The Supreme Administrative Court in its order of 28 June 2010 case file II GPS 1/10 held that provisions of Article 272 § 1 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, serve as the basis for resumption of proceedings in administrative courts, whenever the ruling of the Constitutional Tribunal on compliance of the provisions of substantive and procedural with the Constitution, international agreement or act, concerned a legislative act, which was applied or should be applied before the administrative court or public authority in a given case.
Archive for: Polish Supreme Administrative Court
Procedural law, case II GPS 1/10
September 3rd, 2010, Tomasz RychlickiTrade mark law, case II GSK 607/09
August 31st, 2010, Tomasz RychlickiTRODAT POLSKA Sp. z o.o. from Warsaw applied for the right of protection for Pieczątka 2, Pieczątka 3 and Pieczątka 4 trade marks Z-294822, Z-294821 and Z-294823 in class 13. Pieczątka means “stamp” in English. The Polish Patent Office in letters dated 27 March 2007 informed the applicant that these signs are not capable of serving as trade marks due to lack of sufficient distinctive character and urged Trodat to submit comment on this issue. The applicant did not respond to the letters sent by the PPO, in particular, Trodat did not take any position on the reported lack of sufficient distinctive character.
The Supreme Administrative Court in its judgment of 14 July 2010 case file II GSK 607/09 held that the burden of proof rests on those who seek for legal consequences from a particular fact for itself (the applicant), it results from a series of obligations incumbent on the applicant, including the obligation to provide explanations, to take an active part in the proceedings and to submit precise requests. These obligations are provided in articles 145(2) and 152 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 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 later amendments, in connection with Regulation of the Prime Minister of 8 July 2002 on filing and processing of trademark applications, Journal of Laws (Dziennik Ustaw) No 115, item 998 with subsequent amendments.
Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.
2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.
3. Where the statutory requirements are found not to have been satisfied in respect to only certain goods, a right of protection for the trademark in respect of these goods shall be first to be refused by the Patent Office. On the respective decision becoming final the Patent Office shall grant a right of protection for the trademark in respect of the goods, for which it can be granted.Article 152
The Prime Minister shall, by way of regulation, determine the detailed requirements to be satisfied by a trademark application, the detailed rules and procedure to be applied in the course of examination of trademark applications including, in particular, the extent to which the relevant information may be disclosed to the public after the expiration of the period referred to in Article 143 and the manner in which it is made available, as well as the extent to which the Patent Office is authorised to make corrections in the list of goods and their classification. The requirements to be satisfied by trademark applications may not be determined in such a way as to encumber the applicant with excessive and unreasonable impediments.
The renunciation of the party – despite the invitation issued by the Polish Patent Office – to submit sufficient evidence, explanations, positions may not be of no importance in a situation where the party alleges that the PPO erred in its decision in this particular issue, as a result of breach of the obligation imposed on the PPO to clarify the circumstances of the case in accordance with Article 7 and 77 of the 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.
Article 7
Public administration bodies shall uphold the rule of law during proceedings and shall take all necessary steps to clarify the facts of a case and to resolve it, having regard to the public interest and the legitimate interests of members of the public.Article 77.
§ 1. The public administration body is required to comprehensively collect and examine all evidential material.
§ 2. At each stage of proceedings a body can amend, supplement or withdraw rulings made regarding the examination of evidence.
§ 3. An body conducting proceedings as a result of having been required to do so by the body having jurisdiction to settle the case (Article 52) may, on an ex officio basis or on application by one of the parties, hear new witnesses or experts on circumstances that form the objects of such proceedings.
§ 4. Universally accepted facts and facts known to the body ex officio do not require proof. Parties to proceedings should be informed of facts that are known to the body.
The SAC noted that the provisions of the IPL that provides the possibility to request the applicant by the PPO to submit comments or issue a statement, in fact, serve to define the limits of administrative case, such as defining what is to be examined by the PPO and to what extent this should occur. The PPO is required to make an invitation before taking a decision, therefore, before deciding on the matter. At this stage, it is possible to have the intervention of the parties, if, contrary to the intentions expressed in the request/application, the PPO, for example, does not cover by its activities of all elements of the case, or unreasonably restricts its borders.
