time on the Polish territory, is required to submit to the National Council of Patent Attorneys a written statement regarding these services together with the certificate of profession translated into Polish, any document being a proof of nationality, and a copy of liability insurance.

A person who performs cross-border services in the Republic of Poland by representing a client in proceedings before administrative bodies or courts, is required to indicate to the authority conducting the proceedings a person who will be authorized to receive official letters in the Republic of Poland. In case of no indication of such a person, a letter will be delivered to the party represented, if he or she is a resident of the Republic of Poland. In other cases, a letter will be left on file with the effect of service, the body should instruct about such actions at the first delivery.

The Act also made changes with regard to patent attorneys’ traineeship (the scope, costs, final exams) and disciplinary responsibility of patent attorneys. The rules on suspending the professional activity were also introduced. The suspension has to take place if the patent attorney is employed in the Polish Patent Office, the administrative court, the European Patent Office or the Office for Harmonization in the Internal Market, take the office of judge, become a notary, a bailiff, or the prosecutor, assessor or a notary public prosecutor, or being on traineeship for the mentioned above functions.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys.

Trade mark law, case VI SA/Wa 503/10

July 20th, 2010, Tomasz Rychlicki

In January 2010, Polish company LMW sp z o.o. represented by a patent attorney filed via the Polish Patent Office (PPO) a complaint to the Voivodeship Administrative Court in Warsaw, against the decision of the PPO on the refusal to grant a right of protection for LIBERTY MOTORS trade mark Z-315048.

Z-315048

In the Court’s order of 8 April 2010, a representative of LMW was asked to remedy the formal deficiencies of a complaint by submitting a power of attorney/proxy to act on behalf of the applicant before the voivodeship administrative court or before administrative courts and the document setting out the power to represent the applicant, i.e. the original or a certified copy of the full entry from the National Court Register, within 7 days from the date of service of summons under pain of dismissal of the action. This summons were served on 16 April 2010. The deficiencies were not removed.

The Voivodeship Administrative Court in Warsaw in its order of 31 May 2010 case file VI SA/Wa 503/10 rejected LMW’s complaint. The Court held that according to provisions of article 58 § 1 pt 3 of the Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270 with later amendments, the administrative court shall reject the complaint, if it was not compensated for the formal deficiencies, within the prescribed period of time.

Polish patent attorneys, case II GZ 224/09

June 28th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 18 May 2010, case file II GZ 224/09 ruled that the Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270, with subsequent amendments, did not afford a possibility of making a further appeal, or complaint from the judgments delivered by the Supreme Administrative Court. This means that the decision of the Supreme Administrative Court becomes final upon its publication. The administrative proceedings, as a general rule, is divided into two stages of jurisdiction. This principle is consistent with the regulations included in Article 176(2) of the Polish Constitution.

Polish patent attorneys, case I CSK 481/09

June 25th, 2010, Tomasz Rychlicki

The Supreme Court in its judgment of 16 June 2010, case file I CSK 481/09 held, that a party to the proceedings may request from its legal representative to compensate for damages only if the representative did not act diligent and failed to meet the prevailing standard of competence in his or her work on client’s behalf. The court pointed out that the representative (advocate, patent attorney) is responsible for the due care, and not for the result of the case. The fact that a representative has been unsuccessful in conducting a case, even if the reasoning of a judgment indicates that this was the result of his or her mistake, it does not mean legal malpractice, and that the client can claim compensation for the loss suffered by the this injury.

The final ruling is binding not only for the parties and the court which issued it, but also to other courts and public bodies and authorities, and others in all cases provided for in the law. This is called “material validity of the judgment”, also known as “extended validity”.

Categories: case law | Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish patent attorneys | Polish Supreme Court.

Polish patent attorneys, case I OZ 356/10

May 30th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 17 May 2010 case file I OZ 356/10, held that if legal representative refuses to prepare and file an appeal because he or she believes that such appeal would be unfounded, and informs the party, giving a proper opinion in this matter, this must be regarded as giving up the cassation complaint by a represented party, since a party has no standind in this area because the appeal must be made by a legal representative only under pain of dismissal of the action. The entitled representatives to file a cassation appeal are only these mentioned in the Law on proceedings before administrative courts, and so, in particular, advocates and legal advisors (radca prawny). In addition, the cassation complaint may also be made by the tax consultant – on tax obligations, and in matters of industrial property – by the patent attorney. The obligation to file a cassation by a professional results from two-instances of the administrative judiciary and to ensure more efficient proceedings. The obligation to file a cassation by a professional results from two-instances of the administrative judiciary and to ensure more efficient proceedings. This requirement was also introduced in order to ensure an adequate level of the form and content of a cassation complaint, and thus to provide a party the certainty that there will be no risk of rejection of its complaint. The knowledge of the regulations and enforcement procedures that are applicable to judicial proceedings can be expected and required from a professional representative. The refusal to prepare and to file a cassation complaint is not subject to review by the administrative courts. However, if in doubt, a party may apply to the competent authority of the professional autonomy requesting to review the merits of such action.

