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Trade mark law, case V CSK 71/09

March 11th, 2010, Tomasz Rychlicki

Technopol Publishing Agency filed a suit against Phoenix Press and Bauer Publishing House. Technopol requested the court to prohibit both defendants from putting on the market all magazines and periodicals bearing the number “100″ or its multiples, and journals bearing the titles composed of three Arabic numerals together with the words “panorama” (in Polish: panorama) or “panoramic” (in Polish: panoramiczny), and to order the withdrawal of such publications from the market, to order the publication of an apology of specific content in the press, to order the defendants to pay the amount of 75000 PLN as compensation and the amount of 99000 PLN as unjustified benefits received by the defendants as a result of the unlawful use of Technopol’s trade marks, and to order defendants to withdraw particular trade mark applications from the Polish Patent Office.

Technopol argued that it has introduced characteristic titles of crosswords magazines, presenting the number “100″ or its multiples, with the words “panorama” or “panoramic” since 1994. Bauer Publishing House gave a licence to Phoenix Press to publish crosswords magazine entitled “Chwila na 100 panoramicznych”. Later on, Phoenix Press began to publish crosswords magazines with titles composed of the multiple of “100″ and the “panoram” word.

Technopol based its claims on articles 3, 10 and 18 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 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 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.
(…)
Article 18(1) Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,
6) adjudication of an adequate amount of money to the determined social goal connected with support for the Polish culture or related to the protection of national heritage – where the act of unfair competition has been deliberate.
2. The court, upon a motion of the entitled party, may also adjudge on products, their packing, advertising materials and another items directly connected with commitment of the act of unfair competition. In particular, the court may order their destruction or include them on account of the indemnity.

and articles 120(2) and 296(1) and (2) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.
(…)
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.

Phoenix Press and Bauer Publishing House requested the court to dismiss the suit. They argued that all trade marks in question have only informational character, and they refer to the title of the magazine “Chwila dla Ciebie”, and substantially differ from plaintiff’s trade marks, which excludes the risk of confusion.

The judgments of the District Court and the Court of Appeal did not satisfy any of the parties and as a consequence, both appealed.

The Supreme Court in a judgment of 24 November 2009, case file V CSK 71/09, ruled that the admissibility of a cassation complaint in matters of property rights is dependent on the minimum value of the subject matter of litigation, which in economic cases, cannot be less than 75000 PLN. The legal doctrine and the case law of the Supreme Court has expressed the view that the claims under article 18(1) points 1, 3 and 4, of the CUC have non-financial nature. See judgment of the Supreme Court of 9 March 2006, case file l CZ 12/06, and a judgment of the SC of 9 January 2008, case file II CSK 363/07. But this view has no legal justification which was the most widely expressed by the Supreme Court in the opinion of 8 March 2007, case file III CZ 12/07, published in OSNC 2008/2/26. The Court held that the claims set out in the CUC, though – according to the prevailing view – are not based on the absolute rights (enforceable against anybody infringing that right, an erga omnes right can be distinguished from a right based on a contract, which is only enforceable against the contracting party), they are directly contingent upon economic interests of persons who have the absolute right, and thus have the financial character. This view is justified by the general objective of the unfair competition law as defined in article 1 of the CUC, which is to prevent and combat unfair competition, and by provisions of article 20 of the CUC which set the same term of terminations of actions as for claims ensuing from property rights. For this reason, the Supreme Court dismissed the cassation complaint brought by Phoenix Press.