Trade mark law, case II GSK 495/09
August 10th, 2010, Tomasz RychlickiOn 14 March 1994, Polish entrepreneur operating under the name Usługi Pogrzebowe “Hades” Włodzimierz Wasilewski from Częstochowa applied for the right of protection for HADES Z-130892 trade mark in class 45, funeral services. Another Polish entrepreneur operating under the name Nowak Tomasz Firma Pogrzebowa HADES from Łódź filed an opposition to a final decision of the Patent Office on the grant of the right of protection for HADES R-148641 trade mark.
Tomasz Nowak claimed that the Polish Patent Office ruled on the discontinuance of examination proceedings for HADES Z-130892 because of the failure to pay application fees and on 6 March 1999, he decided to file for the right of protection for word-figurative trade mark HADES Z-198798 in classes 26 31 39 42. On 26 September 2001 the PPO granted the right of protection for HADES R-132619 trade mark. Tomasz Nowak argued that the resumption of proceedings by the Patent Office on the application of HADES Z-130892 trade mark, which led to the granting of the right of protection, deprived him of part of the right acquired in good faith and the possibility to obtain the protection for the next sign. According to Tomasz Nowak the decision on the grant of the right of protection for HADES R-148641 trade mark, not only violates his right to earlier acquired trade mark, but most of all it violates the principle of certainty and security of legal transactions. It leads to a situation where the market will experience two identical trade marks, registered for identical goods, however, enjoyed by the various owners, which is contrary the rules of trade mark law of course.
The PPO dismissed the opposition and Tomasz Nowak filed a complaint against this decision of the PPO. He based its claims on provisions of article 8(1) and (2) of 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 later amendments.
Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;
Tomasz Nowak also challenged the examination proceedings which led to the registration of the questioned trade mark.
The Voivodeship Administrative Court in Warsaw in its judgment of 14 January 2009 case VI SA/Wa 1941/08 ruled that legal provisions invoked in the complaint cannot be applied to assess the legality of the registration proceedings conducted by the PPO. Accordingly, the request for invalidation of right of protection of HADES trade mark under these provisions was irrelevant. The provisions of the TMA, or the IPL does not provide in the course of the litigation proceedings lead by the PPO, the possibility to control the legality of the administrative proceedings that concerned the registration of the questioned trade mark. The Court ruled that the allegations of violation of the administrative procedure by the PPO could only qualify as a basis for annulment of the decision. Tomasz Nowak was required to bring such claims in the complaint, however he did not so. Tomasz Nowak filed a cassation complaint.
The Supreme Administrative Court in its judgment of 15 June 2010 case file II GSK 495/09 dismissed the cassation complaint. The SAC ruled that the VAC could not review the decision on the grant of a right of protection for HADES R-148641 trade mark. The VAC had to decide within the scope of the complaint and shall be bound by the legal ground invoked by the requesting party. The SAC also expressed the view that the registration of the name of someone else’s company does not preclude the registration of a trademark but the right to a name of the company must be infringed, and the existence of such right has not been proven by Tomasz Nowak. The complainer has not demonstrated that he had the right to name of the company. Actually both entrepreneurs have the right to use HADES sign as their business name. The complainer also argued that the mere prior use of the sign and not in relation to the applicant, but in relation to the entitled to the right of protection, provides a sufficient argument that the questioned trade mark infringes personal or economic rights of third parties. The SAC ruled that this view is incorrect. It clearly refers only to infringement of personal or property rights.
