Archive for: Voivodeship Administrative Court

Trade mark law, VI SA/Wa 1962/07

January 22nd, 2013, Tomasz Rychlicki

The Polish company Zakład Gospodarki Komunalnej Organizacja Odzysku Biosystem S.A. requested the Polish Patent Office to take a decision on the lapse of the right of protection for IR-653449 and IR-585713 trade marks registered for goods in the following Classes 1, 2, 3, 5, 6, 7, 8, 9, 11, 16, 20, 21, 24, 25, 29, 30, 32, 34, 35, 36, 39, 40, 42. Both trade marks are owned by Der Grüne Punkt Duales System Deutschland GmbH.

IR-653450

In support of its legal interest, Biosystem S.A. explained that it is one of more than 30 domestic companies that are specializing in recovery of certain categories of waste and like other market participants have the right to use the informational signs. While Rekpol S.A., being the sole licensee of Der Grüne Punkt Duales System Deutschland GmbH trade marks, is sending C&D letters to different businesses, including Biosystem S.A. According to Biosystem the questioned trade marks are spread and used among various companies and as the result of negligence of the owner and licensee these signs cannot fulfill the functions to designate the origin of a particular entrepreneur and have degenerated in respect of all goods and services and become a carrier of information in trade that the product bearing the mark shall be recovered.

IR-653449

The PPO decided that the Polish company had no legal interest (but only factual one) in all classes of goods since it produces none of the goods covered by the protection right (and it doesn’t not sell them), but only provides services related to recovery of certain categories of waste. The PPO only agreed that Biosystem S.A. has shown legal interest in seeking the lapse of the disputed trade mark registration in part, on all services (i.e., services included in Classes 35, 36, 39, 40, 42). In this respect, the PPO considered that the interest can be inferred from the principle of freedom of establishment guaranteed in the provisions of Article 20 of the Polish Constitution and Article 6 of the Act of 2 July 2004 on Freedom of Economic Activity. Biosystem filed a complaint against this decision.

The Voivodeship Administrative Court in its judgments of 15 April 2008 case file VI SA/Wa 1959/07 and VI SA/Wa 1960/07 held that the definition of waste and recycling, shows that waste are the goods. Thus, in the view of the Court it was possible to trade in such goods. The court held that it may be that the scope of activities of Biosystem S.A. include those goods. Hence the need to examine the legal interest in the classes of goods. Legal interest shall be tested at the beginning of hearings, therefore, the VAC did not address the merits of the dispute. The Court ruled that the repealed decisions of the Polish Patent Office should not be enforceable.

The Voivodeship Administrative Court has also decided on other PPO’s decisions with regard to IR-585714 and IR-653450 trade marks and held the same in its judgments of 24 April 2008 case file VI SA/Wa 1961/07 and VI SA/Wa 1962/07. All four cases went back to the Polish Patent Office.

Again, Biosystem argued that the characters have lost their distinctiveness, as they appear on millions of packages of goods from various manufacturers. The company cited a research institute Pentor that consumers do not identify these signs with a particular trader. They are applied by different manufacturers for packaging and currently only indicate that they are subject to disposal (safe for the environment). Biosystem claimed that information as such cannot serve as trade mark and the sign does not identify an entrepreneur.

Der Grüne Punkt-Duales System Deutschland and Rekopol noted that they were active in defending these trade marks against the lapse, because both companies warned many entrepreneurs, that Grüne Punkt trade marks cannot be used without a proper license. In this way, both companies care about the protection of the brand which excludes the possibility of the lapse due to lack of distinctive character. The Polish Industrial Property Law clearly states that the loss of the distinctive character must be the consequence of the owner’s acting or negligence.

The Adjudicative Board of the PPO in its decisions of July 2010 case no. Sp. 363/08 and case no. Sp. 433/08 and ruled on the lapse of the right of protection. The PPO agreed with the argument that Grüne Punkt trade marks became very popular in many markets, especially in Europe. According to the case file, there are around 95,000 licenses granted all over the world for their use, and for example, in Western Europe, they are placed on almost 91% of the packaging. Such method of placing trade marks on a variety of products that originate from different manufacturers does not meet the conditions of the genuine use of the mark in its function.

The Voivodeship Administrative Court in Warsaw in its two judgments of 9 March 2011 case file VI SA/Wa 2169/10 and case file VI SA/Wa 2171/10 dissmissed complaints filed by Der Grüne Punkt-Duales System and Rekopol. Both companies filed cassation complaints. The Supreme Administrative Court in its judgments of 21 November 2012 case file II GSK 1551/11 and case file II GSK 1646/11 dismissed them both which in consequence lead to the final lapse of both trade mark rights on the Polish territory.

Personal data protection, case I OZ 850/12

January 20th, 2013, Tomasz Rychlicki

The Inspector General for Personal Data Protection in its decisions of 1 April 2012 nos. DOLiS/DEC-318/12/23575, 23580, 23585 ordered a Polish company to disclose IP addresses of computers. This information was required in other proceedings. The company filed a complaint against this decision and requested the court to stay its execution.

The Voivodeship Administrative Court in Warsaw in its order of 14 August 2012 case file agreed and GIODO filed a complaint against it.

The Supreme Administrative Court in its order of 21 November 2012 case file I OZ 850/12 dismissed it.