Technopol based its cassation complaint inter alia on the reputation of its trade marks. The Supreme Court ruled that according to the legal doctrine and the case law established by the SC, the distinction made between well-known and reputed trade marks is based on a different criterion. The reputation of a trade mark means its attractiveness, the value of advertising it creates and the ability to stimulate sales of goods marked with it. It is therefore a criterion referring rather to the special quality of a sign than to the degree of its knowledge. Such opinion was issued by the Supreme Court in a judgment of 7 March 2007, case file III CSK 428/06. The Supreme Court in a judgment of 12 October 2005, case file III CK 160/05, published in OSNC 2006/7-8/132, ruled that, the reputed or renowned trade mark serves as a carrier of information and ideas/opinions about high quality and high prestige. The last word is synonymous with “reputation” in Polish. However, the concept of a reputed/renown trade mark does not indicate an association with the exclusive services or goods of significant value. A renowned trade mark is a carrier of information on a specific, expected and tested quality of a sign. It includes a settled belief about the expected values of the goods, in the minds of buyers. The Supreme Court pointed out that the reputed trade mark in relation to other signs is characterized by ever stronger distinctive characteristic. Numerical trade marks owned by Technopol and registered for crosswords periodicals do not have the distinctive character. Trade marks intended to use for such periodicals have informational nature and are descriptive. They demonstrate direct and specific relationship with goods at stake which could allow its buyers to see them as a description of quantity of goods or one of their essential characteristics. In any case, a numerical trade mark placed on the cover of the magazine informs about the amount of crosswords that are appearing in the magazine and it is seen by buyers as a description of the characteristics of the goods, in particular the number of crosswords appearing in the magazine. Similarly, the word signs “panorama” or “panoramas” are used to describe the features of crosswords printed in a journal. The weak distinctive characteristic of Technopol’s trade marks that were registered for crosswords periodicals proves that these are not reputed trade marks, and there is no risk of confusion as referred to in article 296(2)(ii) of the IPL.

There was no evidence for the Court, that Technopol’s trade marks acquired the secondary meaning. On the contrary, such arguments were denied by the Court because of the use of these trade marks in such a way that they became a carrier of information about the origin of the goods. The Court confirmed that, as a general rule, it is possible for a trade mark that also serves as a press title, to acquire secondary meaning and distinctive character while performing informational function, but only taking into account all the circumstances the of use of such sign for designation of the goods.

The Court also ruled that the risk of consumers confusion as to the origin of goods, which creates the infringement of the right of protection for a trade mark, has many factors that require a comprehensive examination. The degree of knowledge of the registered trade mark, the degree of similarity between trade marks and the goods, and the circumstances in which the marked goods are sold, but also its distinctiveness should be taken into account while determining the risk of consumers confusion. According to the Court, the risk of consumers confusion was excluded because of the weak distinctive characteristic of the descriptive numerical signs, and the allegations of violation of article 296(2)(ii) of the IPL were unfounded, irrespective of any similarity between Phoenix Press and Technopol’s trade marks. Article 296(2)(ii) of the IPL applies to the infringement performed in the form of imitation, which may involve the use of an identical or similar trade mark to a trade mark registered, for the same or similar goods to these listed in the registry. The premise of violation is not only the unlawful use of a sign, but also the risk of confusion as to the origin of goods. The common knowledge of Technopol’s trade marks has not been proved and such knowledge cannot be equated with the popularity, especially as these trade mark serve for the designation of crosswords magazines that are targeted to specific audiences.

The Supreme Court also ruled that there was no violations of the provisions of the CUC related to the likelihood of consumers confusion as to the origin of the goods. The condition for the application of article. 10(1) of the CUC is decided on the factual basis. As it was noted by the Supreme Court in a judgment of 23 April 2008, case file III CSK 377/07, published in OSNC 2009/6/88, the difficulties in establishing such datum stem from the situation that it’s a fact of a legal nature and which may arise, as well as the fact that the likelihood of confusion must relate to a specific model of the consumer. According to article 10(1) of the CUC, the indication of the goods or services must have such a distinctive character so it’s illegal use would cause the likelihood of consumers confusion as to the origin of the goods. Only the use of words and numbers in a specific composition could cause such a risk. A similar opinion was issued by the Supreme Court in a judgment of 21 February 2008, recognizing that the numerical designation placed on the cover of the crosswords magazine can make the average consumer confused as to the origin of the goods, only if it is put in the place usually reserved for the title of a periodical. There was also the need for an appropriate balance between the rights and interests of different market participants, so giving due protection would not allowed to abuse their position.

The Supreme Court also noted that Technopol wrongly raised the plea of faulty decision of a case where it argued that the lower court did not take into account its claim against the defendants to withdraw given trade mark applications from the Polish Patent Office and the claim to abandon of their trademarks rights. The Court ruled that these claims relate to the rights on the existence of which decides an independent body – the Polish Patent Office. It is the PPO’s jurisdiction to decide on the invalidation of the right of protection for a trade mark at the request of any person who has a legitimate interest if it’s shown that the statutory conditions for obtaining this right have not been met.