Telecommunications law, case I OSK 1079/10
August 3rd, 2010, Tomasz RychlickiThis is the continuation of a story described in “Personal data protection, case II SA/Wa 1598/09“. The Supreme Administrative Court in its order of 15 July 2010 case file I OSK 1079/10 decided to stay the execution of the decision issued by the Inspector General for Personal Data Protection (GIODO) and ruled that the Polish Act of 16 July 2000, Telecommunications Law – TLA – (in Polish: Prawo telekomunikacyjne), published in Journal of Laws (Dziennik Ustaw) No 171, item 1800 with later amendments, provides broader protection of personal data because of telecommunications confidentiality, than the provisions of the Act of 29 August 1997 on the Protection of Personal Data – PPD – (in Polish: Ustawa o ochronie danych osobowych), Journal of Laws (Dziennik Ustaw) of 29 October 1997, No. 133, item 883, unified text published in Journal of Laws (Dziennik Ustaw) of 6 July 2002, No. 101, item 926, with later amendments.
The Court held that the disclosure of IP addresses which enable identification of specific individuals, that was ordered during administrative proceedings initiated with regard to disclosure of such data, while such proceedings did not ended with judgment in force, may violate the provisions of Article 160 of the TLA.
Article 160.
1. An entity participating in the performance of telecommunications activities within public networks and entities cooperating with it shall keep the telecommunications confidentiality.
2. Entities referred to in paragraph 1 shall maintain due diligence, within the scope justified by technical or economic reasons, while securing telecommunications equipment, telecommunications networks and data collections from disclosing the telecommunications confidentiality.
3. A person coming into possession of a message not meant to be read by him/her when using radio or terminal equipment shall keep the telecommunications confidentiality. The provisions of Article 159 (3) and (4) shall respectively apply.
4. The recording of a message acquired in a manner described in paragraph 3 by a body executing control of telecommunications activities in order to document a violation of a provision of the Act, shall not be a violation of the telecommunications confidentiality.
While assessing the validity of the request to stay the execution of GIODO’s decision to disclose the requested IP address at this stage of proceedings, the Court agreed with the author of the cassation complaint, that the execution of the questioned decision at this stage makes it impossible to reverse the actions taken after the disclosure of the IP addresses, and such action should be seen as causing the effects that are difficult to reverse according to Article 61(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.
§ 1 Filing a complaint does not stay the execution of the act or actions.
(…)
§ 3 After the delivery of a complaint to the court, the court may issue at the request of the applicant, the order to stay the execution, in whole or in part of the act or actions referred to in § 1, if there is a risk of causing significant damage or cause to be difficult to reverse, with the exception of the provisions of local law which entered into force, unless the special Act excludes the stay of their execution. The refusal to stay the execution of the act or actions by the authority, does not deprive the applicant of action to the court. This also applies to acts issued or adopted in all proceedings conducted within the same case.
The SAC held that if the Supreme Administrative Court would agree with the cassation complaint filed against the judgment of the Voivodeship Administrative Court of 3 February 2010 case file II SA/Wa 1598/09, the effects of the execution of the questioned decision could not be reversed, because the IP address identifying a specific person is available to another participant in the proceedings. Accordingly, the court held that the correct solution at this stage of proceedings, is to stay the execution of the questioned decision also with a view to the impact of which its execution might result in, as well as the nature of the protection of personal data resulting from the relevant regulations such as, inter alia, the TLA.
See also “Polish regulations on personal data protection“, “Polish case law on personal data protection“.
Industrial design and trade mark law, case II GSK 481/09
July 14th, 2010, Tomasz RychlickiThis is the continuation of the history described in “Industrial design and trade mark law, case VI SA/Wa 710/08“. The Polish company decided to file a cassation complaint to the Supreme Administrative Court, hoping the Court would clarify the interpretation of article 117(2) of the IPL.
