Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Polish District Court

Social networking sites, case I A Ca 1202/09

March 3rd, 2010, Tomasz Rychlicki

Nasza-Klasa.pl website is a very popular Polish social networking service bringing together classmates. It provides its users with a possibility to contact and search for old friends. In 2008, an unknown person created an account for the name of Dariusz B., The fake profile included his personal data: name, place of residence, phone number, age and images. This account was set without the knowledge and the consent of Dariusz B. Many offensive comments were sent from this fake account to other users of the portal. These comments provoked negative emotions and responses from its recipients. Dariusz B. and his wife, tried to apologize to every person they met. Dariusz B. was also forced to change his phone number, and met with harsh comments from friends, and especially from the strangers. Maria B. – wife of Dariusz B. contacted Nasza-Klasa.pl by e-mails with the request to remove or to block the fake account. When it did not bring any results, they brought a lawsuit against Nasza-Klasa.pl.

Nasza-Klasa.pl was found responsible by both the District and the Apellate courts because it has not removed, or at least not immediately blocked the fake account, created in the name of Dariusz B., thereby making violations of his personal interests possible.

The Appellate Court in Wrocław in a judgment of 15 January 2010, case file I A Ca 1202/09, DOC file, ruled that nature of the infringement performed by Nasza-Klasa.pl was to allow a third party to encroach on personal rights of Dariusz B., by not fulfilling its obligations under the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), Journal of Laws (Dziennik Ustaw) No. 144, item. 1204, as amended.

Article 14
1. A person who gives access to the contents of a network IT system to a customer, where the customer stores data, is not aware of the illegal features of the data or activity connected with the data and upon receiving an official notification or credible information about the illegal features of the data or activity connected with it, immediately bars access to the data, shall not be responsible for the data.

2. A Service provider who has received the official notification of an illegal character of the stored data that was supplied by the customer, and prevented the access to the data, shall not be liable to the customer for damages resulting from preventing access to such data.

3. A service provider who has received credible information of the illegal character of the stored data supplied by the customer and prevented access to the data, shall not be liable to the customer for the damage resulting from preventing access to such data, if it has immediately notified the customer of the intention to prevent access to data.

According to the Court, Nasza-Klasa.pl did not immediately block, and then delete the questioned fake account. Therefore, it forced Dariusz B. to bear a humiliating behavior caused by another person, which in consequence violated his serenity, good mood, sense of personal dignity, i.e. his personal interests. However, the Court did not agree with the argument that the standard of conduct, professionalism, requires the administrator to filter and delete statements that violate the law or may violate the law in an objective view, without a prior notice regarding such event. Putting such a requirement would be contrary to the provisions of Articles 14 and 15 in connection with Article 12 of the PSEM.

Internet domains, case I ACz 232/10

February 14th, 2010, Tomasz Rychlicki

As polite fans would probably say, the condition of Polish football is at least “debatable”, and others might use more crude words. The corruption and inefficient management of the Polish national football leagues are the tip of the Iceberg. This situation causes frustration of many people who try to blame the Polish Football Association (PZPN) for all their miseries. Some of these people decided to take matters into their own hands. They formed the Association of Defenders and Supporters of the Polish Football. They registered koniecpzpn.pl (end of Polish Football Association) as an Internet domain name and started to host a website with critical publications on PZPN under that domain. One didn’t need to wait too long before lawyers representing the Polish Football Association entered “the game”. New players acting on behalf of the Polish Football Association requested the court to issue a preliminary injunction in order to secure the case for the future action for trade mark protection and for the protection of personal rights.

The District Court in Lódż, I Civil Division, in its order of 14 January 2010, case file I Co 203/09 granted the injunction and ordered the prohibition of placing at koniecpzpn.pl website the following trade marks owned by PZPN: R-142616, R-170024, R-188961 and R-188962, the Court also ordered a block on the access to the content of the website available under www.koniecpzpn.pl domain name. The Court set the PZPN a two-week deadline for lodging the petition instituting proceedings for trade mark protection and the protection of personal rights under the pain of withdrawing the injunction in case no lawsuit was filed by that date.

The Appellate Court in Łódź in its decision of 24 March 2010 case file I ACz 232/10 annulled the injunction. The Court held that PZPN did not exactly specified which claims it intends to enforce. The Court ruled that all claims should be precisely specified in the request because the lack of precise claims make impossible to verify whether conditions for the injunction are met, i.e. whether the claim is reliable and the applicant has legal interest (locus standi) in enforcing it. The Court also noted that the injunction would be unduly restrictive and burdensome beyond measure. According to the Court the blocking of a website could be considered as inadmissible preventive censorship.

See also “Polish case law on domain names“.

Personal interest, case I ACa 949/09

February 9th, 2010, Tomasz Rychlicki

Since a couple of years he is a very controversial figure of the Polish Internet and he also has become the cause of two interesting judgments which I am going to report. Arnold Buzdygan appeared on different Polish newsgroups, where he wrotre, inter alia, on topics such as copyright, sexology, psychology and politics. His style of writing was, at least, very controversial. Due to the vulgarity of some of his statements (he claimed that such actions were performed by his followers who allegedly used his name), offers to make a bet and announcements of lawsuits and threats of beatings, a part of the Usenet community defined these behaviors as trolling and such informations was posted in the Polish Wikipedia’s entry devoted to Buzdygan’s persona. Arnold Buzdygan decided to sue.

In the petition for libel filed against the Association Wikimedia Poland and Agnieszka K., he demanded an order to remove the existing contents of the article Arnold Buzdygan in both English and Polish-language versions of Wikipedia, and to put the apology instead of these entries, and to block the possibility of future edition of the questioned article, He also requested the Court to order the Association Wikimedia Poland to pay him the compensation of moral injury and the costs of the process in the sum of 100000 PLN.

In the response to a petition, the Association of Wikimedia Poland requested the Court to dismiss the claim, pointing that such charges cannot be brought against it because of the lack of the so-called “passive legitimacy”. Wikimedia Poland stated that neither the Association itself, or persons acting on its behalf are not engaged in editing of the article on Arnold Buzdygan, Wikimedia Poland argued that it is not a database administrator of Wikipedia or administrator of the servers on which the information is stored, so it would not be possible to remove or permanent blocking of such entries.