Categories: case law | Polish Chamber of Patent Attorneys | Polish patent attorneys | Polish Supreme Administrative Court.

Polish patent attorneys – substitution and delivery of documents

May 16th, 2010, Tomasz Rychlicki

According to the provisions of Articles 240 and 241 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, a representative shall be authorised to appoint a substitute (substitution).

Article 240
1. Except for the persons referred to in Article 236(2), a representative shall be authorised to appoint a substitute (substitution).
2. Authorisation by another joint right holder shall not be required for performing conservatory action.

Article 241
1. Where two or more persons are parties to a proceeding and no representative has been appointed, the persons concerned shall be required to indicate one address for service. Failing to indicate such address, the address of the person named first in the application or in another document, on the basis of which the proceeding is instituted, shall be deemed to be that address.

2. At a party’s request, the Patent Office shall also send letters addressed according to paragraph (1) to the addresses additionally indicated by that party. This provision shall also apply accordingly, where only one person who has appointed a representative is a party to the proceeding.

As the effect of establishing a substitute, the same relationship, which was established between a party and a patent attorney is also created between a party and a substitute, while maintaining the existing powers of attorney. This means that the party has two equivalent proxies since the establishment of an effective substitution. See for instance opinions presented by the Supreme Court Civil Chamber in a judgment of 13 February 2004, case file IV CK 269/02, the Supreme Court Civil Chamber in a decision of 7 November 2006, case file I CZ 78/06, or judgment of the Voivodeship Administraive Court in Poznańof dnia 20 February 2007, case file I SA/Po 1432/06.

On the basis of provisions of Article 40 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, where a party has established a representative, all documents are delivered to the proxy and not a party.

Article 40.
§ 1. Documents shall be served on the party to proceedings, and if the party is acting by a representative – on that representative.
§ 2. If a party to proceedings has appointed an attorney then documents shall be served on the attorney.
§ 3. If a case has been commenced at the instigation of two or more parties the documents shall be served on all parties, unless the application indicates that one of them is authorised to receive service.

Due to the limitation established for granting the substitute power of attorney only to patent attorneys and provisions of article 237(1) of the IPL which provide that there can be only one proxy for one legal action, in case of existence of a substitute, all correspondence will be delivered to one person – the agent or a substitute.

Article 237
1. In the performance of one act a party may be represented by one natural person only.
2. A power of attorney shall be in writing and shall be included in the files on performance of first legal act.
3. Where the power of attorney covers two or more cases, it shall be included in the files of that of the cases, in respect of which the first act is performed by the representative. When acting in other cases covered by the power of attorneys, the representative shall be required to furnish a certified copy of the power of attorney.
4. A patent agent shall be allowed to certify himself a copy of the power of attorney granted to him.
5. Failing to pay a due stamp duty for the power of attorney, the Patent Office shall invite the representative to make relevant payment and in case it should not be made, it shall additionally invite the party to confirm, within the fixed time limit, the acts performed by the representative. Failing to observe the fixed time limit, the provision of Article 223(4) shall apply accordingly.

The decision in this regard will be taken following an assessment of attorney documents and attorney substitution. However, in the case of granting substitution of confluence with the scope of powers of attorney and without indicating an address for delivery of documents, the Polish Patent Office will continue to deliver documents only to a substitute.

Polish patent attorneys – authentication of documents

April 25th, 2010, Tomasz Rychlicki

According to the provisions of Articles 76a § 2, 3 and 4 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments, a party may file copy of a document if it complies with the original one and its originality have been authenticated by a patent attorney acting as a representative. According to the recently amended Act on the authentication of documents, such documents should include: the signature of a patent attorney, the date and the venue for its preparation, and also on a request: the time of the transaction. If the document contains special features (annotations, corrections or damages) patent attorney will acknowledge it in the authentication. The authentication of originality that was included in the copy of the document has the nature of the official document. In special circumstances, the Patent Office may request a party to submit original documents.