For all these reasons, the Supreme Court dismissed the cassation complaint brought by Technopol.

Trade mark law, case VI SA/Wa 233/09

March 8th, 2010, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for 3MA R-171362 trade mark owned by the Polish company MARMA Polskie Folie Sp. z o.o. The proceeding were initiated by the 3M Company, the owner of 3M R-84046 and word-figurative 3M R-84047 trade marks. The American company has claimed the reputation of its signs and argued that the registration of 3MA R-171362 trade mark would bring its owner unfair advantage and it would be detrimental to the distinctive character and the reputation of 3M’s trade marks. The complaint of MARMA Polskie Folie Sp. z o.o. company was rejected by the Voivodeship Administrative Court in Warsaw in a judgment of 9 October 2009, case file VI SA/Wa 233/09.

The VAC ruled that in the absence of a legal definition of the reputation it was the legal doctrine and the courts who have defined the essential criteria for determining the reputation of the trade mark. Accordingly, the reputation of the trade mark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trade mark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of vital goods. The reputation of a trade mark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trade mark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trade mark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trade mark.

See also my post entitled “Poland: proving the fame of a trade mark“.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

The second lap in race for Dakar

March 5th, 2010, Tomasz Rychlicki

This is a sequel to a story I described in a post entitled “Race for Dakar“. In July 2009, the Polish Patent Office invalidated the right of protection for DAKAR R-174205 trade mark (registered for goods in classes 3, 27, 37), after considering the case on the basis of rich evidence supplied by both parties.

The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861 (registered for goods in classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41), which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the “merchandising function” and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation – the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in a judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also my post entitled “Poland: proving the fame of a trade mark“.

When referring to the transfrontier nature of the reputation of a trade mark as adopted in the judgment of the VAC in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) or in the judgment of the VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS), the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally – from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.

The Polish company DAKAR from Krasne filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO’s attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company.

The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Poland: Glazide is distinctive

March 3rd, 2010, Tomasz Rychlicki

This is a continuation of the story described in a post entitled “Poland: Glazide differs from gliclazidium“. Les Laboratoires Servier from France filed a cassation complaint. The Supreme Administrative Court in a judgment of 16 December 2009, case file II GSK 214/09, ruled that the sign GLAZIDE is representing a creative transformation of the name of an active ingredient (AI) called gliclazidium (gliclazide) that was proposed by the WHO. GLAZIDE has the distinctive character because it is a fanciful sign and it does not constitute either a name of a generic product, or the International Nonproprietary Name of the active substance of the Latin Gliclazidum (English: Gliklazide, Polish: Gliklazyd), nor does it directly inform about the characteristics (properties) of goods. Therefore, the SAC rejected the complaint.

Industrial design, case II GSK 323/09

February 23rd, 2010, Tomasz Rychlicki

A company filed a notice of opposition to a final decision of the Polish Patent Office (PPO) on the grant of a right in registration for the industrial design “Zadaszenie drzwi” (in English: door canopy) Rp-9198. The opposition has been filed under the provisions of article 102(1), article 103(1), article 104(1) and (2) and article 106(1) 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.

Article 102
1. Any new and having individual character appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design.
(…)
Article 103
1. An industrial design shall be considered new if, before the date according to which priority to obtain a right in registration is determined and subject to paragraph (2), no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.
(…)
Article 104
1. An industrial design shall be considered to have individual character, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined.

2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.
(…)
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 opposing party claimed the lack of novelty becuse the disputed design was disclosed inter alia during the exchange of correspondence with the owner and the lack of the individual character of a product. The PPO rejected the opposition and ruled that the industrial design is new. While referring to the cooperation between the opposing company and the owner, the PPO noted that the disclosure of a design was only approved between both parties. The PPO concluded that the industrial design in question was not disclosed publicly. In the proceedings before the PPO and the courts no other evidence with regard to public disclosure of the design was submitted.

