Polish IP & IT law » Art. 103 IPL

Archive for: Art. 103 IPL

Industrial design law, case VI SA/Wa 504/10

August 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 504/10 held that the scope of creative freedom is determined by the functional features of the object and the previous designs. In case of designs that must meet particular functional requirements, the scope of creative freedom is smaller than in the case of designs, which have more of the aesthetic features. Where the scope of creative freedom is broader, the differences between designs should be more noticeable than in the narrow scope of that freedom. The informed user must have information on the object, that is sufficient to assess the scope for creative freedom and be able to see even relatively small differences, that are important in the case of designs with little creative freedom.

Wzór Przemysłowy Rp-11748

This judgment concerned the industrial design “Podstawka reklamowa Star base” (in English: advertising stand Star base) Rp-11748.

Industrial design, case VI SA/Wa 506/10

May 27th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 27 may 2010 case file VI SA/Wa 506/10 held that due to the fact that the Polish Patent Office did not timely corrected the deficiency of the reasons of its decision and it did not decided and ruled on this issue in its response, although irregularities were indicated in the complaint, the Court had to decide at this stage of proceedings that the contested decision infringes the rules of administrative proceedings in the aspect that could significantly affect the outcome of the case.

Wzór Przemysłowy Rp-11779

This judgment concerned the industrial design “Zestaw podstawek reklamowych Star Fala” (in English: Set of advertising coasters Star Fala) Rp-11779.

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

Industrial design, case VI SA/Wa 1038/09

May 21st, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in a judgment of 23 February 2010, case file VI SA/Wa 1038/09, held that the Polish Patent Office wrongly ruled that the admission of evidence based on the testimony of a witness will not bring anything new to the case, by stating that these witnesses were not credible evidence that the subject of disclosure in the shop (boards) was questioned industrial design.

Wzór Przemysłowy Rp-11243

This judgment concerned the industrial design “Tablica informacyjna” (in English: Information table) Rp-11243.

The VAC held that such ruling has the nature of prejudice and is contrary to the provisions of administrative procedure because the PPO made the assessment of usefulness and credibility of evidence, of which it has not get acquainted with.

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

Industrial design, case VI SA/Wa 34/09

April 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 26 February 2010, case file VI SA/Wa 34/09, ruled that there is no doubt that the industrial design must be assessed in such a form in which it will be possible to visually acquaint with it and with all the features of a product.

This judgment concerned the industrial design “Teczka na dokumenty” (in English: Folder for documents) Rp-4223.

Wzór Przemysłowy Rp-4223

The VAC ruled that the use of folders for documents is also based on their opening and closing in order to place the relevant documents inside, therefore, the discussed “inside” features must also be assessed.

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 industrial designs” and “Polish case law on industrial designs“.

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.

The cassation complaint also presented the argument of “exceeding the principle of formality”. The Court found it unjustified based on provisions of articles 255¹ and 256 of the IPL.

Article 255¹
1. Litigation proceedings in the cases referred to in Article 255(1)(i)-(viii) shall be initiated at a written request.

2. A request for initiation of a proceeding shall be subject to payment of a fee.

3. A request shall contain:
(i) identification of the parties and their addresses
(ii) brief presentation of the case
(iii) clear definition of the decision sought
(iv) reference to the legal ground
(v) indication of evidence
(vi) signature of the requesting party and a date

4. The request shall be accompanied by:
(i) a power of attorney, where the request is submitted by the representative
(ii) copies of the request in a number corresponding to the number of the parties to the litigation proceeding
(iii) a receipt for the payment of the fee referred to in paragraph (2).

5. The Patent Office shall check whether the request for initiation of a litigation proceeding satisfies the formal requirements referred to in paragraphs (3) and (4).

6. Where the request fails to satisfy the formal requirements, the Patent Office shall invite the requesting party to remove the defects, under pain of discontinuance of the proceeding, within 30 days.

(…)

Article 256
1. The provisions of the Code of Administrative Procedure shall apply accordingly to litigation procedure before the Patent Office in cases not regulated by this Law..