Procedural law, case VI SA/Wa 2094/06

February 27th, 2010, Tomasz Rychlicki

The Polish company BI-ES sp. z o.o., the owner of the word-figurative trade mark BI-ES R-137322, requested the Polish Patent Office to invalidate the right of protection for the word trade mark BI-KOR R-151731 registered for BIKOR Elżbieta Korbutt. for goods in Class 3 such as cosmetics, in Class 5 such as pharmaceutical preparations for cosmetic purposes, and in Class 41 for services such as organizing and conducting cosmetic and make-up exhibition for contests and educational purposes.

R-137322

BI-ES noted that its trade mark was registered with the earlier priority for the wide spectrum of goods in Class 3 such as perfumery products, perfumes, toilet waters, perfumed sprays, colognes, essential oils and others. The Company claimed that both trade marks are very similar and BIKOR used the idea to separate of the first syllable BI from the second segment with a dash.

BIKOR argued that its sign was present on the marker much earlier than BI-ES. This sign has been applied to the Polish Patent Office in March 1995, four years before the trade mark BI-ES, but this application failed due to temporary financial difficulties.

The Polish Patent Office dismissed the request and ruled that both trade marks differ in all three aspects. The PPO noted that it would be hard to prove that there was imitation on the notation of both signs, becasue there were many registrations of marks with a dash. BI-ES filed a complaint against this decision. The Company argued that BIKOR was not represented properly, becasue the PoA has not been signed by Elżbieta Korbutt. The signature was partially illegible. Admission of a case where the party was represented by a patent attorney without proper PoA is a flagrant violation of the procedural rules and the decision resulting from that proceedings should be annulled because it was rendered as a result of defectively performed administrative proceedings.

The Voivodeship Administrative Court in its judgment of 7 February 2007 case file VI SA/Wa 2094/06 dismissed it. The Court ruled that the PPO did not correctly examine the similarity of signs based on the etymology of BI- prefix, however, the whole assesment proved that both signs are disimilar. The VAC noted that the power of attorney should be given in writing and attached to the case file when making the first legal action. The Court found that the copy of PoA was on the case file and it was issued under the authority and properly signed next to the stamp of a company. The original PoA was on file for the trade mark BI-KOR R-151731. The power of attorney was not challenged in the course of the invalidation proceedings, by the trade mark owner or the opponent.

Patent Attorneys, case C-564/07

June 13th, 2009, Tomasz Rychlicki

The Court of Justice of the EU (Third Chamber) in its judgment of 11 June 2009 Case C-564/07, Commission of the European Communities v. Republic of Austria, declared that, by obliging patent lawyers lawfully established in another Member State who wish temporarily to perform services in Austria to appoint an approved agent resident in Austria, the Republic of Austria has failed to fulfil its obligations under Article 49 EC.

Polish patent attorneys, case III CZP 118/08

January 29th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 23 January 2009 case file III CZP 118/08 held that an advocate, legal advisor or patent attorney who is acting as a substitute representative cannot authenticate a copy of the basic power of attorney that was issued in the name of the primary proxy. The court also ruled that the defect in form of a pleading based on improper form of powers can be removed by a confirmation of a party that issued the primary POA. The court should assign the other party a reasonable time limit for supplementation of a pleading and POA.

Trade mark law, case VI SA/Wa 1388/07

January 15th, 2009, Tomasz Rychlicki

On 11 May 2004, the Polish Patent Office issued a positive decision on the registration of EAU DE TOKYO R-153843 trade mark for goods in Class 3. It was applied for by the MGT Parfum Création from Hofheim-Wallau on 7 September 2000.

R-153843

Kenzo Societe Anonyme from France filed a request for invalidation of the right of protection claiming it was granted in violation of the provisions of Articles 8(1) and 9(1)(i) 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.

Article 8
A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;

Article 9
(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

The request had to be based on the old Act because the trade mark application was filed while the old act was in force. KENZO was claiming the similarity of marks, KENZO TOKYO BY KENZO R-207663 and TOKYO BY KENZO R-207662 and their reputation. The French company has also argued that the German company imposes its trade mark on similar bottles to Kenzo’s bottles. On February 2007, the PPO rejected the invalidation request and KENZO has appealed this decision.

