The President of the Office of Competition and Consumer Protection charged Vision Film Distribution and Warner Bros Poland of practices violating collective interests of consumers and unfair competition delicts. The results of this proceedings are included in decisions no. DDK-14/2007 of 25 May 2007 and decision no. DDK-5/2007 of 31 January 2007. Both companies were accused and fined for providing false information on copyright law on their movie products that were distributed on DVDs.
Archive for: Polish Act on Combating Unfair Competition
Unfair competition, case V CSK 237/06
June 22nd, 2007, Tomasz RychlickiHortex Holding SA Company (Hortex) filed a suit against Hortino, seeking (i) a preliminary injunction to prohibit Hortino labelling its products with its trade mark, (ii) an order that Hortino publish an apology in the press, and (iii) the return of unjustified and undeserved profits gained through the trade mark infringement.
The legal dispute between Hortex and Hortino spanned two different jurisdictions. Trade mark invalidation suits are based on the administrative procedure and this case was reported in my post entitled “Trade mark law, case II GSK 63/05“.
While the administrative procedure was running its course, Hortex commenced civil proceedings against Hortino. Its petition included a claim for trade mark infringement under articles 19 and 20 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Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, repealed on 22 August 2001 by the Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in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, and breach of article 10 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
(2) Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons
Hortex asked the court to issue a preliminary injunction against Hortino and to order Hortino to publish a specified apology in the press. Hortex also asked the court to order the reimbursement of unfounded and undeserved profits gained by means of its trade mark infringement. The Court of the First Instance acknowledged the first two claims in its judgment but did not issue any order regarding the monetary award because, in its opinion, Hortex had not proved sufficiently that any of Hortino’s profits had been obtained through the use of its similar trade mark. Both parties appealed.
The appellate court varied the judgment in so far as it affected monetary damages and ordered Hortino to pay 304,000 zloty. The court based its calculations on a test of a fictional licence fee. Hortino then filed a cassation complaint before the Supreme Court, insisting that the judgment was decided in contravention of the CUC and the TMA, some procedural regulations, and even international treaties. The Supreme Court in its judgment of 10 August 2006, case file V CSK 237/06, dismissed the petition and upheld the contested judgment. Judge Tadeusz Zyznowski pointed that all courts, including the Supreme Administrative Court, had reached their decisions in a proper manner. Hortino’s actions were clearly made in bad faith and could lead many consumers to confusion about the origin of labelled and sold products.
The method of establishing the quantum of profits gained by the trade mark infringer is based on the Court of Second Instance’s findings. That court ruled that the measure should be a fictional and hypothetical licence agreement’s fee that would be owed to the trade mark holder if the disputing parties were to have signed a trade mark licence agreement. In the civil proceedings, the appellate court set the fee level at 3 per cent of all profits gained by Hortino when it was selling goods bearing the disputed trade mark.
The Republic of Poland is one of many European countries that, in the course of its legal history, adopted the civil law system. From the point of view of common law lawyers, it simply means that Polish courts do not follow their opinions and judgments. There are no legally binding precedents except for the Supreme Court’s legal rulings. Nonetheless, after the Supreme Court’s final judgment in the issue described above, based on the cassation procedure, one may be sure that all inferior courts will be eager to employ the methods stipulated in this instance.
Internet domains and trade mark law, case I ACa 1228/05
June 14th, 2007, Tomasz RychlickiThe Appellate Court in Poznań in its judgment of 26 April 2006, case file I ACa 1228/05, published in electronic database LEX no. 214296, ruled that in the case of a trade mark in the form of a particular word, the word representing a sign it is important, so long as it has the distinctive character and it is possible to distinguish the goods supplied or manufactured by a company from the products of another company. The appearance of a sign that may be represented by letters written in different fonts was less important in the described case. The conclusion that the only the graphic/figurative similarity between the two marks would give a plaintiff the right to assert claims arising out from article 296 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, would render the protection resulting from this provision purely illusory and would wreck the sense of norms arising from this article.
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
(i) in accordance with the general principles of law,
(ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.3. The claims referred to in paragraph (1) shall also be enforceable against a person who only puts on the market the goods already bearing that trademark, provided that the goods do not originate from the right holder or from a party authorised by him to use the trademark.
4. When invoking the right of protection conferred by his trademark, the licensor may enforce the claims referred to in paragraph (1) against a licensee who breaches any provision in his licensing contract with regard to its duration and territory covered by the contract, the form covered by the contract in which the trademark may be used, as well as the scope of the goods for which the trademark may be used or the quality of the goods. This shall apply accordingly to the sub-license.
5. A holder of a right of protection for a trademark may enforce the claims referred to in paragraph (1) against a licensee or a sub-licensee in case where the provisions of the sub-license contract, referred to in paragraph (4) have been breached, as well as in the case, where the contract has been concluded in breach of Article 163(2).
The Court also held that the registration of a web site under a given domain name address, and conducting a business activity through, and also its advertising, complete the condition of “trade mark use”.