The District Court in Wrocław dismissed the suit in judgment of 8 June 2009, case file I C 802/07. Buzdygan appealed, and his petition was dismissed by the Appellate Court in Wrocław in a judgment of 17 November 2009, case file I ACa 949/09, published in Orzecznictwo Apelacji Wrocławskiej, Biuletyn Sądu Apelacyjnego we Wrocławiu, No 1 (13), p. 5, Year MMX. The court ruled that the statements published in the disputed article and the mention of trolling do not infringe on Buzdygan’s personal rights. Descriptions of Buzdygan’s activity on different forums, though they may have a pejorative connotation, were the evaluation of the expression of views issued by Arnold Buzdygan, not the description of himself. The wording that was challenged by Buzdygan does not refer to his person, but it concerned the way of formulation of his speech in a public discussion, and the measure of negative evaluation did not exceed the permissible limit.

An active participant of online forums, being a well-known and recognizable in such community is, in this sense, a “public personality”. As a public person, participating in discussions, one agrees and must reckon with the fact that his or her opinions and statements will be subjected to criticism by other users, sometimes very radically and one has to demonstrate greater tolerance and even resistance to unfavourable and unflattering opinions, and even violent attacks. The boundaries of acceptable criticism are wider in fact, than in the case of persons not participating in such discussions. The evidence proceedings during the hearings has shown that Buzdygan was and is very active participant in online forums, and he is a known figure. By applying the test of the higher degree of tolerance for unflattering opinions, the Court found that the wording of the Wikipedia entry devoted to Arnold Buzdygan did not exceed the agreed and acceptable standard.

See also “Computer crime, case V K 1595/08“.

Copyright law, case I CSK 160/09

January 11th, 2010, Tomasz Rychlicki

The Polish Supreme Court in its judgment of 16 November 2009 case file I CSK 160/09 confirmed that no consent of the portrayed sportsmen is necessary for the athletics association to make such images available to the sponsors. The judgment came out as a result of a heated dispute between the Polish national football (soccer) team player Maciej Żurawski and TP S.A. (a telecommunication company) – the official sponsor of the team. The dispute regarded the unauthorized dissemination of Żurawski’ s image by TP S.A. in its various advertising and informational materials (such as fliers, posters, press and television). Żurawski desired that TP S.A. ceased to publish and disseminate his images and that it publicly apologized to him. The proceedings were joined by the Polish Football Association (PZPN) as a third party defendant. The bone of contention in this case were the pictures taken during the photo shoot of the national soccer team prior to the world championship in Germany in 2006. The story goes that in 2004, PZPN entered into a sponsorship agreement with TP S.A., pursuant to which PZPN obliged itself to:

1) allow TP S.A. to use the pictures of the national team in all of TP S.A. advertising and informational materials; and
2) to obtain the respective players’ consent to do so.

In 2006 the national football team participated voluntarily in a photo shoot. All players were duly informed as to what purposes the pictures would serve, and how they would be used. However, no formal consent forms were signed. The players did not sign any Representative’s Cards (which explicitly stated the player’s obligation to participate in events such as i.e. the photo session in question) either. Additionally, none of the players received any remuneration for the photo session. And that’s what’s most problematic in this case. Pursuant to article 81 of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments, the right to disseminate the image of a person does not require the consent of that person (unless explicitly stated otherwise) if that person had received an agreed to remuneration.

The Court of first instance found for Zurawski, however the appeal court reversed and dismissed the case. The reason of that were differing interpretations of article 33(2) of the Act on Qualified Sports – AQS – (in Polish: Ustawa o sporcie kwalifikowanym) of 29 July 2005, Jurnal of Laws (Dziennik Ustaw) No 155, item 1298, with subsequent amendments, which was relied on by TP S.A. and PZPN in their argumentation.

each member of the national team, grants an exclusive right to his/her image in the national representation team outfit, to an appropriate athletics association, which is then entitled to use that image for economic purposes within the scope set forth in the Statute of that association or other international organization active in that field.

However, the very same article in sec. 2 states that the representative does indeed give his/her consent to disseminate his/her image in the national representation team outfit, however he/she does that within the meaning of article 81(1) of the ARNR. And this led to two different interpretations by two different courts: court of I instance held that article 33(2) of the AQS creates a direct duty to obtain a separate consent from the sportsman, whereas the appeal court found that such consent is impliedly given the moment the athlete (here football player) joins the national team. The SC agreed with the latter interpretation, stating that by joining the national team the player does indeed agree to a significant limitation on his right to image, whenever the image consists of him in the national representation’s outfit. Other than that he retains full rights to his right to publicity (in particular image). Hence, Żurawski ultimately lost the case.

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

Administrative, civil and criminal proceedings in trade mark cases in Poland

December 22nd, 2009, Tomasz Rychlicki

I. The Law
The main sources of binding laws in the Republic of Poland are the Constitution of 2 April 1997, acts passed by the Parliament, ratified international treaties and regulations issued, for example, by the Prime Minister or the Council of Ministers – Polish government. Regulations are issued for the purpose of implementation of acts. The main legal acts on trade mark protection in the Republic of Poland are the following.

I.A. Substantive law

The old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.
Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, 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.
Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with subsequent amendments

I.B. Procedural law

Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, 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.
Act 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.
Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments
Criminal Proceedings Code – CRPC – (in Polish: Kodeks Postępowania Karnego) of 6 June 1997, Journal of Laws (Dziennik Ustaw) No 89, item 555, with subsequent amendments.
Act on Patent Attorneys – APAT – (in Polish: ustawa o rzecznikach patentowych) of 11 April 2001, Journal of Laws (Dziennik Ustaw) No. 49, item 509, with subsequent amendments,

I.C. EU law
Since 1 May 2004 which was the accession day to the EU, the Republic of Poland has been bound by all aquis communitaire including the Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (CTMR). The CTMR is a part of the Polish Legal system and is directly aplicable by Polish Courts, especially by the Court for the Community Trade Marks and Community Designs which is located in Warsaw

II. Different routes, different proceedings
The right of protection for a sign being capable to be registered as a trade mark is granted by the Patent Office of the Republic of Poland (PPO). Trade mark holders in the Republic of Poland may protect their rights in civil and criminal proceedings. Moreover, they may also use the procedures before customs authorities.

The Republic of Poland is not a common law country and the courts are not bound by decisions of other courts. However Polish judges tend to widely recognise the decisions and verdicts of the Polish Courts of Appeal and the Polish Supreme Court. Only resolutions of the Supreme Court that are decided as a legal principle are universally binding. The decisions of foreign bodies such as the General Court and Court of Justice of EU may be recognised only as so-called persuasive precedents.