R-153843-3D

The German company did not respond to the correspondence on this matter and no other address was known. During earlier hearings on July 2008, the Voivodeship Administrative Court in Warsaw had to ask the President Polish Chamber of Patent Attorneys to designate a curator for the German company. The curator did not agree with KENZO arguments. He pointed that the assessment had to be a comparison of the signs as they were registered, and not the packaging.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1388/07 dismissed the complaint. The Court acknowledged the fact that the PPO did not negate the reputation of KENZO trade marks. According to the VAC, the PPO was not obliged to take into account KENZO’s reputation, since the Office found that the disputed signs were not similar. The Court did not agree with the argument that these signs had similar associations because cosmetics marked by them come from Japan. According to Judge Olga Żurawska-Matusiak such conclusion would be too far-reaching. She also pointed that the PPO has properly assessed both trade marks. The issue of passing off of packages should be decided by a civil court in a different proceedings.

Polish patent attorneys, case III CSK 337/07

October 29th, 2008, Tomasz Rychlicki

The Polish Supreme Court in a judgment of 16 October 2004, case file CK III 580/03, published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2005/9/164/109, recognized the scope of representation for matters relating to unfair competition quite narrowly with regard to Polish patent attorneys’ profession.

Fortunately, there is a judgment of the Polish Supreme Court of 13 March 2008, case file III CSK 337/07. The Court was very brief and set a clear rule in one important sentence.

Patent attorney may be a representative in each case relating to unfair competition.

This case was brought before the Supreme Court by Unilever Polska. The company sued Przedsiębiorstwo Produkcji Lodów “Koral” – Józef K. for unfair competition. The defendant ran an advertising lottery promoted under the slogan “million ice creams to win”, which in Unilever’s opinion breached the unfair competition law, because the advertising slogan could mislead customers as to the origin of goods in such a way that it might prompt them to unconsciously purchase the goods promoted by the opposite party. At about the same time Unilever was running a similar advertising campaign. The court of first instance rejected Unilever’s complaint. The Court of Appeal agreed with the court of lower instance and also rejected Unilever’s claim that the plaintiff cannot be represented by a patent attorney in unfair competition proceedings which do not directly concern IP rights.

The Supreme Court provided detailed analysis of Article 2 of the Law on Patent Attorneys. According to the Court, extensive interpretation should be applicable, which means that it would be difficult to rationally evaluate unfair competition cases, due to their diversity, so that one can tell where a patent attorney can and cannot act as an agent. According to the Court, conducting a case against unfair competition in connection with IP matters requires full knowledge about combating unfair competition proceedings. Therefore, it would be against the law to prevent patent attorneys from being involved in all unfair competition proceedings. The Supreme Court’s arguments were also based on the fact that the Paris Convention for the Protection of Industrial Property explicitly defines IP issues in the broadest possible sense. The definition of the protection of industrial property also covers combating unfair competition.

Polish patent attorneys, code of ethics

August 20th, 2008, Tomasz Rychlicki

The 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/attorneys in Poland.

Categories: Polish Act on Patent Attorneys | Polish Chamber of Patent Attorneys | Polish law | Polish patent attorneys.

Polish patent attorneys, case II GSK 195/05

February 26th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 3 October 2005 case file II GSK 195/05 published in Orzecznictwo Naczelnego Sądu Administracyjnego i Wojewódzkich Sądów Administracyjnych 2006/2/65/199, ruled that according to the provisions of Article 9(1) of the Polish Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments, a patent attorney should act as agent in proceedings before the Polish Patent Office, Polish courts and other bodies deciding on industrial property matters. This article includes all forms of practice of the patent attorney (for the patent attorneys’ firm, for the employer and on the basis of civil contracts) and all matters of industrial property within the meaning of Article 2 of the APAT, that are decided in each of the aforementioned proceedings.

Polish patent attorneys, case K 30/01

December 11th, 2006, Tomasz Rychlicki

On 9 July 2001, the Polish Supreme Bar Council (in Polish: Naczelna Rada Adwokacka), requested the Constitutional Tribunal, to declare unconstitutional the provisions of article. 236(1) and (3) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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 subsequent amendments.

Article 236
1. Except as provided for in paragraph (2), in proceedings before the Patent Office in matters relating to the filing and processing of applications and maintenance of the protection of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits, only a patent agent may act as a representative of a party to a proceeding.
2. Subject to paragraph (3), a natural person may also be represented by a joint right holder or parents, brothers, sisters, descendants of the party or persons in the relation-by-adoption with the party.
3. In the matters referred to in paragraph (1), any persons not having their domicile or seat in Poland may only act when represented by a patent agent.