The Supreme Administrative Court in its judgment of 15 May 2010, case file II GSK 481/09 ruled that there is no issue of wrong implementation of article 11 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The Court noted that even the preamble of Design Directive explicitly states that Member States should remain free to fix the procedural provisions concerning registration, renewal and invalidation of design rights and provisions concerning the effects of such invalidity. Therefore, there is no need to refer a question to the Court of Justice of EU for a preliminary ruling. The SAC did not agree with arguments that the issue of finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall be decided by civil court and not by the PPO. The question of similarity of the questioned design and 3D trade mark should also be decided by the PPO. The Court did not follow arguments presented by the General Court in its judgment of 12 May 2010 in case T-148/08, Beifa Group Co. Ltd v Office for Harmonisation in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG. However, the SAC did agree with the Polish company that facts of the case were not handled properly by the Voivodeship Administrative Court. Therefore, the SAC annulled the questioned judgments and returned the case to the VAC for reconsideration and ordered the Polish Patent Office to pay the Polish company a reimbursement of costs of the cassation compliant.
See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.
Trade mark law, case II GSK 608/09
July 13th, 2010, Tomasz RychlickiThe Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 held that at both the opposition proceedings as referred to in article 246 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 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 later amendments, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a patent, a right of protection or a right in registration due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.
Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.
Broadcasting law, case II GSK 741/09
July 13th, 2010, Tomasz RychlickiThe Supreme Administrative Court in its judgment case file II GSK 741/09 held that the Polish Act on Broadcasting – LOB – (in Polish: Ustawa o radiofonii i telewizji) of 29 December 1992, Journal of Law (Dziennik Ustaw) of 1993, No 7 item 34, consolidated text of 19 Novemver 2004, Journal of Laws (Dziennik Ustaw) No 253 item 2531, with later amendments, does not provide grounds to prohibit broadcasting at the same time, various local content in the concession decision on transmission of local bands. The opinion of The National Broadcasting Council on the prohibition of fission of broadcasts shall not serve as the basis for justification of the decision.
Procedural law, case II GZ 141/10
July 12th, 2010, Tomasz RychlickiThe Supreme Administrative Court in its order of 7 July 2010 case file II GZ 141/10 held that when examining the application for grant the right of assistance the Court does not undertake any action where the accurate data to allow a full assessment of the financial status and the applicant’s ability to pay are not known, because the applicant avoids to submit of relevant documents on this subject. The right of assistance covers the exemption from court fees and the establishment of the lawyer, tax advisor, or patent attorney. It is the interests of the party to demonstrate the merits of an application in the light of the statutory conditions for granting the right of assistance. See also “Procedural law, case FZ 165/04“.
Trade mark law, case II GSK 496/09
July 2nd, 2010, Tomasz RychlickiThe Polish Patent Office has refused to recognize the right of protection for a trademark PREMIUM DE-LUXE NEMIROFF IR-802093 registered for Nemiroff Intellectual Property Establishment because of its similarity to a series of earlier trade marks owned by the Pokish Company Wyborowa S.A. This series included word trade mark PREMIUM R-71602, PREMIUM VODKA R-82601, GOLD PREMIUM R-108603 and many others. Nemiroff filed a request for reconsideration claiming that the word “Premium” with respect to alcohol is often used to describe more accurately its class and quality and in this connection it has no distinctive character. Consumers are choosing alcohol based on its quality and the name of the manufacturer.
The Patent Office upheld the contested decision. The PPO explained that the most exposed part of the questioned trade trade is the word PREMIUM, because of its location, size and bright color in contrast to the soothing white-blue-gray color of the rest of the sign.The PPO stated that the word “Premium” is easy to remember, but it has rather poor degree of distinctive character, which are often used to denote exceptional quality. The figurative elements of the mark in such a situation may not be sufficient to exclude the likelihood of misledading the purchasers as to the origin of the goods, in particular, it will not help to exclude the associations between characters. Although the PPO agreed with the position of the parties as to the universality of the word “Premium” in trade, however, the PPO also noted that in the strict sense it may be a distinctive sign in Poland, and it is the most exposed element in questioned trade mark. The broad and long-term use of it in the form of trade marks used by Wyborowa S.A. allowed it to acquire a secondary meaning. Given the above, the Patent Office found that in normal economic turnover PREMIUM DE-LUXE NEMIROFF may mislead the public as to the origin of the goods, as well as infringe the rights of protection of the owner of the opposed trade marks.