II. A. Administrative proceedings in trade mark cases
The Patent Office of the Republic of Poland is a central government agency responsible inter alia for receiving and examination of applications seeking protection for trade marks and deciding in matters related to granting rights of protection trade marks (decisions with regard to processing of national and International trade mark applications, decisions on the invalidation and the lapse of the right of protection for a trade mark etc.). The provisions of the Code of Administrative Proceedings shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by the IPL. Decisions made or orders issued by the PPO are liable to complaint lodged to the Voivodeship Administrative Court (VAC) in Warsaw. Judgments made by the VAC may be a subject of a cassation complaint filed before the Supreme Administrative Court (SAC).

II. B. Civil proceedings in trade mark cases
Trade mark infringement actions are brought before a District Court. There are no specific courts which have exclusive jurisdiction for resolving trade mark disputes, except the Court for Community Trade Marks and Community Designs which is strictly focused on the legal issues related to CTMs.

The Law on Industrial Property provides that a trademark owner’s rights will be deemed to have been infringed where there has been unlawful use of the mark in the course of trade, including unauthorized use of a trademark by a licensee and sublicensee. The remedies available to the trademark owner are as follows:

cessation of the infringement,
surrender of any unlawfully obtained profits,
compensatory damages in accordance with the relevant principles of the Civil Code or payment of a lump sum equivalent to a licence fee, or any other remuneration, which would have been due if the infringer had been authorized by the right holder to use the trademark. In this case, the trademark owner is obliged to prove that an intentional infringement of its rights has taken place,
announcement to the public of a verdict of the court (upon the request of a trade mark owner) as a whole or in part, or publication of information regarding the verdict,
a court order that the infringer (upon its own request, in case of unintentional infringement) to pay the relevant sum to the benefit of the trade mark owner if the cessation of infringement or forfeiture of the goods held by the infringer (means of manufacturing, materials) would be excessive, and the above-mentioned sum to be paid would fulfil the right holder’s interest.

The following cases, in particular, are also decided in civil law proceedings in accordance with the general principles of law:

for ascertainment of the authorship of an inventive project,
for ascertainment of the right to a patent, a right of protection or a right in registration,
for remuneration for the exploitation of an inventive project,
for remuneration for the exploitation of an invention, a utility model or a topography for state purposes,
for compensation for the transfer to the State Treasury of a right to a patent for a secret invention or to a right of protection for a secret utility model, a right of protection or a right in registration,
for infringement of a patent, a supplementary protection right, a right of protection or a right in registration,
for ascertainment of the right to exploit an invention, a utility model or an industrial design in the cases referred to in Articles 71 and 75 of the IPL,
for ascertainment of the right to use, in a local-scale activity, a mark registered on behalf of a third party as a trademark,
for ascertainment of the right to use a geographical indication,
for ascertainment of the loss of the right to use a geographical indication,
for the transfer of a patent, a right of protection for a utility model or a right in registration of an industrial design or a topography obtained by a person not entitled thereto,
for the transfer of a right of protection for a trad emark in the case referred to in Article 161 of the IPL.

II. C. Criminal proceedings in trade mark cases
The IPL defines counterfeit trademarks as identical trademarks illegally used or trade marks which in the course of trade can not be distinguished from the trade marks registered for the goods covered by the right of protection. The party aggrieved by the infringement has to commence a criminal action. Only after the filing of the motion can the proceedings be started and continued ex officio. The sole exception is when a person committing the crime in respect of a registered trade mark obtains permanent profits from its criminal activity or commits acts resulting in the turnover of counterfeit goods bearing the trade mark, which are of significant value. In such case the infringer is subject to more serious criminal penalties and proceedings will be started ex officio.

II. D. Custom seizures
Customs law, in addition to civil and criminal law, is the third administrative regime of protection for trade mark rights. Provisions of Council Regulation (EC) No 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property are directly aplicable on the territory of the Republic of Poland. The application for action shall be submitted to the Polish Customs Chamber seated at Modlińska 4 Street, 03-216 Warsaw.

II. E. ADR in trade mark cases
Where a domain name including a sign that has been registered as a trade mark by an unauthorized third party, the trade mark holder can use mediation, alternative dispute resolution (ADR) proceedings or civil court action to obtain the cancellation or transfer of such a domain. See also “Polish case law on domain names“.

Copyright law, plagiarist pays

December 11th, 2009, Tomasz Rychlicki

According to the recent article published by Polish newspaper Gazeta Wyborcza, entitled “Kurpisz ma wyrok za plagiat. I to z błędem!“, Kurpisz – Polish Publishing House from Poznan has been found guilty of plagiarism and has to pay PLN 148,000 as well as apologize to the journalist whose copyrights it infringed.

Kurpisz was accused of plagiarising by Andrzej Gowarzewski, a sports journalist from Katowice, the author of the Encyclopedia of World’s Soccer Championships (in Polish: “Encyklopedii piłkarskich mistrzostw świata”). Gowarzewski spent over a decade travelling around, in particular, South America collecting detailed data (such as the original spelling of the players names, exact time of the goals scored during the games, team composition) for his encyclopedia. His efforst were rewarded when british „World Soccer“ magazine – an undoubted authority in the field – has pronounced the book one of the 7 best books on soccer in the world.

Gowarzewski has been working and successively expanding his encyclopedia since 1991. In 2001 he came across a similar book, published by Kurpisz Publishing House. To his great astonishment the book contained information about 500 games, literally “carbon copied” from his work. The publisher repelled the accusations, claiming that it had used information commonly available and thus not protected by copyright, very much like the data in the yellow pages. Kurpisz arguments would have most likely prevailed, had it not been for the flair of the journalist, who set a smart trap for the publisher: Gowarzewski deliberatley made several material mistakes in his encyclopedia, just to subsequently find that they were repeated in the Kurpisz version of the book.

The District Court from Poznań had no reluctances finding the publisher guilty of plagiarism. It held that in copying such substantial data, thouroughly and personally collected over the years by the journalist, the Kurpisz has free ridden on the creative efforts of Gowarzewski and should pay him PLN 148,000 in damages (that is 15% of the proceeds from the sale of Kurpisz’s books, multiplied by 3, the so-called treble damages) based on article 79 the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments.