Trade mark law, case VI SA/Wa 2032/11

January 7th, 2013, Tomasz Rychlicki

On 17 August 2009, EMPIK CAFE sp. z o.o. applied to the Polish Patent Office for the right of protection for the word trade mark Lody prawdziwie domowe Z-359478 for goods and services in Classes 29, 30, 35 and 43. “Lody prawdziwie domowe” means real homemade ice cream. The PPO decided that the sign lacks distinctiveness because in terms of semantic, the combination of three words does not create the concept that would be distant from content directly read from the statement, and refused to grant the right of protection. This nominal phrase is a carrier of advertising message, referring to the characteristics of the goods and has no features that would suggest that it is more than a slogan, that is a trade mark. Monopolization of such a non-distinctive designation by one entrepreneur, which is the carrier of information and used in advertising, would violate the principle of freedom of economic activity and fair competition. EMPIK CAFE filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 23 April 2012 case file VI SA/Wa 2032/11 dismissed it. The Court held that the essential function of a trade mark, which follows from its very definition, is to distinguish the goods of one undertaking from those of other undertakings, and ruled that the advertising nature of a trade mark does not eliminate its recognition as a distinctive or nondistinctive sign. The Court repeated that rights of protection should not be granted for signs which are devoid of sufficient distinctive character, especially, signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods. Descriptive signs may be one of the components of a trade mark, such as a specific binding word or symbol indicating a characteristic of the goods. Both, the legal commentators and the case law of administrative courts say the descriptive trade mark is a sign that has the characteristics of actual, specific and direct descriptiveness. The actuality of signs is examined objectively and leads to determining whether from the point of view of current market conditions such indication is useful for the description of the goods, and as such, it should be available for all participants. The rule of specific descriptiveness indicates that a sign is excluded from the registration as a descriptive only if it points to the specific characteristics of the goods, for which the trade mark is intended. The direct description occurs when a descriptive mark provides information about the characteristics of the particular goods directly, clearly and unambiguously, so that it may be well to read directly, and not by the way of connotations. Then a trade mark is assessed as a whole, and not only through the prism of one element – a descriptive word, but other accompanying elements. After all, not every slogan has to be registered. Of course, there is no normative definition of distinctiveness. Distinctiveness of a slogan serving as a trade mark must be sufficient. This means that in the minds of consumers the sign will be able to identify the origin of the product or service with an entrepreneur. It is therefore only possible if such belief collapse in the minds of consumers that the goods or services are produced under the control of a given company, and with its consent. This is the only way such a slogan as a trade mark will be recognizable, yet can serve as a valuable business asset.

E-access to public information, case II SAB/KR 152/12

November 28th, 2012, Tomasz Rychlicki

In another case of Tomasz Zieliński, the author of transportoid.com service and software available for Android and Windows Phone that provides timetables of public municipal transport systems, the Voivodeship Administrative Court in Kraków in its judgment of 26 November 2012 case file II SAB/KR 152/12 ruled that source code that was used to create a website with public communication timetables is not deemed as public information.

See also “Polish case law on e-access to public information“.

Trade mark law, case VI SA/Wa 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Trade mark law, case VI SA/Wa 959/12

November 20th, 2012, Tomasz Rychlicki

The Polish Patent Office refused to grant the right of protection for the word-figurative trade mark Quatro Pak quality packaging Z-370075 applied for the goods in Class 16 such as paper, printed matter, instructional and teaching material (except apparatus) by the Polish company Sokpol sp. z o.o. The PPO decided that the applied sign is similar to the CTM QUATRO no. 005799325 and International registration QUATRO IR-0923559, both registered for the same goods in Class 16. Sokpol filed a complaint against such decision. The Company argued that the main element of its word-figurative sign are two words – QUATRO PAK, and not the word QUATRO itself.

Z-370075

The Voivodeship Administrative Court in its judgment of 3 October 2012 case file VI SA/Wa 959/12 dismissed it. The Court held that the assessment of the dominant meaning to the word elements in the word-figurative trade mark word is grounded in the belief that words are the most easily seen and remembered elements and thus are the most effective channels of communication with the customer. This assumption cannot be questioned only in relation to the words that carry a clear and understandable information to the average consumer, so to the words quite well-known and understood in the Polish language. There should be no doubt that the word QUATRO cannot be attributed to any clear and understandable information in Polish. Thus, it will be perceived by the average consumer as an abstract expression in relation to the goods bearing trade marks at issue.

Trade mark law, case VI SA/Wa 1716/11

November 15th, 2012, Tomasz Rychlicki

On 4 January 2011, the Polish Patent Office invalidated the right of protection for the word-figurative trade mark PIEKARNIA CUKIERNIA Jacek Gaj R-175774. The request for invalidation was filed by the Polish company who owned similar earlier trade mark registration. The PPO cited findings included in the judgment of the Court of Justice of 6 October 2005 case C-120/04 and in the judgment of the Supreme Administrative court of 26 October 2006 case file II GSK 37/06, and agreed with the Courts that by adding to the complex trade mark of the word element, indicating the company from which the goods originate, such method does not remove the risk of misleading the public, since the perception of the mark as a whole may lead to the impression that the goods or services of compared signs come from companies that are economically linked. Jacek Gaj filed a complaint against this decision.

R-175774

The Voivodeship Administrative Court in its judgment of 20 February 2012 case file VI SA/Wa 1716/11 dismissed it. The Court ruled that general perception of trade marks by a potential customer – the consumer, is crucial for assessing the similarity. Verbal elements are generally dominant in the complex signs, but not when they are purely informative, descriptive, including word elements with the name of the other business.

Trade mark law, case VI SA/Wa 769/12

November 5th, 2012, Tomasz Rychlicki

Red Bull GmbH requested the Polish Patent Office to decide on the lapse of the word-figurative trade mark TAURUS IR-604762 owned by Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft M.B.H. from Austria, and effectively registered on the Polish territory since 27 July 1993. Red Bull claimed that Gablitzer Getrankeindustrie und Kaffeehandelsgesellschaft was deleted from the registry of entrepreneurs in June 2001, and attached, as evidence, an excerpt from the register, which showed that the trade mark proprietor after the bankruptcy has been removed from the register of companies. Red Bull provided also a certified translation of the document.

IR-604762

The Adjudicative Board of the Polish Patent Office in its decision of 14 December 2011 case no. Sp. 286/10 ruled on the lapse of the right of protection as on 13 September 2007. Red Bull requested the PPO to correct an obvious mistake in the date of the lapse. The Company noted that the PPO made that mistake, because there was an error in translation into Polish of the extract from the Austrian register. Red Bull attached corrected translation from the German language, explaining the reasons for the correction. The PPO in its order of January 2012 ruled that the mistake was no committed by PPO, but by the translator. Thus, it was not subject to correction. Red Bull filed complaint against the decision.