The Voivodeship Administrative Court in a judgment of 19 November 2008, case file VI SA/Wa 1767/08 rejected the complaint against the decision of the PPO. The Supreme Administrative Court in a judgment of 20 January 2010, case file II GSK 323/09, rejected the cassation complaint. The SAC held that any correspondence, not only commercial, bears the characteristics of confidentiality due to the fact that by its nature it is addressed to the designated entity, and refers the specific content associated with a certain confidence on the part of the sender. Its publication requires the consent of both parties. Therefore, it coould not be argued that the disclosure of a new design could take place in the correspondence between the two businesses working together.

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9198.

Wzór Przemysłowy Rp-9198

See also my post entitled “Polish case law on industrial designs“.

Poland: differences in pharmaceutical trade marks

February 17th, 2010, Tomasz Rychlicki

On 4 June 2002, the Polish entrepreneur Wojciech Soszyński from Sopot applied to the Polish Patent Office for the right of protection for OCERIN Z-251142 trade mark in class 5 for goods such as oral pharmaceutical preparations in a form of granulate, drops, capsules, emulsion, herbal blends, pastes, pills, powder, syrup, suspensions, gels, pharmaceutical preparations for mouthwashingin a form of aerosol, chewing gum, capsules, concentrate, drops, pills, pastes, liquids, powder, tablets, suspensions, gels, pharmaceutical preparations for dental purposes in a form of emulsion, paste, liquids, powder, tablets, suspensions, gels, pharmaceutical preparations for inhalation purposes in a form of aerosol, emulsion, gas, ointments, liquid, powder, tablet, suspension, gels, trachea and lung pharmaceutical preparations in a form of powder, solution, suspension, pharmaceutical preparations for skin care applied on skin and percutaneous in a form of medicated bath supplements, emulsion, cataplasm, collodion, concentrate, cream, ointment, dressing, paste, foam, plaster, liquids, powder, shampoo, suspension, gels, pharmaceutical preparations for eyes in a form of drops, creams, ointments, liquids, drops solvent, vaginal pharmaceutical preparations in a form of pills, tampons, vaginal douching suspensions, gels, powder, solvents for gel preparation, rectal pharmaceutical preparations in a form of suppositories, emulsion, capsules, concentrates, creams, ointments, foams, liquids, tablets, tampons, suspensions, gels, vesica and urethra pharmaceutical preparations in a form of washing liquids, powder for liquid preparation, gels, pharmaceutical preparations for ears in a form of aerosol-emulsion, solutions, suspensions, creams, drops, ointments, liquids, powders, rods, tampons, gels, pharmaceutical preparations for nose in a form of aerosol-suspension, liquids, drops, ointments, powders, rods, vaginal pharmaceutical preparations in a form of emulsion for irrigation, intravaginal tablets, intravaginal capsules, intravaginal creams, intravaginal ointments, intravaginal foams.

The Polish Patent Office (PPO) in decision of 21 July 2008 refused to grant a right of protection. The PPO noted that BEIERSDORF AG from Hamburg reported observations as to the existence of grounds that may cause a right of protection to be denied. BEIERSDORF AG argued that OCERIN is similar to its EUCERIN IR 710661 trade mark applied for with the priority of 3 March 1999 for goods in class 5 such as cosmetics for medical purposes prepared in the form of creams, gels and lotions, all for the protection of dry skin, dermatologic preparations for prevention of allergy and skin ills, medical preparations for care, washing and beauty of hair, medical preparations for shower and bath purposes, medical sun tanning preparations, medical preparations against aging of skin, prevention skin preparations against UV radiation, and another word-figurative trade mark EUCERIN IR 765927.

The PPO found that the greater part of the opposed signs is identical and differs only in the beginning. Taking into account the specificity of goods in Class 5, the consumer may think that this is a variation of a single product or products with a similar purpose. It cannot be excluded that the consumer will shift the similarity (in the core and the ending of a sign) to the origin of goods, nor that differences in the beginning of a sign, will be shifted to the differences between the products, rather than differences in terms of their origin. Thus, in both cases, the signs causes the consumer the confusion as to the origin of goods.