Article 79
1. The rightholder may request from the person who infringed his/ her author’s economic rights to:
1) cease the infringement;
2) eliminate the consequences of the infringement;
3) repair the inflicted damage:
a) on the general terms or
b) by payment of double or, where the infringement is culpable, triple the amount of respective remuneration that would have been due as of the time of claiming it in exchange for the rightholder’s consent for the use of the work;
4) render the acquired benefits.

2. Regardless of the claims referred to in paragraph 1, the entitled person may request:
1) single or multiple announcement made in the press with the statement of appropriate content and form or to announce to the public a part or all of the court’s judgment in the considered case, in the manner and within the scope specified by the court,
2) to pay by the person who infringed author’s economic rights, the appropriate sum of money, not less than twice of the amount of firm benefit achived by the perpetrator of the infringement, to the Fund referred to in article 111, if the infringement is culpable and was made during the economic activities carried out in someone else or in his own name, even on someone else’s account.

The plagiarist must also publicly apologize to the author on the pages of a nation wide newspaper – Rzeczpospolita.

It has not been the first time that the Kurpisz Publishing House infringes copyrights of another and has to bear the consequences. In 2004 the court in a similar case imposed on the publisher a fine of over PLN 500,000, which constituted 60% of the proceeds from the sale of copied “Dictionary of contemporary Polish”. The high amount of penalty was justified by the fact that the publisher had copied as much as 60% of the dictionary of Polskie Wydawnictwo Naukowe (PWN).

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

Polish case law on copyright

December 9th, 2009, Tomasz Rychlicki

A more detailed discussion about each judgment may be found under the link provided with the case file. All judgments are presented in the chronological order.

- The judgment of the Appellate Court in Warsaw of 27 October 2011 case file VI ACa 461/11.

- The order of the Polish Supreme Court of 26 October 2011 case file III CZP 61/11.

- The judgment of the Supreme Court of 21 October 2011 case file IV CSK 133/11.

- The judgment of the Supreme Court of 17 October 2011 case file III CSK 30/11.

- The judgment of the Constitutional Tribunal of the Republic of Poland of 11 October 2011 case file P 18/09.

- The judgment of the Supreme Court of 15 June 2011 case file V CSK 373/10.

- The judgment of the Supreme Administrative Court of 21 July 2011 case file I OSK 678/11.

- The judgment of the Supreme Court of 25 May 2011 case file II CSK 527/10.

- The judgment of the Voivodeship Administrative Court in Gdańsk of 26 January 2011 case file II SA/Gd 529/10.

- The judgment of the Supreme Court of 26 January 2011 case file IV CSK 274/10.

- The order of the Supreme Administrative Court of 21 December 2010 case file I OSK 1975/10.

- The judgment of the Voivodeship Administrative Court in Łódź of 20 December 2010 case file II SAB/Łd 53/10.

- The judgment of the District Court in Warsaw of 14 September 2010 case file I C 626/06. Not final yet.

- The judgment of the Supreme Court of 13 July 2010 case file III CZP 1/10.

- The judgment of the Supreme Court of 22 June 2010 case file IV CSK 359/09.

- The judgment of the Appellate Court in Lublin case file I ACa 206/10.

- The judgment of the Polish Supreme Court of 16 November 2009, case file I CSK 160/09.

- The decision of the Constitutional Tribunal of 21 October 2009, case file P 31/07.

- The judgment of the Supreme Court of 27 February 2009, case file V CSK 337/08.

- The judgment of the Supreme Court of 19 June 2008, case file V CSK 22/08.

- The judgment of District Court in Tarnów of 20 December 2007 in re: Bochnia Independence Half-Marathon, case file I C 238/06.

- The judgment of the Supreme Court of 6 December 2007 case file III CZP 107/07.

- The judgment of the Appellate Court in Warsaw of 17 October 2007 case file VI ACa 1259/06.

- The judgment of the Appellate Court in Warsaw of 29 June 2007 case file VI ACa 210/07.

- The judgment of the Supreme Court of 3 January 2007 case file IV CSK 303/06.

- The judgment of the Appellate Court in Warsaw of 14 March 2006 case file VI ACa 1012/05, published in the Jurisprudence of Appellate Courts (in Polish: Orzecznictwo Sądów Apelacyjnych) of 2007, No 12, item 36, p. 56.

- The judgment of the Supreme Court of 25 January 2006 case file I CK 281/05, published in the Supreme Court’s Bulletin of 2006, No 5, the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2006, No 11, item 186, p. 64, the “Wokanda” magazine of 2006, No 7-8, p. 17.

- The judgment of the Supreme Court – Civil Chamber of 13 January 2006 case file III CSK 40/05, published in the Supreme Court’s Bulletin of 2006, No 3, the “Wokanda” magazine of 2006, No 6, p. 6, the Review of Economic Legislation (in Polish: Przegląd Ustawodawstwa Gospodarczego) of 2006, No 7, p. 32.

- The judgment of the Supreme Administrative Court of 13 October 2005, case file FSK 2253/04.

- The judgment of the Polish Supreme Court of 23 November 2004, case file I CK 232/04.

- The judgment of the Supreme Court of 3 December 2003 case file I CK 312/02.

- The judgment of the Supreme Court of 7 November 2003 case file V CK 391/02, published in OSN 2004, No 12, item 203.

- The resolution of the Supreme Court – Criminal Chamber of 21 October 2003 case file I KZP 18/03.

- The judgment of the Supreme Court – Civil Chamber of 15 November 2002 case file II CKN 1289/00, published in the Supreme Court’s Bulletin of 2003, No 6, p. 7, the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2004, No 3, item 44, p. 66.

- The judgment of the Supreme Court – Civil Chamber of 26 September 2001 case file IV CKN 458/00, published in the electronic database Legalis.

- The judgment of the Supreme Administrative Court of 30 June 1999 case file I SA/Lu 408/98, unpublished.

- The judgment of the Supreme Court of 26 June 1998 case file I PKN 196/98, published in the Jurisprudence of the Supreme Court, the Chamber of Administrative, Labour and Social Insurance (in Polish: Orzecznictwo Sądu Najwyższego Izba Administracyjna, Pracy i Ubezpieczeń Społecznych) of 1999, No 14, item 454.

- The judgment of the Appellate Court in Warsaw of 2 October 1996 case file I ACa 2/96.

- The judgment of the Appellate Court in Warsaw of 12 December 1995 case file I ACr 590/95, published in OSA 1997, No 3, item 16, at page 32.