The Voivodeship Administrative Court in its judgment of 5 September 2012 case file VI SA/Wa 769/12 annulled the contested decision, and ruled it unenforceable. The VAC noted that the public authority is obliged to carry on the proceedings in the Polish language, both in oral actions and in order to keep the documentation of the procedure in Polish, and it’s a legal obligation to use in administrative proceedings translated documents. However, the Court held that the public authority, acting on the request of a party, cannot decline to investigate the content of the document along with its translation, as the results of this examination should be unambiguous, and failure to do so, constitutes a breach of the rules of administrative proceedings that may have a significant impact on the outcome of the case. The case-law of administrative courts generally accepted the rule that – regardless of the requirements of Article 5 of the Act on the Polish language – the evidence is the content of the document created in foreign language, not its translation. Translation does not a substitute a document written in a foreign language, but serves only to determine what is the content of that document.

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

October 31st, 2012, Tomasz Rychlicki

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

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

Trade mark law, case II GSK 1563/11

October 30th, 2012, Tomasz Rychlicki

The Voivodeshipp Administrative Court in Warsaw its judgment of 21 December 2010 case file VI SA/Wa 1579/10 dismissed the complaint filed by the Polish company Dimyat Polska Sp. z o.o. against the decisions of the Polish Patent Office on the refusal to grant the right of protection for the word trade mark PLISKA Z-135975 applied for the goods in Class 33 such as alcoholic beverages, wines, liqueurs, cognac, brandy, vodka, spirits. The PPO decided that the applied trade mark is devoid of sufficient distinctive character, because it does not individualise the goods on the market. The sign Pliska has no distinctive graphics, does not have any distinguishing features that would help to identify the manufacturer of the goods. Pliska is the name of the village in Bulgaria, in the Shumen district. It is not a fancy designation, but a sign informing about the geographical origin. The first figurative trade mark Pliska has been applied in the Republic of Poland in 1962 by the Bulgarian company. Since then alcohol products bearing Pliska trade mark have been introduced on different markets, among others, the Polish one. In addition, the PPO noted that the mark applied sign may contain inaccurate information, as it may cause confusion of the average consumer as to the origin of goods. The recipient who are buying alcoholic beverages bearing Pliska sign would believe that they were produced in Bulgaria. The Court agreed with the PPO and supported its view with the arguments included in the judgment of the Court of Justice of the EU of 4 May 1999 in joined cases C-108/97 and C-109/97 Windsurfing Chiemsee Produktions.

Dimyat Polska Sp. z o.o. filed a cassation complaint. The company argued inter alia that the decision in this case was issued by a person whose mother in law sat in the panel of the judges in the VAC. At the hearing before the Supreme Administrative Court, the counsel for the PPO acknowledged that the decision of the first instance in the Patent Office was issued by an expert who is daughter in law of one of the judges.

The Supreme Administrative Court in its judgment of 28 September 2012 case file II GSK 1563/11 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that despite the merits of the cassation complaint, there was a condition of nullity of the proceedings. The Polish Act on Proceedings Before Administrative Courts states that a judge is excluded in deciding a case in matters that concern his or her relatives in a straight line and in-laws to the second degree. In the present case, the mother-in-law is a first-degree relationship. The institution of exclusion of a judge is a procedural guarantee which consist of the impartiality of the judge that is identified with objectivity of the proceedings. The impartiality of judges is this kind of value for which the protection and execution is particularly important in a democratic state of law. Such defined impartiality should be identified with objectivity that is expressed in the equal treatment of the parties of any proceedings, so that there is no favorable situation for any of them. The court proceedings must be conducted in such a way that there is not even an apparent impression of behavior that would be deemed as disregard of standards of impartiality, being a manifestation of judicial independence.

E-access to public information, case II SAB/Kr 105/12

October 19th, 2012, Tomasz Rychlicki

Tomasz Zieliński, the author of transportoid.com service and software available for Android and Windows Phone that provides timetables of public municipal transport systems, requested Miejskiego Przedsiębiorstwo Komunikacyjne (Municipal Transport Company) in Kraków to disclose public information in the form of electronic database of timetables. MTP refused and argued that the request goes beyond the the Act on Access to Public Information, apart from, the requested information is available on the website. Mr Zieliński filed a complaint on failure to act.

The Voivodeship Administrative Court in Kraków in its judgment of 18 September 2012 case file II SAB/Kr 105/12 agreed with Mr Zieliński and ordered MTP to take appropriate actions that were indicated in the request.

See also “Polish case law on e-access to public information“.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market presence and existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of ​​the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case II GSK 1156/11

September 25th, 2012, Tomasz Rychlicki

The European Commission filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the word-figurative trade mark euro SKLEP R-180808 that was applied for by the Polish company Euro Sklep S.A. from Bielsko Biała. The EC said that the trade mark contains an imitation of the European Union flag because it has five distinctive yellow stars (mullets) arranged in an arc (part of a circle) on a blue background – which obviously violates the official symbol of the European Union. Euro Sklep argued that the opposition is unfounded, because the argument that the trade mark is an imitation symbol is an obvious abuse of the law by the EC, since the examination of signs is to be assessed as a whole, and not by attributing the illusory similarities. The Polish Patent Office invalidated the right of protection. According to the PPO, the average consumer who sees the mark with prominent yellow sign EURO accompanied by five-pointed stars in a semi-circle, will associate it with the flag of the European Union. The PPO pointed out that the use of the EURO caption, as well as graphic elements in the form of a bird or incomplete number of stars, does not rule out the conceptual similarity, since use of the word euro as the dominant element of the mark may exacerbate the association of the recipient that he has to deal with an institution agenda of the European Union. Euro Sklep filed a complaint against this decision and noted that in this case the PPO was not dealing with registration of the flag of the European Communities/European Union as a trade mark, but at most, it would be its imitation from a heraldic point of view. However, the PPO did not properly explain this issue. The Company noted that the imitation prohibited under Article 6ter of the Paris Convention is narrower in scope than an imitation, which normally is considered to be unacceptable between the trade marks. According to Euro Sklep, this view is particularly justified because very often the National flags and emblems contain items commonly used, in particular those relating to flora and fauna, such as lions, bears, flowers, etc., which must remain in public domain for free use.

R-180808

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1036/10 dismissed the complaint and ruled that the fact of using only half of the symbol did not matter from a heraldic point of view, because the PPO was still dealing with the emblem (flag) of the European Union. Euro Sklep S.A. filed a cassation complaint. The Company argued that the presence of the words on the flag is the negation of the principles of heraldry, and itself refutes allegation of heraldic imitation. Euro Sklep pointed out to couple of CTMs registered by the OHIM that share the same symbols of of yellow stars on blue background.