Nemiroff filed a complaint. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1583/08 sided with PPO’s opinion. The VAC held that the Office properly decided that the questioned trade mark is similar to a series of earlier registered trade marks, all including the distinctive word element „Premium”, which created the risk of the public being misled.
Nemiroff filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 March 2010 case file II GSK 496/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that the VAC erred in assessing the similarity between the opposing trade marks by focusing only on one element – the word “Premium”, without trying to explain its distinctive character as a designation of exceptional quality of a product. Then it would be difficult to talk about the fact that the earlier registered trade marks with the word ‘Premium” come from one source. The owner of a sign that has weak distinctive character must often tolerate the coexistence of the similar trade marks.
Polish patent attorneys, case II GZ 224/09
June 28th, 2010, Tomasz RychlickiThe 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 later 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 degrees of jurisdiction. This principle is consistent with the articles 176(2) of the Polish Constitution.
Procedural law, case II FSK 153/09
June 11th, 2010, Tomasz RychlickiThe Supreme Administrative Court in its judgment of 21 May 2010 case file II FSK 153/09 held that the allegations made in the cassation complaint are key issues for identyfing the boundaries of a given case. The Supreme Administrative Court shall decide the case within the scope of a cassation complaint, examining ex officio only the invalidity of the proceedings. The legitimacy of cassation complaint shifts from the legitimacy of allegations that were raised in it, which should be demonstrated by appropriate justification. The exclusion by the Voivodeship Administrative Court of binding interpretation of law in a given case, that is based on article 153 of the PBAC, is a violation of law, in particular the democratic rule of law provided in article 2 of the Polish Constitution.
Polish patent attorneys, case I OZ 356/10
May 30th, 2010, Tomasz RychlickiThe 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.
Tax law, case I FSK 1444/09
May 21st, 2010, Tomasz RychlickiThe Polish entrepreneur asked the Director of the Tax Chamber in Kraków, whether the inclusion in the billing of VAT of the amount of tax charged on the purchase of goods and services on the basis of invoices and correction invoices received by e-mail or fax, not in the form of electronic invoices with digital signature, is correct. The Director ruled that such interpretation is incorrect. The Company did not agree with this decision and filed a complaint to the administrative court. The Voivodeship Administrative Court (VAC) in Kraków in a judgment of 17 March 2009, case file I SA/Kr 97/09 dismissed the case. The Company filed a cassation complaint. The Supreme Administrative Court in a judgment of 20 May 2010, case file I FSK 1444/09, ruled that invoices that were sent via fax or e-mail are equivalent to these sent via traditional mail. What’s more important, such invoices do not need any electronic signature.
Trade mark law, case II GSK 555/09
May 17th, 2010, Tomasz RychlickiSome P.T. Readers may remember the story described in the post entitled “Trade mark law, case VI SA/Wa 2376/08“. The rest was as follows. The Free Trade Union of Drivers of the Republic of Poland (FTUD) and its representative disagreed with the decisions of the Polish Patent Office and the Voivodeship Administrative Court and filed a cassation complaint to the Supreme Administrative Court. The FTUD claimed that the drawing of an eagle included in its sign differs from the National emblem, because it has different colors and is on a different background. The Union also argued that the sign emphasizes its national identity, and not link with the state bodies. According to the Union, the PPO already registered many characters that consist of national symbols that were artistically altered. The refusal of registration of the questioned sign limits the competition argued the Union.
The Supreme Administrative Court in a judgment of 21 April 2010, case file II GSK 555/09, dismissed the cassation appeal. According to the SAC the provisions of the IPL and the Act on Coat of Arms, Colours and Anthem of the Republic of Poland should be read together. Neither the emblem or image of the Eagle established as the emblem and symbols of the Republic of Poland shall not be subject to protection rights. This applies also to similar signs – said Judge Małgorzata Korycińska. The judgement is final.