- The judgment of the Appellate Court in Warsaw of 5 July 1995 case file I ACr 453/95, unpublished.

- The judgment of the Supreme Court of 19 September 1975 case file I CR 312/75.

- The judgment of the Supreme Court of 10 February 1970 case file I CR 666/69, published in OSP 1972, No. 2, item 30.

- The judgment of the Supreme Court of 8 November 1932 case file II. 1K. 1092/32, published in Zb. Orz. 1933/I item 7.

See also “Polish regulations on copyright“.

Copyright law, case V CSK 22/08

November 16th, 2009, Tomasz Rychlicki

The Society of Authors and Publishers Polish Book from Kraków (in Polish: Stowarzyszenie Autorów i Wydawców Polska Książka w Krakowie) is one of the Polish collecting societies. The Society sued Euroimpex company which is a distributor of reprographic equipment, mainly photocopiers and scanners. The suit was based on Article 20(1)(ii) of of Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631, with subsequent amendments.

1. The producers and importers of tape recorders, video recorders and other similar apparatus, or blank material for the recording of works with the aid of such apparatus for personal and private use, and also of reprographic apparatus shall be obliged to pay, for the benefit of the creators and performers of the said works and of the producers of phonograms and videograms, fees in an amount not exceeding 3% of the selling price of the said apparatus and material.
ii. The amount of the fees referred to in paragraph 1 shall accrue:
(1) to the creators for 50%,
(2) to the performers for 25%,

The District Court in Kraków ordered Euroimpex to pay the reprographic fee in the amount of 124,678 PLN. Euroimpex filed an appeal in which it argued that the provisions of ARNR are unconstitutional. However, the Appellate Court in Kraków shared the opinion issued by the District Court and ruled that there is a lack of grounds to question the compliance of article 20(1)(ii) and article 105(2) of the ARNR with the constitutional norms.

Article 105
1. The collective administration organization shall be presumed qualified to carry out the administration and protection of rights in the areas of exploitation in which its administration is conducted, and to engage in judicial proceedings associated therewith. This presumption may not be invoked where two or more collective administration organizations claim competence in respect of one and the same work or performance.
2. In the course of its activity the collective administration organization may demand that information be communicated to it and that documents that are essential for the calculation of the amount of remuneration and fees that it claims be delivered to it.

A similar view was also expressed in relation to provisions of the Regulation of the Minister of Culture of 2 June 2003 on designation of categories of devices and media used for recording of productions and payments levied on sales of these devices and carriers carried out by producers and importers, Journal of Laws (Dziennik Ustaw) No. 105, item 991. Euroimpex filed a cassation complaint.

The Supreme Court in a judgment of 19 June 2008, case file V CSK 22/08, ruled that according to the settled case law, any court, in principle, has the same power to assess whether the provisions of regulation that may be applicable in a given case are not inconsistent with the Constitution. Additionally, the SC ruled that the provisions related to the remuneration fees are justified and their introduction was an expression of global trends in intellectual property law that was also made in order to compensate authors and publishers for what they lose by copying or reproduction of works made by third persons for the personal use. These are the civil law claims, which the collecting societies have the right to collect and which they are allowed to claim before the court. As these fees are divided, is no longer a matter to be decided by the Court, but it is the inner matter of organization and artists who are members of this organization.

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

Internet domains, case X GC 1245/03

October 6th, 2009, Tomasz Rychlicki

The District Court in Łódź, X Commercial Division in its judgment of 22 June 2004, case file X GC 1245/03 decided the first Polish domain name case in Microsoft versus Robert Rudecki. The judgment was issued in absentia. The case concerned microsoft.pl and microsoft.com.pl domain names.

See also “Polish case law on domain names“.

Trade mark law, case I ACa 228/08

September 9th, 2009, Tomasz Rychlicki

First, I owe my respectable readers a short explanation what Jarzebiak is.

Jarzebiak is a fruit vodka made of rowan infusion with the addition of fruit distillate and wine distilate and caramel. The drink has bright bronze colour, sometimes there is light or settlements.

One of the varieties of jarzebiak is “jarzebiak izdebnicki”, with the traditions of production reaching the sixteenth century. It is produced in Izdebnik (Lanckorona municipality). This dry vodka with the addition of rowan, herbs and young shoots of pine was also produced at Izdebnik’s manor of Archduke Rainer Habsburg in distillery called “Factory of Health Vodkas and Liquers” in XIX century.

The “Rowan Jarzebiak Vodka” brand is one of the oldest and most recognizable quality vodkas in Poland. The Company Polmos from Sieradz made this vodka as its flagship product. In April 2006, The Company Polmos from Lublin began production of its own jarzebiak. Polmos from Sieradz sued Polmos from Lublin before the civil court, arguing that Polmos Lublin was illegally using the Jarzebiak name for its products. Polmos from Sieradz based those arguments on the fact that, in 1989, the state-owned and subsequently privatized Polmos Companies were engaged in the division of the trade mark portfolio of their State’s monopolistic predecessor. The Jarzebiak Rowan Vodka brand was acquired by Polmos from Sieradz. The Company registered this mark in the Polish Patent Office in 2007, R-204893.

R-204893

Polmos from Sieradz argued that Polmos Lublin committed an act of unfair competition by exploiting the reputation of the Polmos Sieradz product, at the same time damaging the Jarzebiak brand because Polmos Lublin produced less tasteful vodka with a lower alcohol content (36 percent, while that of Polmos Sieradz was 40 percent). This in consequence also allowed Polmos from Lublin to offer a cheaper product.

Polmos Lublin considered its competitor’s arguments unfounded, arguing that jarzebiak was a generic name that identified a type of drink: a rowan-based vodka. In Polmos Lublin’s opinion, such a term could not be monopolized by any company. The Lublin company also noted that the labels of the respective vodkas were very different and argued that customers would not be misled as to which company was a producer of ‘real’ jarzebiak vodka.

Jarzebiak Lublin

The District Court and the Appellate Court agreed with Polmos from Lublin’s arguments. The Appellate Court in its judgment case file Categories: Polish Appeallate Court | Polish District Court | similarity of signs | unfair competition delict.