The PPO also noted that both signs have no particular meaning in the Polish language. Consumers may try, or not, to give them some meaning. The PPO pointed out that it is very often in the market of pharmaceuticals that endings of signs or whole signs refer to the active substances. However, the average recipient has no knowledge of chemistry and pharmacy. Therefore, one may not know what components produce the substance or whether they are derivatives, and how it translates on the naming. The similarity of words is all, what is available to consumers and on such basis, they have to decide on the origin of goods. A large part of products listed in both lists of goods are those that are available without any prescription, and thus the support of pharmacist during its purchase cannot always be assumed. These products are also offered in hypermarkets and drugstores, where you cannot always count on the help of a sales assistant. But even if the pharmacist may give an advice on the composition of a product, it still does not determine the lack of the association between entrepreneurs. The assumption on the association between entrepreneurs should be concluded from minor differences in signs or other indications on the packaging and labeling, and such a situation, while comparing the signs, cannot be presumed, since the mark must indicate the origin of the goods itself.

The complaint to the Voivodeship Administrative Court (VAC) in Warsaw was brought by Oceanic S.A., legal successor of Wojciech Soszyński’s trade mark application. The VAC in a judgment of 7 October 2009, case file VI SA/Wa 1176/09, ruled that the risk of misleading the public as to the origin of goods decides whether the two signs are similar. The questions does not concern a personified trader/entrepreneur but it is all about the sign which has always to mark and indicate that the goods originate exclusively from the same trader. The unacceptable misleading of public as to the origin of goods is created by the similarity of goods and the similarity of signs.

Therefore, any doubts should be decided in favor of the proprietor of the trade mark with an earlier priority. This rule is a consequence of the belief that the entrepreneur who, for the same type of goods, chooses a sign that is similar to the trade mark with earlier priority, acts at its own risk and all uncertainty should be decided against him. A comparison of the lists of goods for EUCERIN and OCERIN trade marks indicates that these goods are similar. In the midst of these products are both cosmetics and pharmaceutical preparations of cosmetic and medicinal characteristics.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

See also my posts entitled “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.

Poland: football fans play with lawyers

February 14th, 2010, Tomasz Rychlicki

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

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

See also my post entitled “Polish case law on domain names“.

Industrial design case, VIII SA/Wa 332/09

February 11th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in a judgment of 15 December 2009, case file VIII SA/Wa 332/09, ruled that he “informed user” is a person who continues to use a product and therefore has some knowledge about its design. It is not a professional. This may be a very attentive consumer who knows what is he or she looking for and who draws attention to all visible elements of the product. The infromed user who uses cartridges for a roller blind, is certainly not an average user or an average purchaser of such product. While assessing the individual character of a cartridge for a roller blind, the scope of creative freedom should be assesed, taking into account the nature of the product and its utilitarian functions, and then, by establishing the characteristics of an “informed user”, the evaluation of a products and the differences should be performed through such prizm, bearing in mind that the “informed user” is one who knows that there are different types of cartridges and who examine them carefully. This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.

This judgment concerned the industrial design “Kaseta do rolet” (in English: cartridge for a roller blind), Rp-8019.

Wzór Przemysłowy Rp-8019

See also my post entitled “Polish case law on industrial designs“.

Industrial design, case II GSK 772/09

February 4th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw received two different complaints against the same decision of the Polish Patent Office (PPO) on the invalidation of the right in registration. The Court decided on both complaints and issued the resolution of 16 April 2009, case file VI SA/Wa 443/09, the parties in this case were the PPO and a Polish joint-stock company from Bydgoszcz (legal entity), and the resolution of 23 June 2009, case file VI SA/Wa 715/09, the parties in this case were Jan Romanik (natural person) and the PPO. The VAC rejected the complaint in the second case and hold that there exist the identity between case VI SA/Wa 443/09 and VI SA/Wa 715/09.

Jan Romanik brough a cassation complaint to the Supreme Administrative Court. The SAC in a decision of 9 December 2009, case file II GSK 772/09, ruled that the violation of law made by the VAC was based on a wrong assumption that the resolution case file VI SA/Wa 443/09 was related (the so-called “case sameness”) to VI SA/Wa 715/09, namely, because the case fell within the action between the same parties, which was the subject of the same decision of the Polish Patent Office.