The Supreme Administrative Court in its judgment of 18 September 2012 case file II GSK 1156/11 dismissed the cassation and ruled that the provisions of Paris Convention and Polish Industrial Property Law were introduced to protect National emblems and symbols against dilution.

Trade mark law, case VI SA/Wa 1267/11

September 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 1267/11 dismissed the complaint brought by the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa against the refusal decision of the Polish Patent Office to grant the right of protection for the word-figurative trade mark BSO legge & Tasse Z-344754.

Z-344754

The Court agreed with the PPO that the applied sign is almost identical with the word CTM BSO no. 001463017 and ruled that for the average recipient of legal services they are similar to intellectual property consultancy, patent, design and trademark agency, because the average consumer of legal services, who comes to the office lead by a legal advisor (radca prawny) or advocate, simply instructs his case in the belief that it returns to the competent professional. The Court could not deny the competence to lawyer who is dealing with the industrial property issues and cases, as this area of law is also subject to examination for people who would like to qualify to the legal profession. This judgment is final.

Access to public information, case I OSK 903/12

September 11th, 2012, Tomasz Rychlicki

Daniel Macyszyn, acting as the President of the ePaństwo Foundation, asked the First President of the Supreme Court of the Republic of Poland to disclose information why and on what legal basis, the Supreme Court in its decision No. BSA III – 055-90/11 posted references to the LEX software that is published by Wolters Kluwer, in situation when information available under these references is available for free and in public repositories that are published by the Supreme Administrative Court, and there are also other commercial legal information systems available on the Polish market. The Foundation wanted to know, whether the Supreme Court has the license for the use of LEX software. If the answer was positive, the Foundation inquired when, and in what procedure, and for what price and how many licences were purchased, and what were the criteria for selecting this software. Mr Macyszyn also aksed why the Supreme Court uses this software and not the public and free resources such as repositories of decisions of administrative courts, provided by the Supreme Administrative Court and the gazettes published by the Government Legislative Centre. The last question was whether the Supreme Court cooperates with the Wolters Kluwer on matters other than purchasing a license by the Supreme Court to the LEX. The First President refused to initiate proceedings with regard to disclosure of the requested information and noted that civil law contracts between public authorities with third parties operating in the sphere of private law, do not belong to the category of public information, consequently, they cannot be disclosed to anybody. Such contracts do not in fact belong to the category of “public information” within the meaning of Article 6(1) pt. 4 of the Polish Act of 6 September 2001 on Access to Public Information – API – (in Polish: Ustawa o dostępie do informacji publicznej), published in Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments.

Article 6. 1. The following information is subject to being made available, in particular on:
1) internal and foreign policy, including:
a) intentions of legislative and executive authorities,
b) drafts on normative acts,
c) programmes on realisation of public tasks, method of their realisation, performance and consequences of the realisation of these tasks,
2) entities, defined in Article 4, it. 1, including:
a) legal status or legal form,
b) organisation,
c) subject of activity and competencies,
d) bodies and persons performing functions therein and competencies,
e) property structure of entities, defined in Article 4, it. 1, points 3-5,
f) property they dispose of,
3) principles of functioning of entities, defined in Article 4, it. 1, including:
a) mode of conduct of public authorities and their organisational units,
b) mode of conduct of state legal persons and legal persons of local authorities in the area of performing public tasks and their activity within the frames of budget and non-budget economy,
c) methods of passing private-public acts,
d) methods of accepting and settling matters,
e) state of accepted cases, order of their settling or resolving,
f) conducted registers, books and archives and on methods and principles of making data there contained available,
4) public data, including:
a) contents and form of official documents, in particular:
– contents of administrative acts and other resolutions,
– documentation on the control and its effects as well as presentations, opinions, conclusions and statements of the entities having conducted the control,
b) opinion on public issues made by the bodies of public authority and by the public officers in the understanding of the provisions of the Penal Code,
c) contents of other presentations and assessments made by the bodies of public authority,
d) information on the condition of the state, local authorities and their organisational units,
5) public property, including:
a) property of the State Treasury and state legal persons,
b) other property rights to which the state and its debts are entitled to,
c) property of the units of local authority and professional and economic local authorities as well as property of legal persons of local authorities and the ill persons’ offices,
d) property of the entities, defined in Article 4, it. 1, point 5, coming from disposing of the property, defined in c. a) – c) as well as the profits from this property and its encumbrances,
e) incomes and losses of the commercial companies in which the entities, defined in c. a) – c) hold the dominant position in the understanding of the provisions of the Commercial Companies Code and disposal of this income and the method of covering losses,
f) public debt,
g) public assistance,
h) public burden.
2. The official document in the understanding of this Act is the text of declaration of will or knowledge, preserved and signed in any form by the public officer in the understanding of the provisions of the Penal Code within the frames of its competencies, directed to another entity or filed to the acts.

The Foundation requested for the re-hearing and the First President again refused. Daniel Macyszyn filed a complaint against these two refusal orders.

The Voivodeship Administrative Court in Warsaw in its judgment of 10 January 2012 case file II SA/Wa 2257/11 repealed both orders of the First President and ruled them unenforceable. The First President filed a cassation complaint.

The Supreme Administrative Court in its judgment of 11 September 2012 case file I OSK 903/12 dismissed it and held that any agreement between the public authorities and other entities, is deemed as public information. The Supreme Administrative Court pointed out that in matters of access to public information, the public authority cannot refuse to initiate proceedings. It have to either disclose public information, or if there are situations provided in Article 5 of the API, refuse to disclose such information, but in the form of a decision. But even while considering by the authority, whether the requested information is public information, or in case that would lead to the answer that the information is not public information, or that the authority simply does not have it, the proceedings were already initiated, therefore it cannot refuse to initiate it.