See also “Polish case law on domain names“.
Consumer protection, case III SZP 3/06
August 8th, 2006, Tomasz RychlickiThe Supreme Court in its judgment of 13 July 2006 case file III SZP 3/06 ruled that the application of standardized agreements which provisions are identical with the provisions deemed as prohibited contractual provisions (abusive clauses) by the District Court in Warsaw, the Court of Competition and Consumer Protection, and were entered into the register kept by the President of the Office of Competition and Consumer Protection, may be considered in relation to another undertaking as the practice detrimental to/infinging on the collective interests of consumers.
See also “Polish regulations on prohibited contractual provisions” and “Polish case law on abusive clauses in B2C IT and IP contracts“.
Unfair competition, case II CKN 70/96
January 20th, 2006, Tomasz RychlickiThe Supreme Court Civil Chamber in a judgment of 7 March 1997, case file II CKN 70/96, gave the interpretation on the priority of use of the designation of the undertaking as defined in article 5 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.
Article 5.
The designation of the undertaking in a way which may mislead customers in relation to its identity, due to the use of trade mark, name, emblem, letter abbreviation or another characteristic symbol already lawfully used to indicate another undertaking, shall be the act of unfair competition.
The Court ruled that the priority of use – in accordance with the law – the name of the undertaking, is the only criterion for resolving conflicts between the designations, on the basis of the provisions of article 5 of the CUC.
Trade mark law, case V CK 280/04
November 23rd, 2005, Tomasz RychlickiThe Supreme Court in its judgment of 17 June 2004 case file V CK 280/04 held that the owner of rights listed in Article 8(2) of the TMA can claim, with reference to the normative basis of these rights, for their protection, to prohibit the activities covered by the exclusive right, arising from the decision to register a trade mark, which violate these laws, without first having to invalidate the registration of the trade mark.
Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;
The Court ruled that legal protection resulting from registration of the trade mark is only formal and does not constitute an obstacle to a prohibition of infringement of rights of a particular entity. The court is not bound by a final decision of the Polish Patent Office on the registration of the trade mark when it comes to assessing the facts underlying the judgment that was rendered in civil proceedings.
Press law, case I CKN 540/00
August 29th, 2005, Tomasz RychlickiThe Supreme Court in its order of 5 March 2002 case file I CKN 540/00 held that provisions of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), published in Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments, should not be applied in proceedings for registration of newspapers and magazines. The institution of registration of press titles was introduced to prevent the existence of identical or concurrent titles on the press market only.
Database protection, case II CK 174/02
August 17th, 2005, Tomasz RychlickiThe Supreme Court in its judgment of 7 January 2004 case file II CK 174/02 held that the acquisition of an electronic database and selling it to customers under a different name is deemed as an act of unfair competition, as defined in Articles 3 and 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.
Article 3
1. The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
2. The acts of unfair competition shall be in particular: misleading designation of the company, false or deceitful indication of the geographical origin of products or services, misleading indication of products or services, infringement of the business secrecy, inducing to dissolve or to not execute the agreement, imitating products, slandering or dishonest praise, impeding access to the market and unfair or prohibited advertising and organising a system of pyramid selling.Article 13
1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.
2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation to adequately mark the product.
In 2001, the Republic of Poland has introduced to its legal system the Act of 27 July 2001 on Protection of Databases – APD – (in Polish: Ustawa o ochronie baz danych), published in Journal of Laws (Dziennik Ustaw) No. 128, item 1402 with subsequent amendments.
Unfair competition, case III CZP 12/95
August 17th, 2005, Tomasz RychlickiThe Supreme Court in its resolution of 25 February 1995 case file III CZP 12/95 held that the action of a broadcaster of TV or radio shows can be considered as the act of unfair competition if it meets the conditions laid down in article 3 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.
Article 3
1. The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
The Court held that imitation of a radio programme may constitute the act of unfair competition under the above mentioned general clause. Such activities, contrary to the law or good practices can be deemed as the unnamed delict/tort if other conditions are also met, i.e. there is a threat or infringement of the interest of another entrepreneur or customer.
Trade mark law, case III CK 410/03
February 5th, 2005, Tomasz RychlickiThe Supreme Court in its judgment of 27 October 2004 case file III CK 410/03 held that the use of someone else’s trademark for informational purposes and in advertising is allowed, if it does not mislead as to the existence of economic links between the trade mark owner and the person that uses such trade mark.
Unfair competition, case II CKN 578/99
January 10th, 2005, Tomasz RychlickiThe Supreme Court in its judgment of 11 October 2001 case file II CKN 578/99 interpreted the provisions of Article 10(1) of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), published in Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
The court ruled that the act of unfair competition in the form of unauthorized imitation of packaging that belongs to another company, and the act of selling products in such packagings, may justify the tortious (delict) liability for damage in the form of lucrum cessans (profits given up), if between the unauthorized imitation and the damage exists a normal causal link/nexus.