Even if the natural person was the sole shareholder in the joint-stock company, both entities cannot be identified as one, because these are participants of legal transactions that are independent from each other and each of them acquire the rights and duties on its own behalf.

This judgment concerned the industrial design “Łopata” (in English: shovel) Rp-9834.
Wzór Przemysłowy Rp-9834

See also my post entitled “Polish case law on industrial designs“.

Pharmaceutical trade marks, case VI SA/Wa 844/09 – GESTROL is not always similar to GESTROLTEX

February 2nd, 2010, Tomasz Rychlicki

On 4 February 2004, the Polish company Przedsiębiorstwo Farmaceutyczne LEK-AM Sp. z o.o. from Zakroczym filed to the Polish Patent Office (PPO) a trademark application for word sign GESTROL Z-275787 for the goods in class 5, cancer drugs. In a decision of 11 April 2008 the PPO refused to grant the right of protection. The PPO found that GESTROL is similar to the earlier registered trade mark (with priority date of 6 February 2003) – GESTROLTEX R-192945 registered for BIOTON S.A. from Warsaw, for goods in class 5, pharmaceutical preparations. Article 132(2)(ii) 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, served as the basis for the decision to refuse to grant a right of protection.

2. A right of protection for a trademark shall not be granted, if the trademark:
(…)
(ii) is identical or similar to a trademark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark,

LEK-AM filed a request for re-examination of the matter. The company argued that the sign applied for is intended to mark the anticancer drug. The active substance in this preparation is a chemical compound of the generic name (INN) megestrol. Under the decision of the Polish Minister of Health, GESTROL as a medicinal product received authorization for marketing. The Minister of Health has not found confusing similarity between GESTROL and GESTROLTEX. LEK-AM pointed out that both trade marks will be identified in the course of the highly specialized medical personnel. The PPO rejected the request and LEK-AM filed a complaint before the Voivodeship Administrative Court (VAC) in Warsaw.

The Court in a judgment of 12 October 2009, case file VI SA/Wa 844/09, ruled that the recipient, to whom the association between the marks GESTROL and GESTROLTEX may arise, is not only a person who is reasonably well informed and reasonably observant and circumspect, but it is also a person with high qualifications. Anticancer drugs are not bought and ordained without the intermediary of a doctor. For this reason, evaluation of other state administrative body, namely the Office for Registration of Medicinal Products, Medical Devices and Biocides and it is the ORMP who sets procedures and requirements for registration of signs for medicinal products, must be considered not only as a medical evaluation of the effects of the medication but also as the situation where the ORMP does not allow for the existence of two medicinal products with the same or similar name, which would prevent the identification of the product and the source of its origin at the medicinal products market. Of course, the court agreed with the PPO’s argument that the registration of the name of the medicinal product in the Office for Registration of Medicinal Products, Medical Devices and Biocidal Products at the Ministry of Health does not create an individual right to a specific drug name. Such a right exists from the time the right of protection for trademark is granted the IPL. It was obvious that the trade mark examination/registration proceedings before the PPO are independent of the proceedings before the ORMP, but it must be borne in mind that the earlier findings of one of the official bodies of Polish state cannot be neglected by another official body.

The VAC came to the conclusion that the contested decision of the PPO did not comply with the requirements of the Administrative Proceedings Code – APC – (in Polish: Kodeks postępowania administracyjnego) of 14 June 1960, Journal of Laws (Dziennik Ustaw) No 30, item 168, consolidated text of 9 October 2000, Journal of Laws (Dziennik Ustaw) No 98, item 1071 with subsequent amendments. According to article 107 §3 of the APC, the reasons for the administrative decision should include in particular: facts that the PPO considered proven, the evidence on which it relied and the reasons why the credibility of other evidence were denied the probative value, and the legal justification for the decision should be explain the legal basis for the decision, quoting the law. The VAC held the Polish Patent Office has not give sufficient reasons for, why it has refused to grant protection for a GESTROL trade mark.

The VAC annulled both contested decisions, and ruled them unenforceable. This judgment is not yet final. The parties may file a cassation complaint to the Supreme Administrative Court.

See also my posts entitled “Polish regulations on pharmaceutical trade marks” and “Polish case law on advertising of pharmaceuticals“.