The Supreme Administrative Court in its judgment of 11 September 2012 case file I OSK 916/12 dismissed another cassation complaint filed by the First President against the judgment of the Voivodeship Administrative Court in Warsaw of 10 January 2012 case file II SA/Wa 2259/11 that repealed orders of the First President of the Supreme Court in which it refused to initiate proceedings to disclose information on the content of the contracts, which the Supreme Court of the Republic of Poland, the authorities or persons acting under the authority of the government, concluded with the company Wolters Kluwer, with regard to series of books published by Wolters Kluwer such as “Studies and analysis of the Supreme Court” and “Bulletin of the Supreme Court – Labour and Social Security and Public Affairs Chamber”, and the disclosure
of the contents of the contracts, which the Supreme Court of the Republic of Poland, the authorities or any person acting from on behalf of the authorities, have concluded with the publishing house LexisNexis Publishing sp. z o.o,, with regard to a series of publications such as “The case law of the Supreme Court – Civil Chamber (OSNC)”, “The case law of the Supreme Court – Labour, Social Security and Public Affairs Chamber (OSNP)”, and disclosure of the contents of the contracts, which the Supreme Court of the Republic of Poland, the authorities or persons acting under the authority of the government, concluded with the Editorial Board of the “Palestra” with regard to a series of publications entitled “The case law of the Supreme Court – Criminal Chamber and the Military Chamber (OSNKW)”. The Foundation requested also the disclosure of information on what procedure governed the purchase of the above mentioned periodicals by the Supreme Court, in what amounts and for what price.

Trade mark law, case VI SA/Wa 557/11

September 10th, 2012, Tomasz Rychlicki

On 2 January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark GLOBAL R-192958 for the Polish entrepreneur Marek Stefaniak from Gdańsk, for goods and services in Classes 9, 16, 35, 37, 38, 39, 41, 42 and 43. On 30 July 2008, the Swedish company Global Refund Holdings AB filed the request for invalidation for goods in Classes 9 and 16 and for services in Class 35. Global Refund argued that the sign in question is similar to its trade mark G GLOBAL REFUND IR-688582.

R-192958

The Polish Patent Office in its decision of 1 June 2010 case no. Sp. 148/09 found similarity of goods and services and decided that both trade marks share the same word element which may cause consumers’ confusion. Therefore, the PPO invalidated the right of protection. Marek Stefaniak filed a complaint against this decision.

IR-688582

The Voivodeship Administrative Court in its judgment of 17 August 2011 case file VI SA/Wa 557/11 ruled that according to the provisions of Article 255(4) of the IPL, the PPO decided and settles cases in litigation procedure within the scope of the request and should be bound by the legal ground invoked by the requesting party. Thus, the request for invalidation of the right of protection for a trade mark define the scope of the administrative case by defining its borders, both as to the facts and the legal basis for the request. This rule in this proceeding was even more important because it was contradictory procedure, and thus characterized by adversarial nature. A party that initiates the dispute also determines to what extent the statutory requirements were not met in order to obtain a trade mark registration and submits evidence in support of its position. The settlement of case within the scope of the request means that these limits can not be exceeded. In the opinion of the Court, going beyond the scope of the request for invalidation of the registration violates the interests of the holder of the registration. The judgment is final.

Trade mark law, case VI SA/Wa 1616/11

August 28th, 2012, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark V V V.V. MOTOR R-205440 for goods in Class 12. This sign was applied for by FUSAN HANDICRAFT Co. from Taiwan. On April 2009, Volkswagen AG filed a notice of opposition to the decision of the Patent Office. VW argued that the trade mark in question is similar to its well-known and reputed CTM, and the reputation is obvious and does not require any evidence. After careful examination of the case, the PPO invalidated the right of protection. FUSAN HANDICRAFT Co. filed a complaint against this decision.

R-205440

The Voivodeship Administrative Court in its judgment of 18 November 2011 case file VI SA/Wa 1616/11 dismissed the complaint. The Court ruled that despite the editorial differences in the lists of goods of compared trade marks, the PPO correctly decided that some of the goods are to be regarded as identical. The Court agreed that the dominant element of the trade mark at issue was a composition of graphics and letters placed in the circle. That was another argument in favour of finding the similarity of signs. So the phonetic differences resulting from the different pronunciation of the letters “VV” and “VW” did not neutralize the visual similarity between the marks. The Court did not agree with the argument that the PPO failed to properly assess the similarity of the goods. The PPO did not examine too broadly the comparable lists of goods, becasue there was no doubt that VW using the priority, had the chance to seek for the broader protection for its trade mark.

Procedural law, case VI SA/Wa 377/12

August 19th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 12 July 2012 case file VI SA/Wa 377/12 held that adding to the complaint evidence which, according to the adversarial principle should be presented by a party in the administrative proceedings and have not been submitted to the PPO before a decision was issued, is deemed as delayed and cannot be taken into account when assessing the validity of a decision of the PPO. Transferring the burden of proof on the administrative court is inconsistent with the role of this court, which does not decide on administrative cases, but its rule is to control administrative decisions in terms of their compliance with the law.

Procedural law, case VI SA/Wa 1239/11

August 7th, 2012, Tomasz Rychlicki

On 1 March 1994, the company France-Euro Agro applied to the Polish Patent Office for the registration of the word trade mark SOBIESKI Z-130304 for goods in Class 33 such as alcoholic beverages except beer. In its decision of March 1997, the PPO refused to register the applied trade mark because of the similarity with the word-figurative trade mark A SOBIESKI POLISH VODKA R-85456 that was registered with the earlier priority for the same goods in Class 33. This trade mark is currently owned by BELVEDERE S.A. France-Euro Agro withdrew its request for re-examination of the case. However, on December 2005, BELVEDERE requested the PPO to repeal the refusal based on the provisions of Article 154 § 1 of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, published in Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments.

A final decision, on the basis of which none of the parties acquired any rights, may be at any time repealed or amended by the public administration authority which issued the decision or by the authority of higher level if it is justified by the public interest or fair interest of the party.