2. To costs of proceedings the provisions applied in civil law proceedings shall apply accordingly.

3. The provisions of the Code of Administrative Procedure governing re-examination, at a party’s request, of cases, in which decisions not liable to appeal were taken, shall not apply to decisions on merits taken after hearing.

3¹. The cases referred to in Article 2553(2) may be requested to be re-adjudicated. A time limit for submitting a request shall be, in case of a decision made – two months and in case of an order issued – one month from the date of the decision or the order being served upon the party.

The proceedings before the Polish Patent Office are reduced of principles set out in the 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, including the principle of formality, or the principle to watch over the interests of the parties by the public administration bodies. Because of the adversarial proceedings, the party has to prove the circumstances from which it derives the legal consequences that are more favorable.

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

Wzór Przemysłowy Rp-9198

See also my posts entitled “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case II GSK 238/09

January 27th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 16 December 2009, case file II GSK 238/09, ruled that the essential features of the industrial design, are these characteristics that determine the overall impression that the design produces on the informed user. These are features of the shape/appearance which serve as a basis for identifying, distinguishing the design from other, already known designs. The forms of the industrial design differ (otherwise there would be no forms). But these differences include irrelevant features, i.e. those which do not affect the overall impression. The essential features, that decide on the overall impression are common for all forms of an industrial design. Forms of industrial design that are put in one application which are also having the essential features common, differ from each other only by features that are irrelevant. These forms are identical as defined in article 103(1) – second sentence – of the IPL.

Designs shall also be deemed to be identical with those made available to the public if their features differ only in immaterial details.

This means that if some of the forms of the industrial design had already been made public, and lost its novelty, other forms, differing from them only by insignificant details, do not have the novelty characteristic, because they are considered by the law as identical, which means, they are devoid of the individual characteristic.

This judgment was issued on the basis of the cassation complaint brought from the judgment of the Voivodeship Administrative Court (VAC) in Warsaw, of 11 December 2008, case file VI SA/Wa 1827/08. The judgment of the VAC was reported in my post entitled “Industrial design case VI SA/Wa 1827/08“.

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9201.

Wzór Przemysłowy Rp-9201

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

Industrial design, case VI SA/Wa 703/09

January 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 19 November 2009, case file VI SA/Wa 703/09 ruled that the entitled person to file a request for invalidation of a right in registration of an industrial design may be an owner of the industrial design registered with an earlier priority, if the existence of this deisgn is an obstacle to the novelty or individual character of the later design. The entitled person to file a request for invalidation may also be an entrepreneur that produces a product with a solution that is covered by the wrongly granted right in registration and to whom this wrongly granted right interferes with the freedom of business establishment and operation.

This case concerned the industrial design “Stelaż fotela” (in English: seat frame), Rp-8808.

Wzór Przemysłowy 8808

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

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

Industrial design case VI SA/Wa 189/09

January 21st, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 9 October 2009, case file VI SA/Wa 189/09 ruled that according to article 103 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.

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.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

it is not about the mere fact of the disclosure of the design, but whether it was possible for an unlimited number of persons from the circles specialised in the sector, to which the design belongs, to actually get acquainted with the given design.

This case concerned the industrial design “Tkanina meblowa” (in English: furniture fabric), Rp-12269.

Wzór Przemysłowy 12269

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

Industrial design law, case VI SA/Wa 518/09

January 7th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 21 July 2009 case file VI SA/Wa 518/09 ruled that where the scope of creative freedom is greater, the assessment of the originality of the design may justify the thesis that the differences should have easily discernible character. By contrast, in the case of a design with a small range of creative freedom, even small differences will not remain unnoticed by the informed user. The design must be different from designs already known and cannot create the impression that a product of such a form of a design has already been seen. It is necessary to examine the compared designs, including the overall impression which is triggered by the design in terms of the so-called “informed user”. The term “informed user” indicates the person who uses the product/design on a permanent basis, so it is not, nor is the average consumer, or the average expert.

Wzór przemysłowy 11751

This judgment interpreted inter alia provisions of articles 103 and 104 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.

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.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(i) has been disclosed to a third party under explicit or implicit conditions of confidentiality,
(ii) has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse in relation to the designer or his successor in title.

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.