Press law, case VI Ka 202/09

August 3rd, 2009, Tomasz Rychlicki

This is the continuation of a story described in “Press law, case II K 367/08“. The District Court in Słupsk in its judgment of 18 June 2009 case file VI Ka 202/09 held that gby.pl – a portal website operated by Leszek Szymczak constituted press under the Press law, however, comments posted on this website by the Internauts do not constitute a press material for the content of which the website administrator could be held responsible. The District Court held that the posts are not letters to the editor or are not – as the Prosecutor argued – “quasi-letters” to the editor. The court said that the posting process on an internet forum is made automatically, there is no prior moderation of such messages.

The administrator of a portal website, which allows for posting comments, is the hosting service provider and is subject to regulations included in article 14 of the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), Journal of Laws (Dziennik Ustaw) No. 144, item. 1204, as amended.

1. A person who gives access to the contents of a network IT system to a customer, where the customer stores data, is not aware of the illegal features of the data or activity connected with the data and upon receiving an official notification or credible information about the illegal features of the data or activity connected with it, immediately bars access to the data, shall not be responsible for the data.
2. A Service provider who has received the official notification of an illegal character of the stored data that was supplied by the customer, and prevented the access to the data, shall not be liable to the customer for damages resulting from preventing access to such data.
3. A service provider who has received credible information of the illegal character of the stored data supplied by the customer and prevented access to the data, shall not be liable to the customer for the damage resulting from preventing access to such data, if it has immediately notified the customer of the intention to prevent access to data.

The Court ruled that the service provider cannot be held liable for material posted by its users. The court noted that the decision does not mean that no one should be held liable for the posts that contain an offensive material that is a subject to criminal prosecution. The responsibility for this activity should be borne by a direct perpetrator and the prosecution authorities should identify such persons by using the available technical resources (IP addresses). The Prosecution cannot go after the smallest line of resistance and charge the administrators, instead of the actual perpetrators.

See also “Press law, case VI Ka 409/07” and “Internet websites, case I C 1532/09“.

Copyright law, case I C 238/06

June 15th, 2009, Tomasz Rychlicki

Such a conclusion stems from the sentence of the District Court in Tarnow of 20 December 2007 in re: Bochnia Independence Half-Marathon, case file I C 238/06.

Once upon a time… in the town of Bochnia, the so-called annual “Bochnia Independence Half-Marathon” used to take place. The event had been organized by the town and county authorities, in collaboration with the originator, one Zenon G., ever since year 2001. As the name indicates – the event’s primarily purpose was to celebrate the regained independence of the town of Bochnia and attracted a substantial amount of participants each and every year. The cooperation between the county and the “founding father” lasted for 4 happy years until it was broken off abruptly in 2005, due to a dispute that sparked over money. The authorities of Bochnia decided to organize the marathon on their own, without either the help or the permission of the originator. This understandably got the latter’s hackles up. The case ended up in court.

The route of the half-marathon IS an artistic work… The originator accused the county and the mayor of infringing his copyrights, claiming that both the initiative as well as the sole idea to organize the run, along with the manner in which the whole event was planned and arranged, met the prerequisites of an artistic work within the meaning of the polish copyright law, including the requirements of “creativity” and “individual character”.

The Court before which the case appeared, agreed with the Claimant’s theory and held that whenever talking about an artistic work within the meaning of Article 1 of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No 90, item 631 with later amendments, “the entirety of features, in their original juxtaposition” should be taken into consideration. The Court emphasized that the fact that the commonly available elements had been used to create the work, does not necessarily mean that such work does not fall within the definition of an artistic work under the Article 1 of the AARNR. Although, as a matter of rule, such individual elements, in and of themselves, are never protected under the polish law, any and all compilations thereof do get protection so long the manner in which they’re segregated, arranged and presented demonstrates certain degree of originality and creativity. In the Court’s opinion the process of creating a work is a subjective one and is a “projection of the author’s imagination”. If the result of such process is original and unique enough (meaning it can be easily distinguished from any other results of human activity), then it shall be protected by law as an artistic work. This happens every time we deal with a specific configuration of elements, particularly relevant and accurate when juxtaposed with the intended result, where the author uses his unbound discretion to select and arrange such elements. To apply this to the case at hand, the Claimant’s idea to organize the half-marathon to celebrate the town’s Independence Day along with a scrutine preparation of the marathon race plan so as to obtain a special certificate of the Polish Athletics Association, meet the requirements of an artistic work, as understood by the Act. The fact that similar race events had been organized by the town of Bochnia long before 2001 remained without any effect on the Court’s conclusion.

In particular the Claimant prepared the race plan independently, selected the respective streets of the city in such a way that the whole race plan would constitute an entirety, had a proper paving, that is a hardened one, and so that there were no substantial differences in route gradient. The race plan should take account of the conditioning of the terrain, routes of public transportation and additionally the length of the route should equal half the length of the actual marathon. Moreover, the Claimant saw to it that the race plan be certified and the result, which the participants of the race would likely achieve, could be comparable to those achieved in other like races in the country. The race plan has been recorded in the form of a map with the marathon route marked on it and the race description attached. To plan the route in such, and not other, way determines its originality and creativity, since no one has ever before drew the route of the Bochnia race in such topographic layout.

Additionally, the Court pointed to the new categories of the participants (teachers and persons with disabilities), in comparison to those of the Bochnia races that were organized before 2001, highlighting at the same time that “the requirement of novelty is not an inevitable feature of an artistic work”. The Court rejected the argument that any other person could prepare the race plan of the said half-marathon and reiterated, after the Supreme Court, that “the possibility of achieving analogical results by two different authors does not suffice to deprive a particular act of creativity, of the individual character.”

To conclude, the District Court in Tarnow held that by organizing the “Bochnia Independence Half-Marathon” against the will of the originator and using the race plan prepared by him, the Respondents infringed upon the latter’s copyrights. Hence, the Claimant was entitled to the protection of the polish copyright law. In the Court’s opinion the Respondents should have never free ridden on someone else’s creative efforts and should have come up with their own idea and race plan.

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

Trade mark law, case V CSK 109/08

April 24th, 2009, Tomasz Rychlicki

VKR Holding A/S from Horsholm sued Polish company OKPOL for trade mark infrigement and the delict of unfair competition. The suit was based on article 296(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

Infringement of the right of protection for a trade mark consists of unlawful use in the course of trade of:
(iii) a trade mark identical or similar to a renowned trade mark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trade mark.

The suit was also based on Article 3(1) the Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with later amendments.

The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.