The Company noted that the risk of misleading potential consumers has been eliminated as the owner of both trade marks is now the same entity. BELVEDERE argued also that the PPO does not respect the constitutional rule of law and equal treatment of entities in the application of law, because it has registered three word-figurative trade marks Jan III Sobieski SJ for BRITISH AMERICAN TOBACCO POLSKA TRADING Sp. z o.o., despite the existence of the earlier right of protection for the trade mark A SOBIESKI POLISH VODKA R-85456. The PPO refused to repeal the decision of 1997. The PPO emphasized that decisions taken in such proceedings are discretionary, which means that the PPO examines, whether in the particular situation, the public interest or the fair interests of a party is in favor of the repeal of the final decision. The requirements of public interest or the interests of the parties must be assessed on an individual case and must receive individualized content, resulting from the factual and legal issues. The interest of the party should be “fair” within the objective meaning i.e. it has to be justified by circumstances of the case and accepted under applicable law, also from the standpoint of public interest. According to Polish legal doctrine, the term “public interest” is not defined by the law, and the content of this concept is given by the adjudicating body. The scope of the discretion of the administrative body during the recognition of such issues is limited, for instance by the existence of general principles of administrative proceedings, such as the public interest and fair interest of citizens. The fair interests of citizens is not only deemed as the interest of parties involved in this particular case, but also the interests of other parties to the proceedings before the Patent Office, in this case those who have applied for trade marks after the refusal of March 1997. By withdrawing the request for re-examination of the matter, France-Euro Agro waived its right to appeal, which led to the ultimate end of the proceedings and allowed other entities to apply for trade mark protection. BELVEDERE filed a complaint against this decision.

R-85456

The Voivodeship Administrative Court in Warsaw in its judgment of 7 December 2011 case file VI SA/Wa 1239/11 dismissed it and held that the proceedings to repeal the final decision should not be regarded as a retrial of the case. The Court held that both the institution of proceedings de novo, as well as the repeal of the final decision, are procedures used to verify the faulty decisions, that allows for setting the decision aside, in the situations specified by law, despite its finality. Given the exceptional nature of these procedures, they cannot be abused by a broad interpretation of the conditions of admissibility of their application. The overriding principle is to guarantee the sustainability of the final administrative decision. The Court agreed with the PPO that BELVEDERE could file requests for the invalidation of the rights of protection for trade marks JAN III SOBIESKI JS.

E-access to public information, case II SAB/Wa 30/12

August 3rd, 2012, Tomasz Rychlicki

A Polish citizen requested a Mayor of the Community to disclose copy of the existing office instructions which are in force in the community. Mayor replied that information covered by the request is available on the Community website. The applicant filed a complaint on the failure to act.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 July 2012 case file II SAB/Wa 30/12 ruled that the public authority has not provided the requested information, because the Mayor had only indicated its source – the online Public Information Bulletin (BIP). According to the Court, the Mayor should also give a direct link, under which the requested information is located. The mere URL to the BIP of the Community, cannot be considered as complying with the request.

See also “Polish case law on e-access to public information“.

Trade mark law, case VI SA/Wa 1806/11

August 3rd, 2012, Tomasz Rychlicki

The Polish entrepreneur IT5.PL Anna Sasin applied to the Polish Patent Office for the right of protection for the word trade mark PsychoDietetyka Z-325335 for services in classes 35, 38, 39, 41, 42, 43 and 44. The PPO refused and decided that the combination of two words (English: Psycho and Dietetics) lacks distinctiveness and is descriptive for the applied services. The PPO ruled that the etymology of these two words is well known and easy to verify in publicly available dictionaries, or search engines. Psychodietetyka is the name of a program dealing with the causes of eating disorders and diseases associated with poor nutrition (including diabetes, obesity, anorexia, bulimia), that also indicates psychological factors in eating disorders, such as lack of motivation to fight obesity and overweight, emotional sphere, impaired perception of self, relationships with family, problems with identity formation. The PPO noted that if someone type the phrase psychodietetyka, many search results of that word appear in the web browser. IT5.PL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 15 February 2012 case file VI SA/Wa 1806/11 dismissed it and noted that the combination of words lies in their simple fusion into one word, without giving them any unusual form of graphic or semantic, so that they could be deemed as distinctive for the marked goods. It did not matter that the applied sign was not present in a dictionary, because it is not a measure of distinctiveness of signs. The Court noted also that the Polish and European case-law presents both liberal and rigorous views on examination of descriptiveness of trade marks. However, the principle of individual assessment of each sign is consistent in the legal doctrine and jurisprudence. This judgment is final.

Trade mark law, case VI SA/Wa 137/12

August 3rd, 2012, Tomasz Rychlicki

BP p.l.c filed before the Polish Patent Office a request for the invalidation of the figurative trade mark R-218916 registered for goods and services in Class 4, 31 and 39 and owned by Albert Korman. BP claimed similarity to its figurative CTM no. 1916550, word-figurative CTM BP no. 4100335 and figurative CTM no. 4236279, that were registered with the earlier priority for goods and services in the same classes. BP noted that it uses a combination of green and yellow colors, especially green and yellow figurative element of the trending-like sun rays on a circular or semicircular shape, for the identification of its services. The Company argued that the goods and services of the trade mark at issue are the same or similar. BP also relied on the judgment of the Polish Court for the Community Trade Marks and Community Designs case file XII GWzt 15/08 in which the court found that the BP’s trade mark is highly distinctive, which may result from both the lack of descriptive elements in the sign as well as with the reputation and goodwill, which the mark has among the buyers.

R-218916

The Voivodeship Administrative Court in Warsaw in its judgment 11 April 2012 case file VI SA/Wa 137/12 ruled that due to the fact that the Polish Patent Office correctly decided that there were no indications that the applied trade mark was identical or similar to a trademark for which a right of protection was already granted , therefore, it was pointless to assess the reputation of the previous sign. Since the PPO properly determined that the marks are not similar, any considerations about the use of another’s reputation were not justified. The Court repeated that dissimilar signs cannot produce associations, so there can be no conscious imitation and profiting from someone else’s reputation. The correct view is that the lack of similarity between the signs eliminates the need to examine the use of another’s reputation, as the “precondition” of accepting the argument that the use of reputation has happened, is to determine the similarity between the signs, and the second condition is to establish the applicant’s trade mark has the reputation. This judgment is not final yet.

Tax law, case I SA/Łd 657/12

August 2nd, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in Łódź in its judgment of 29 June 2012 case file I SA/Łd 657/12 held that the agreement that provides the website to use for advertisers is deemed as the unnamed contract and is similar in its provisions to a contract of tenancy as defined in the Article 693 of the Civil Code – CC – (in Polish: Kodeks Cywilny) of 23 April 1964, published in Journal of Laws (Dziennik Ustaw) No. 16, item 93, with subsequent amendments.