The SBC argued Polish advocates are not allowed to act before the PPO based on provisions of article 236(1) and (3) of the IPL, which in consequence violates the principles of equal treatment of all citizens provided in article 32 of the Polish Constitution.

1. All persons shall be equal before the law. All persons shall have the right to equal treatment by public authorities.
2. No one shall be discriminated against in political, social or economic life for any reason whatsoever.

The Constitutional Tribunal in its judgment of 21 May 2002 case file K 30/01 published OTK-A 2002/3/32, held that the challenged provisions are constitutional. The request was unfounded because one cannot demand for equal treatment of all citizens, from the perspective of the right to perform given professional activity, based on the principle of equality of citizens before the law. According to settled case law of the Constitutional Tribunal, the principle of equality requires equal treatment of persons that have the same legal and factual situation, and – simultaneously – allows differentiation of the legal status of persons belonging to different groups, provided of course that the separation of these groups is made based on criteria consistent with the constitutional values. In the opinion of the Tribunal, the diversity of legal professions, on the one hand, and patent attorneys, on the other hand, does not violate any constitutional principles. The division of professionals and labour is quite obvious for a developed society. Professional groups at issue in this case include the highly specialized professionals, and their operation is strictly regulated by the law, both when it comes to specialist education and professional background, type of activity and responsibility for the improper performance of duties. The Tribunal ascertained that even within the strictly legal profession there is a clear differentiation, which – certainly – did not justify the claim of infringement of the constitutional principle of equality, for example, by forming different status of advocates and notaries, or advocates and solicitors.

Polish patent attorneys, case SK 43/04

September 15th, 2006, Tomasz Rychlicki

Tadeusz Rejman, a Polish patent attorney, was representing his client before the public prosecutor’s office in case of a trade mark infringement. The public prosecutor’s office discontinued the investigations and decided that Tadeusz Rejman is not entitled to represent a person during criminal proceedings. An advocate representing Tadeusz Rejman filed a complaint to the Constitutional Tribunal challenging the constitutionality of the provisions of Article 88 of the Criminal Proceedings Code – CRPC – (in Polish: Kodeks Postępowania Karnego) of 6 June 1997, published in Journal of Laws (Dziennik Ustaw) No 89, item 555, with subsequent amendments. According to Mr Rejman, the challenged provisions infringed on Article 2 and Article 65 of the Polish Consitution.

Article 2.
The Republic of Poland shall be a democratic state ruled by law and implementing the principles of social justice.

Article 65
1. Everyone shall have the freedom to choose and to pursue his occupation and to choose his place of work. Exceptions shall be specified by statute.

2. An obligation to work may be imposed only by statute.

3. The permanent employment of children under 16 years of age shall be prohibited. The types and nature of admissible employment shall be specified by statute.

4. A minimum level of remuneration for work, or the manner of setting its levels shall be specified by statute.

5. Public authorities shall pursue policies aiming at full, productive employment by implementing programmes to combat unemployment, including the organization of and support for occupational advice and training, as well as public works and economic intervention.

The unconstitutionality of Article 88 of the CRPC was based on the fact that patent attorneys do not have the legitimacy to act in criminal proceedings as a representative of a party, which in consequence violates the rule of a democratic state and that the exclusion of patent attorneys from cases relating to industrial property protection in criminal proceedings, is restricting their right to act on behalf of their clients in cases where they have the knowledge and preparation on a much higher level than other practitioners. This exclusion is also a violation of their constitutional right to free practice.

The Constitutional Tribunal in its judgment of 27 July 2006 case file SK 43/04, published in Orzecznictwo Trybunału Konstytucyjnego Seria A, 2006, No. 7, item 89, ruled that representation of the sufferer in criminal investigations proceedings conducted by the prosecuting authority does not fall within the scope of the patent attorney profession. These steps can be entrusted only to an advocate or a legal advisor where appropriate.

Polish patent attorneys, case III CZP 14/06

June 29th, 2006, Tomasz Rychlicki

The Supreme Court in its judgment of 30 March 2006, case file III CZP 14/06, held that a legal advisor who makes the first procedural step and is acting as a representative of legal person, should under the pain provided in the law, attach power of attorney and a document showing that a person, for instance a CEO, who empowered the adivisor had all required powers to issue such POA. The evidence of such powers can be a copy of an extract from appropriate register of commercial companies that was authenticated by a legal advisor himself.