The District Court ruled that the figurative element of the trade mark in question, and its characteristic composition, have more influence on consumer awareness and subconscious than does their verbal aspect and that it is therefore necessary to protect VKR Holding’s brand, even if there are differences between the competing signs in verbal aspects. The court held that the signs are similar and that VELUX, being the renowned one, should benefit from the increased legal protection, as compared to “normal” i.e. the later mark of OKPOL company. The Polish company did not agree with such findings and filed an appeal complaint.

R-63259

The Court of Appeal in its judgment of 3 October 2007, shared the conclusions and assessments of the court of first instance that VELUX brand has the status of a reputable and renowned trade mark, and that word-figurative sign OKPOL is similar to VELUX which brings the risk of association between these signs. The risk of confusion is determined by the dominant element that both marks share – the red rectangle. According to the Court there is a similarity between disputed trade marks because of the overall visual impression and there is no significant difference in the word characters. The Court of Appeal also agreed for the admissibility of granting the protection under article 3(1) of the CUC because OKPOL’s action were in Court’s opinion very parasitic. In the Court’s view such behaviour was based on taking the advantage of VELUX’s renown and should be deemed an act of unfair competition, as behaviour contrary to the principles of good practices, which should be based honesty in business.

The Polish company filed a cassation complaint before the Supreme Court of the Republic of Poland in which it asked three important questions:
(a) May a person try to prohibit the use of a registered trade mark, referring to the right of registration of another trade mark?
(b) Is the protection of well-known/renowned trade marks based on the article 296(2)(iii) of the IPL or may it be protected also with reference to the provisions of the Act on combating unfair competition?
(c) How far one person can monopolize the principle of creating trade marks, especially word-figurative trade marks in relation to commonly encountered combination of colours and shapes that are used on the market?

The Polish Supreme Court in its judgment of 23 October 2008 case file V CSK 109/08 agreed with the lower courts that the risk of association should be based on similiarity of figurative elements that both trade marks share. In court’s opinion, the overall visual impression is the basis for creating a positive image of VELUX products and it decides on the risk of association, in consequence, enabling for the parasitic use of the mark by the Polish company and which also led to dilution of the distinctive character and reputation associated with the VELUX trade mark.

R-183931

The Court also ruled that, if the use of a registered trade mark infringes on a previously registered trade mark, the infringer should refrain from using his right of protection because it is not a subject to protection based on rules of the civil law. The protection granted by the Polish Patent Office has only a formal aspect and it is governed by the administrative proceedings. In case of trade mark infringement it is up to the civil court to decide during the civil proceedings whether trade mark that was registered later should be afforded legal protection. There is no reason and no need to file a request for invalidation of the right of protection before the PPO.

In the answer to the second question the SC based its answer on the wording of Article 1(2) of the IPL.

The provisions of this Law shall not prejudice the protection of the subject matter referred to in paragraph (1)(i) [i.e. the relationships in the field of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits], provided for in other legal acts.

The protection of renowned trade marks is afforded by both acts. As regards “monopolization”, the SC ruled that the Polish company was banned from using a sign that associates to a specific sign used by the VKR Holding A/S. Accordingly no-one was granted a protection right to the principle of creating a trade mark.

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

In the shade of the recent opinion of Advocate General Eleanor Sharpston QC given to the Court of Justice of the European Communities in case C‑529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, here is the story of couple of judgments decided in the recent suits brought against the Polish company Terravita by the Swiss company Chocoladenfabriken Lindt & Sprüngli, AG from Kilchberg in Switzerland.

Lindt's hare

Lindt & Sprüngli requested the Polish court to prohibit Terravita from offering, marketing or storage chocolate products with a characteristic shape of a seated hare, wrapped in metail foil with clearly marked drawings of nose, bandoline, eyes, ears and tail with bow placed on the neck. Lindt also asked the court to stop the defendant using or affixing “Terravita hare” or its image in advertising and commercial documents, and an order that the defendant withdraw the “Terravita hare” from the market, requiring the defendant to destroy all packagings, packaging designs and dies, molds and other devices intended to produce and direct wrapping the “Terravita hare”.

The District Court in Warsaw, the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 22 September 2005 dismissed the action. The court held that the conditions set out in article 9(1)(b) of the CTMR were not met. In the court’s opinion “Goldhase”, “Lindt” and “Terravita” signs that appear on the respective products differentiated them significantly and hence there is no risk of consumer’s confusion. The average consumer of chocolate hares does not perceive the origin of the goods only on the basis of the shape of a hare, but also on the basis of other important and distinguishing elements, including the mark placed on the product, the color of the packaging, its price, the trade mark identifying the manufacturer. The average consumer sees the difference in colour of the packaging of chocolate hares, and these were different in this case. Lindt’s packaging of the hare has the color of gold, red and brown, and Terravita’s are in silver. In addition, the District Court indicated that according to article 159a(5) of the CTMR, the defendant has only the right to prohibit the use of a trade mark on the territory of the Republic of Poland.

Terravita's hare

Lindt brought an appeal. The Appellate Court in Warsaw in its judgment of 6 July 2006 case file I ACa 616/07 dismissed the case. The Court held that the shape and the colour did not inform about the origin of the goods. The form of a sitting hare, Easter eggs or bells do not have a distinctive characteristic. The court similarly assessed the coloring of the aluminum foil placed on chocolate hares. The colour of silver and gold are typical for chocolate products. In this case, the only distinctive elements of both products were sings “Goldhase Lindt” and “Terravita” and they were dissimilar. Accordingly there was no risk of consumers confusion as regards the orgin of goods.

Lind brought a cassation complaint to the Supreme Court of the Republic of Poland. The Court, in its judgment of 13 April 2007, case file I CSK 16/07, ordered the Appellate Court to reconsider the case. The Supreme Court has interpreted the EU law, pointing to the need for a comprehensive assessment of similarity of the disputed signs. Only such an assessment would determine whether there is a risk of confusion.

The Court of Appeal, after rehearing the case, changed its judgment in favour of Lindt. The court found that the Golden hare was introduced by Lindt on the Polish market in 1997 (16 pieces), and 240 pieces in 1998. On March 1999, Terravita purchased in Germany the same form as the form used by Lindt and began producing and marketing of chocolate hares. Therefore the disputed hares share the same shape and size. Both are packaged in foil – gold, or silver, both have a ribbon tied to the neck in bow but Terravita’s is printed on the foil and there is no bell. The Court of Appeal stated that the condition for the likelihood of confusion has been met. The court stressed that Lindt’s Gold hare is well known among consumers of chocolate products. Therefore, there was no doubt to believe that Lindt’s hare has a huge recognition among consumers of chocolate products, especially if its presence on the market was established for more than nine years. With regard to the Terravita silver hare the Court of Appeal held that, although the latter figure was produced using the same form as used by the Lindt, and thus both hares are having the same shape and size but additional drawings and elements preclude similarities.