Article 693. § 1. By a contract of tenancy, the landlord shall assume the obligation to give a thing to the tenant for use and the collection of fruits for definite or indefinite time, and the tenant shall assume the obligation to pay to the landlord the rent agreed upon.

The Court decided that the income from advertising should be taxed like tenancy contracts or leases, which allows a taxpayer to choose a lump sum settlement on registered revenues.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Trade mark law, case VI SA/Wa 301/12

July 23rd, 2012, Tomasz Rychlicki

On 21 December 2007, the Polish Patent Office granted the right of protection for the word trade mark TEFAPAK R-199130 for goods in Class 1 such as graphite for industrial purposes, in class 6 for base metal alloys, and in Class 17 for sealants.

E.I. du Pont de Nemours & Company filed a notice of oppostion, arguing that TEFAPAK is similar to its reputed trade mark TEFLON R-49573, that was registered with the earlier priority of 27 September 1968 for goods in Classes 1, 2, 17, 21 and 22.

The Adjudicative Board of the PPO in its decision 17 November 2010 case no. Sp. 388/09 dismissed the opposition. The PPO did not find any similarities between both trade marks. E.I. du Pont filed a complaint against this decsion.

The Voivodeship Administrative Court in its judgment of 11 July 2012 case file VI SA/Wa 301/12 dismissed it. The Court confirmed that, since the signs are not similar the reputation of an opposing trade mark is irrelevant. This judgment is not final yet.

Trade mark law, case VI SA/Wa 1269/11

July 18th, 2012, Tomasz Rychlicki

On August 2008, the Polish law firm BSO PRAWO & PODATKI – Bramorski Szermach Okorowska Kancelaria Prawna Spółka komandytowa from Wrocław applied to the Polish Patent Office for the right of protection for the word-figurative trade mark BSO RECHT & STEUERN Z-344756, for legal services in Class 45. The PPO refused because of the similarity with the CTM BSO no. 001463017 registered with the earlier priority for services in class 41 such as education and providing of training relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others, and in Class 42 for services such as Intellectual property consultancy, patent, design and trademark agency, including legal consultancy, engineering services, research and development for third parties and computer programming and services in relation to computer hardware, all relating to intellectual property, patent, trademark, design and legal matters and relating to research and development for others. This CTM is owned by the Danish IP law firm BUDDE SCHOU A/S. The PPO stated that the phrase “Recht & Stenern” (English: tax and law) is devoid of any distinctive character, as an expression, which determines only the scope of activities. This expression is not noticeable in the sign, because it is written in very small letters at the bottom, so there is no significant impact on public perception. Undoubtedly for the PPO, the acronym BSO was predominant, and the fact that the applied trade mark consists of three words and the earlier sign only one – BSO, was not important in this situation for the assessment of similarity. The PPO concluded that the same assesment applies to the figurative element. BSO PRAWO & PODATKI filed a complaint against this decision.

Z-344756

The Voivodeship Administrative Court in its judgment of 3 October 2011 case file VI SA/Wa 1269/11 dismissed it. The Court ruled that a stylized symbol of section sign (paragraph) is generally accepted as an indication of the persons and entities providing legal services. Such a figurative element, no matter in what color or in any styling, recognizable as a double S symbol, is perceived to be connected with the law. It was difficult to accept that such an element, in a graphic that indicates the applicant’s company, would distinguish it from other law firms or companies providing legal services. The difference in the territorial operation of both companies was irrelevant for the PPO and the Court, because the CTM covers the entire territory of the European Union, and both companies are located there, in different Member States. This judgment is final.

E-access to public information, case I OSK 730/12

July 16th, 2012, Tomasz Rychlicki

Błażej P. who is serving a sentence of imprisonment, requested the Minister of Justice to disclose paper copy of public information from the online Public Information Bulletin (PIB) that concerned the Ministry of Justice. The Minister answered that it can only disclose information, which was not made available in the Public Information Bulletin. Błażej P. filed a complaint against such decision. He noted that he is serving a prison sentence and thus he does not have access to the PIB. Therefore, the decision of the Minister violates the constitutional right of access to public information. The Voivodeship Administrative Court dismissed the case, and Błażej P. filed a cassation complaint together with the request the Constitutional Tribunal to decide on the constitutionality of the provisions of Article 10 of the Polish Act of 6 September 2001 on Access to Public Information – API – (in Polish: Ustawa o dostępie do informacji publicznej), published in Journal of Laws (Dziennik Ustaw) No. 112, item 1198, with subsequent amendments.

Article 10. 1. Public information, which was not made available in the Public Information Bulletin, is made available on the petition.
2. Public information, which can be immediately made available, is made available in the oral or written form without a written petition.

Błażej P. argued that the fact that the convicted person has to request the prison director on Internet access in order to access public information that is available at the PIB, makes the access dependent on the will of the director, and the provisions of the Punishment Execution Code do not provide for use of the Internet.

The Supreme Administrative Court in its judgment of 21 June 2012 case file I OSK 730/12 dismissed it. However, the Court said that serving a prison sentence does not exclude inmates from access to the Internet or mobile phones, but it also does not mean that it may be unlimited access and to any information. Inamtes may use it, but on the rules established in the prison. They can also obtain public information in a form other than online, as determined by the provisions of the Punishment Execution Code.

See also “Polish case law on e-access to public information“.

Industrial design law, case VI SA/Wa 1744/11

July 13th, 2012, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 16 February 2012 case file VI SA/Wa 1744/11 ruled that the term “public order” and “morality”, as defined in the provisions of Article 106(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, are not unequivocal.

Article 106
1. Rights in registration shall not be granted for industrial designs whose exploitation would be contrary to public order or morality; exploitation of an industrial design shall not be considered to be contrary to public order merely because it is prohibited by law.

The Court ruled that it is assumed that the inadmissibility of the design that is contrary to “morality” is primarily aimed at preventing the circulation of designs that violate social moral order. From this point of view, a design (product incorporating the design) and its circulation on the market should be examined with regard to the collision with generally accepted moral principles. While “public order” is defined by the basic social and legal principles, in particular legal principles arising from the Constitution.