Patent attorneys, case C-131/01

February 25th, 2006, Tomasz Rychlicki

The Court of Justice of the EU (Sixth Chamber) in its judgment of 13 February 2003 Case C-131/01 Commission of the European Communities v. Italian Republic, declared that by retaining rules requiring patent agents established in other Member States to be enrolled on the Italian register of patent agents and to have a residence or place of business in Italy, in order to provide services before the Italian Patent Office, the Italian Republic has failed to fulfil its obligations under Articles 49 EC to 55 EC.

Categories: case law | EU law | Judgments of Court of Justice of the EC | Polish patent attorneys.

Patent attorneys, case C-478/01

February 21st, 2006, Tomasz Rychlicki

The Court of Justice of the EU (Fourth Chamber) in its judgment of 6 March 2003 Case C-478/01, Commission of the European Communities v. Grand Duchy of Luxembourg, declared that, having regard to the requirement that patent agents, when supplying services, should elect domicile with an approved agent, and having regard to the fact that the Luxembourg Government has not provided information concerning the precise conditions for the application of Article 85(2) of the Law of 20 July 1992 amending the rules on patents and Articles 19 and 20 of the Law of 28 December 1998 governing access to occupations in craft trades, business and industry, and to certain liberal professions, the Grand Duchy of Luxembourg has failed to fulfil its obligations under Article 49 EC and Article 10 EC.

Patent attorneys, case C-76/90

February 13th, 2006, Tomasz Rychlicki

The Court of Justice of the EU (Sixth Chamber) in its judgment of 25 July 1991 Case C-76/90, Manfred Säger v Dennemeyer & Co. Ltd., ruled that the provisions Article 59 of the Treaty requires not only the elimination of all discrimination against a person providing services on the grounds of his nationality, but also the abolition of any restriction, even if it applies without distinction to national providers of services and to those of other Member States, when it is liable to prohibit or otherwise impede the activities of a provider of services established in another Member State where he lawfully provides similar services. In particular, a Member State may not make the provision of services in its territory subject to compliance with all the conditions required for establishment and thereby deprive of all practical effectiveness the provisions of the Treaty whose object is, precisely, to guarantee the freedom to provide services. Such a restriction is all the less permissible where, unlike the situation governed by the third paragraph of Article 60 of the Treaty, the service is supplied without its being necessary for the person providing it to visit the territory of the Member State where it is provided.

Having regard to the particular characteristics of the provisions of services in certain sectors of activity, specific requirements imposed on the provider, which result from the application of rules governing those types of activities, cannot be regarded as incompatible with the Treaty. However, as a fundamental principle of the Treaty, the freedom to provide services may be limited only by provisions which are justified by imperative reasons relating to the public interest and which apply to all persons or undertakings pursuing an activity in the State of destination, in so far as that interest is not protected by the rules to which the person providing the services is subject in the Member State in which he is established. In particular, those requirements must be objectively necessary in order to ensure compliance with professional rules and to guarantee the protection of the recipient of services and they must not exceed what is necessary to attain those objectives.

Article 59 of the EEC Treaty precludes provisions of a Member State which prohibit a company established in another Member State from providing patent-owners in the territory of the first State with a service for monitoring those patents and renewing them by payment of the requisite fees, on the ground that, by virtue of those provisions, such activities are reserved to persons holding a special professional qualification, such as a qualification as patent agent.

Categories: case law | Judgments of Court of Justice of the EC | Polish Chamber of Patent Attorneys | Polish patent attorneys | Treaty on European Union.

Polish patent attorneys, case CK III 580/03

February 24th, 2005, Tomasz Rychlicki

On the basis of Article 4, section 1, of the Polish Act of 11 April 2001 on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych), published in Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments, the profession of a patent attorney is created to provide assistance in matters of industrial property: to private individuals, legal persons and entities without legal personality.

Article 2. Whenever in this Act is referred to the Industrial Property – shall mean:
1) acquisition, preservation, carrying out and enforcing of rights related to industrial property, and in particular to inventions, utility models, industrial designs and topographies of integrated circuits, as well as trademarks, trade names and geographical indications,
2) combating unfair competition in respect of items referred to in paragraph 1.

The scope of representation for matters relating to unfair competition has been recognized in the Act quite narrowly. It was confirmed by the Polish Supreme Court in its judgment of 16 October 2004 case file CK III 580/03, which was published in the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2005/9/164/109. The Court simply held that a patent attorney may be a representative in judicial proceedings, which are the subject of a claim arising from unfair competition in respect of items referred to in Article 2, section 1 of the APAT.