This time, Terravita brought a cassation complaint. The Supreme Court in its judgment of 3 October 2008, case file I CSK 96/08 held that in the circumstances of this case, there is no doubt that disputed hares are not identical and only its shape is the same, since they are manufactured from the same form. However on the foil of both hares, in a prominent place, one may find adequately put signs “Lindt Goldhase” or “Terravita”, which in fact makes the likelihood of consumer confusion practically excluded. The Court cited its earlier case law. The Supreme Court in its judgment of 1 February 2001, case file I CKN 1128/98, published at OSNC 2001, No. 9, item. 136, held that if word-figurative trade marks are used on the market then the word elements of such signs should have been attributed the distinvtice characteristics. The SC in its judgment 8 April 2003, case file IV CKN 22/01, published at OSP 2004, No. 5, item 61, held that in case of word-figurative trade marks the word element has the distinctive characteristics because it determines the ease of assimilation and the perception by the public. The Supreme Court in its judgment of 14 November 2003, case file I CK 176/02 (unpublished) excluded the risk of confusion in a situation where bottles used by the plaintiff and the defendant had the same shape (as in the facts of this case these bottles came from the same form), but were labeled with various word and images elements. In conclusion, the Court held that in the case of two identical products, one of which concerns the Community trade mark, the likelihood of confusion within the meaning of article 9(1)(b) of CTMR does not exist, if the other characteristics of goods, in particular bearing the word or image, allow them to be clearly distinguished.

Computer crimes, case VI K 849/07

October 6th, 2008, Tomasz Rychlicki

On August 11, 2008, the District Court in Glogów (VI Wydzial Grodzki) issued an important ruling case file VI K 849/07, regarding a man accused by the prosecutor of using computers to breach electronic security of a company server and database which allowed him to obtain information not intended for him (personal data) thereby acting to the detriment of the business. Mateusz M. was accused by the prosecutor based on regulations provided in Artice 267 §1 of the Polish Penal Code.

Chapter XXXIII. Crimes against protection of information
(…)
Article 267.
§ 1. Whoever, without being authorised to do so, acquires information not destined for him, by opening a sealed letter, or connecting to a wire that transmits information or by breaching electronic, magnetic or other special protection for that information shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.
§ 2. The same punishment shall be imposed on anyone, who, in order to acquire information to which he is not authorised to access, installs or uses tapping, visual detection or other special equipment.
§ 3. The same punishment shall be imposed on anyone, who imparts to another person the information obtained in the manner specified in § 1 or 2 discloses to another person.
§ 4. The prosecution of the offence specified in § 1 – 3 shall occur on a motion of the injured person.

Mateusz M. had browsed through an internet company website and found that the service contained serious programming errors. He put into the login form a string of signs as follows “‘ or 1 = 1″ (and repeated this operation in the password field), which resulted in him being signed/logged into a random user account which allowed him to gain access to several user accounts and their personal data. Mateusz M. decided to exploit this opportunity and made contact with company’s representatives. He informed them that he detected a gap in their website security which allowed him entry to the marketing database of firms owned or connected with the company which operated this online database. In the meantime, Mateusz M. checked other websites and online services created by the same authors of the first website. He has also found that all of them contained the same programming errors because all these websites were built using the same content management system (CMS). Mateusz M. was invited by the company to sign a contract to remove these programming errors. He was also presented with a non-disclosure agreement (NDA), which he signed. However the NDA’s date was set prior to the date he had detected the programming errors and this was used by the company to enable the police, who were co-operating with the company, to arrest Mateusz M.

During the pre-trial proceedings the court’s expert in the field of information technology stated that in his opinion Mateusz M. had used “a form of attack on the company’s database called SQL Injection”; the aim of such an attack is “to extract confidential information from the database and to disrupt its operation”. In the course of the proceedings before the court, the District Court in G#x142og1ow allowed the counsel for the defence to admit evidence of another expert.

The second expert provided the court with an opinion that by introducing a string “‘ or 1 = 1″ Mateusz M. had not made any breach of the database, he did not crack any password allowing for access to the database, he did not type or insert any software code and Mateusz M. had not affected the functioning of the database in any way. According to the second expert, Mateusz M. had not removed the database security, and he had not changed the password access, nor did he create any new accounts in the database. In this expert’s opinion, the introduction of the said string by Mateusz M. should be considered as an “SQL Injection” method that was used to circumvent the protection of a database, but that it was permitted by the improper and inadequate protection scheme applied to the database by its creators. The “Sign in” form of the database was designed in such a way that merely typing any string of characters was permitted as an input of data for this type of form. The database authors had not implemented any solutions to verify whether the database stored a user name or password attached to such a string, and as it had not, the database did not generate a proper error message

The court held that the action of the accused failed to comply with the statutory elements of Article 267. In the court’s opinion, breaching security occurs when the offender destroys or removes the security, or when the impact of the offender’s action on the security temporarily removes its protective function. Thus a person who gains access to sensitive information without breaking any security measures is not criminally responsible.

The court ruling acquitted the accused of all the charges based on art.632(2) Polish Criminal Proceedings Code, and the court held that the costs of wrongful prosecution were to be covered by the state. This decision was final and consequently there are pending amendments to the Polish Criminal Code relating to the aforementioned regulations.

Trade mark law, case V ACa 469/07

January 7th, 2008, Tomasz Rychlicki

The District Court in Częstochowa in its judgment case file V GC 83/04 and the Appellate Court in Katowice in its judgment case file V ACa 469/07 ruled that the name DELICJE (better known by English readers as Jaffa cakes is not distinctive. This holding ends the legal battle that was started by Lu Polska S.A. (owned by Kraft Food) against five other companies.

However, this judgment is not congruent with other courts’ decisions regarding the Delicje R-70513 trade mark. The District Court in Warsaw ruled on 27 march 2007 that the Tago Company, owned by Tadeusz Gołębiowski, which produces Delicje, Delicje Mazowieckie, Delicante and Fruktolicja cakes, infringed Lu Polska’s trade mark.