Industrial design, case VI SA/Wa 189/09

October 10th, 2009, Tomasz Rychlicki

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.

2. The designs shall not be deemed to have been made available to the public within the meaning of paragraph (1), if it could not have become known to the circles specialised in the sector, to which the design belongs.

This case concerned the industrial design “Tkanina meblowa” (in English: furniture fabric), Rp-12269.

Wzór Przemysłowy 12269

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

Industrial design law, case VI SA/Wa 746/09

August 23rd, 2009, Tomasz Rychlicki

The Polish Patent Office registered the design of a bottle in the form of a contour map of Poland Rp-11003, applied for by Przedsiębiorstwo Wielobranżowe Euro-Kamil Polska sp. z o. o. from Wrocław.

Rp-11003

Jacek Andruszkiewicz from Warszawa filed a request for invalidation of this design. Mr Andruszkiewicz argued that the questioned design lacks of novelty. He pointed out to the 3D trade mark registration R-91920 owned by Jacek Andruszkiewicz Jolanta Duch s.c. DAYGLOB Biuro Exportowo-Importowe from 6 October 1995.

R-91920

The PPO invalidated the right in registration in its decision of 14 January 2009, case file Sp. 555/07. The PPO held that Jacek Andruszkiwicz had a legal interest in seeking the invalidation, as a competitor in the market of bottles. Euro-Kamil filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2009, case file VI SA/Wa 746/09 repealed the contested decision and held it unenforceable. The Court ruled that the PPO did not examine if the legal interest was real and sent this case for reconsideration.

Industrial design, case VI SA/Wa 109/09

April 19th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 April 2009, case file VI SA/Wa 109/09, ruled that is not important, who disclosed the design. The PPO correctly pointed out on the wording of article 103(3)(ii) of the IPL.

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.
(…)
3. The provision of paragraph (1) shall not prevent a right in registration to be granted, if a design:
(…)
ii) has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse in relation to the designer or his successor in title.

Only the disclosure by the creator, his legal successor, or – with the consent of the holder – by a third party, and if the disclosure was made as a result of abuse in relation to the creator or his successor in the 12 months period before the priority date, does not harm the novelty requirement, any other publicly available disclosure of a design is an obstacle for the novelty requirement.

This case concerned the industrial design “Parapet okienny” (in English: windowsill), Rp-10571.

Wzór Przemysłowy 10571

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

Industrial design, case VI SA/Wa 1827/08

December 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 December 2008, case file VI SA/Wa 1827/08, ruled that the protection of an industrial design may only apply to the appearance of an object – its external appearance, not to its internal structure. The cassation compliant bought before the Supreme Administrative Court was rejected in a decision of 16 December 2009, case file II GSK 238/09.

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9201.

Wzór Przemysłowy Rp-9201

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

Industrial design law, case VI SA/Wa 1088/08

August 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 August 2008, case file VI SA/Wa 1088/08, ruled that it is not enough to prove that the design applied for differs from opposed designs, but it must also be proved that it does not contain the characteristics of these designs – further – that it is not in fact the sum of the characteristics of these designs, it is not a combination of opposed designs.

This judgment concerned the industrial design “Wiadro” (in English: bucket), PRZ-1077.

Industrial design law, case VI SA/Wa 1215/07

January 2nd, 2008, Tomasz Rychlicki

There is a very interesting judgement of the Voivodeship Administrative Court in Warsaw of 11 October 2007, case file VI SA/Wa 1215/07. It concerns a dispute regarding an industrial design of a handle for cutlery which is registered for Gerlach S.A. The Court had to decide about the novelty of a design based on electronic evidences. The court ruled that such evidences are not sufficient. A CD print-out from a database can not be treated as a legal document with an unquestionable date since there are graphical tools which make a modification of such data an easily possibility. In this case such a proof can not be deemed a proper evidence if it is not properly certified. Also a statement issued by a private company is not enough unless it is supported by invoices or official publications of catalogues of exhibitions where such product was shown. A compact disk has to be certified by an expert as regards to a date it was burned.

This case concerned the industrial design “Rękojeść sztućców” (in English: handle for cutlery), Rp-6048.

Rp-6048