Rp-10113

This case concerned the industrial design “Zeszyt edukacyjny” (in English: educational exercise book) Rp-10113. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case VI SA/Wa 1780/11

June 19th, 2012, Tomasz Rychlicki

The Polish company NTT System S.A. applied for the right of protection for word trade mark NTTonLine Z-330715 for services in Class 35. The PPO noted that the entry in the list of services such as “management of the licensing of goods and services to third parties”, was placed in the trade mark application in Class 35. The PPO ruled that it is a very general term, referring to all goods and services. Meanwhile, according to International Classification of Goods and Services “licensing of industrial property” and “licensing of computer programs” should be classified in class 45. Therefore, PPO asked for clarification of the original term – so as to eliminate any doubt regarding the scope of protection of the trade mark NTTonLine, because the general reference to all goods and services could in fact raise the risk of inclusion of general terms that belong to the different classes. NTT System did not submit any additional documents or corrections and the PPO discontinued the examination proceedings. NTT filed a complaint against this decision, and later withdraw it.

The Voivodeship Administratice Court in its order of 8 December 2010 case file VI SA/Wa 2122/10 was required to examine whether such withdrawal is not intended to evade the law or if it would leave in force a void decision. The Court ruled that that withdrawal was acceptable in this case. NTT filed a cassation complaint, and the Supreme Administrative Court in its order of 9 August 2011 case file II GSK 1127/11 annulled the order of the VAC and returned the case for further reconsideration.

The Voivodeship Administrative Court in its judgment of 5 April 2012 case file VI SA/Wa 1780/11 found that this time NTT System did not request the withdrawal of the complaint, and demanded a hearing. The Company argued that it is not true that the services listed in Class 35 are general in nature, and they need to be clarified, because for all general terms in the Nice Classification are marked with an asterisk, and only such terms should be clarified. Moreover, the contested final decision of the Polish Patent Office violated the law as it was issued by an unauthorized person – an expert not having the appropriate authority to consider this particular case. Such authorization should be granted by the President of the PPO. The Court held that the most important is the recommendation that the particular text appearing in the alphabetical list should be used as the indication of goods or services, not a general term. And the mere fact that a specific good or service are listed in alphabetical order does not affect the individual decision of national industrial property offices on the possibility of registration of the mark for such goods or services. The wording of the list of goods and services must be clear not only for the applicant, but also for third parties who either may submit an opposition to the grant of the right of protection, or simply by applying or using the sign, they wish to avoid a collision with a similar trade mark with an earlier priority. The court considered the request of the PPO that was addressed to the applicant in order to clarify the list of services, as justified. The Court ruled that the President of the Polish Patent Office is empowered to authorize certain persons not only to make decisions on her behalf in certain matters, but also to select of experts or assessors to act in certain cases. The expert examining the case was properly authorized by the President of the PPO. Taking into account all the arguments, the Court dismissed the complaint.

Trade mark law, case VI SA/Wa 1222/11

June 12th, 2012, Tomasz Rychlicki

On January 2000, the Polish Patent Office registered the trade mark DACH-BUD PERDKOWIE R-116968 for goods in Class 19 and services in Class 37. This sign was applied for by Polish entrepreneurs Krzysztof Perdek and Zbigniew Perdek Zakład Ogólnobudowlany DACH-BUD in 1996. Przedsiębiorstwo Budownictwa Ogólnego DACH BUD Spółka z o.o. from Wrocław filed a request for invalidation. DACH BUD argued that at the time of trade mark application, it was the only business that has used the sign DACH BUD as its company name. In 2002, one of the shareholders of the present company DACH BUD Spółka z o.o., has filed a request for invalidation, but it was dismissed by the PPO and the Voivodeship Administrative Court in its judgment of 22 December 2005 case file VI SA/Wa 337/05.

R-196146

Also in this case, the PPO dismissed the request and decided that the proceedings were separate and independent in relation to proceedings that were held before on the request of the predecessor of DACH BUD. According to the PPO, the request based on the provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, was unjustified, and there were no grounds to invalidate the right of protection. That provision states that the registration of a sign which infringes personal or property rights of third parties, has to be refused. All the personal interests that are protected under the provisions of the Polish Civil Code, are identified among the rights of a personal nature. The name (firm) of the limited liability company (spółka z ograniczoną odpowiedzialnością) is the name under which the company is established according to the provisions of the Polish Code of Commercial Companies. The name of business/entrepreneur is treated as its personal right and as such is protected as the right to company name. According to legal commentators, it is an absolute personal right of an entrepreneur, and it is effective, erga omnes, against all. Its content is defined as the ability to use the company name to identify business/entrepreneurs on the market. The company name of a private person or entrepreneurs acting as a commercial companies, is not transferable. The Polish legal doctrine and case law established the view that the registration of a sign that is corresponding to the designation of another entrepreneur, that was used before the registration of that trade mark, affects the personal interests of such entrepreneur. However, that interference in the sphere of personal property, and more specifically – in the right to the name of the entrepreneur, may also occur in case of use of the part of that name, if it is a part that is fulfilling the function that sufficiently individualize an entity, i.e. that allows to uniquely identify and distinguish the company from other private or legal (corporate) persons. The PPO ruled that a similar position should be adopted in case of registration of a figurative sign, which in the word element contains the company name (firm) of another entity, or a significant part of it. The PPO noted that the company did not exist at the filing date of the disputed trade mark, and it could not effectively rely on the infringement of its right to the company name by the disputed sign, Therefore, if the applicant’s right was not the right “with a better priority”, there were no grounds to consider the request. In the opinion of the PPO, in the exercise of its personal interests, the applicant could rely only on the right enjoyed by it exclusively, and not by others. In particular, the company could not claim and invoke any right that was enjoyed by its shareholder – a private person. DACH BUD Spółka z o.o. filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 January 2012 case file VI SA/Wa 1222/11 agreed with the PPO and dismissed it. The Court noted that in case of conflict of rights, in this case, the protection right for a trade mark with a personal interest that includes the right to company name, the priority is to protect the personal interest. However, the registration of a trade mark that is identical or similar to a company name does not prejudge the infringement of the right to a company name. This exclusive right is not a total absolute. Its limits are defined by the coverage (territorial and goals) and the time of actual activities of the entity that is using the name. The collision between identical or similar company name and a trade mark may occur only within these limits. This judgment is not final yet.