Archive for: Art. 117 IPL

Industrial design law, case II GSK 932/09

January 10th, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 19 October 2010 case file II GSK 932/09 held that an industrial design concerns the form of a product, i.e. external characteristics that are observable, and individual appearances of a product cannot be claimed only because the material which was used to achieve the final effect (that was claimed in the application of the industrial design) is different from the one initially used, or that the production method of the design has changed. Also, these external elements which are not sufficiently visible cannot decide on a different, individual character of the industrial design.

Rp-9192

This judgment concerned the industrial design “Zadaszenie drzwi” (in English: door canopy), Rp-9192. The judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 852/10

November 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 September 2010 case file VI SA/Wa 852/10 held that an industrial design has individual character if the overall impression it produces on the informed user differs from the overall impression caused by the design that was publicly available before the date according to which the priority is claimed. The scope of creative freedom in developing the design should be taken into account in assessing individual character of the industrial design. The VAC agreed with the Polish Patent Office that the opposed designs are determined by the function to which they were intended. The condition for invalidation of a design is not an infringement of an exclusive right but the statement that the use of industrial design violates personal or property rights of third parties, and the applicant has based its opposition on such arguments. The assessment whether the condition occurs in the light of that provision is therefore within the exclusive jurisdiction of the Polish Patent Office that should decide such case in the litigation procedure.

Rp-13123

This judgment concerned the industrial design “Ubranko ochronne dla zwierząt” (in English: animal protective gown), Rp-13123. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design law, case VI SA/Wa 1764/09

September 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2009 case file VI SA/Wa 1764/09 held that the examination of all of the evidence should include all evidence taken in the proceedings, as well as taking into account all the circumstances surrounding an individual evidence and relevant to assess their strength and reliability. The PPO while considering the evidence, cannot skip any of the proof, it may, however, in accordance with the principle of the free assessment of evidences included in Article 80 of the APC, refuse the reliability of an evidence, but then it is obliged to justify all the reasons of such decision.

Article 80
The public administration body shall assess whether a given circumstance has been proven on the basis of the entirety of the evidential material.

Rp-3506

This case concerned the industrial design “Noga fotela” (in English: chair leg), Rp-3506. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

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 pad Star base) Rp-11748. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design and trade mark law, case II GSK 481/09

July 14th, 2010, Tomasz Rychlicki

This is the continuation of the history described in “Industrial design and trade mark law, case VI SA/Wa 710/08“. Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J. decided to file a cassation complaint to the Supreme Administrative Court, hoping that the Court would clarify the interpretation of Article 117(2) of the 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.

The Supreme Administrative Court in its judgment of 15 May 2010 case file II GSK 481/09 ruled that there is no issue of wrong implementation of the provisions of Article 11 of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs. The Court noted that even the preamble of Design Directive explicitly states that Member States should remain free to fix the procedural provisions concerning registration, renewal and invalidation of design rights and provisions concerning the effects of such invalidity. Therefore, there is no need to refer a question to the Court of Justice of EU for a preliminary ruling. The SAC did not agree with arguments that the issue of finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall be decided by civil court and not by the PPO. The question of similarity of the questioned design and 3D trade mark should also be decided by the PPO. The Court did not follow arguments presented by the General Court in its judgment of 12 May 2010 in case T-148/08, Beifa Group Co. Ltd v Office for Harmonisation in the Internal Market, Schwan-Stabilo Schwanhaüßer GmbH & Co. KG. However, the SAC did agree with the Polish company that facts of the case were not handled properly by the Voivodeship Administrative Court. Therefore, the SAC annulled the questioned judgments and returned the case to the VAC for reconsideration and ordered the Polish Patent Office to pay the Polish company a reimbursement of costs of the cassation compliant.

The Court noted also that if the trade mark that was used as a basis of the application for invalidation of the industrial design, is a sign that was registered with an earlier priority in Germany, which is not identical with the Community design that was questioned in the aforementioned application, is similar to this design, the law of the Member State (in this case § 14 section 2 pt 2 of Markengesetz, similar to Article 296 of the IPL) affords Unilever, the proprietor of the mentioned trade mark, the right to prohibit use of this sign in a later design only if because of the similarity of the design to the said trade mark and identical or similarity of the goods or services, which relate to the trade mark and the later design, there is a likelihood of confusion.

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

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

Industrial design, case VI SA/Wa 703/09

January 22nd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 November 2009 case file VI SA/Wa 703/09 ruled that the person entitled 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 judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Wzór Przemysłowy 8808

This case concerned the industrial design “Stelaż fotela” (in English: seat frame), Rp-8808. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design, case VI SA/Wa 1053/08

November 28th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 November 2008 case file VI SA/Wa 1053/08 ruled that according to the provisions of Article 117(2) of the IPL, the finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights shall also constitute a ground for invalidation of the right in registration. The Patent Office should make a decision in litigation procedure.

Wzór Przemysłowy Rp-8064

This judgment concerned the industrial design “Butelka” (in English: bottle), Rp-8064. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Industrial design and trade mark law, case VI SA/Wa 710/08

November 25th, 2008, Tomasz Rychlicki

On 10 April 2001, the Polish company Rosinski Andrzej Rosinski Michal Rosinska Joanna Zaklad Produkcji Opakowan Rosinski i S-ka, Sp. J (this is the actual company name – the firm, which consist of names of partnes “Rosinski Andrzej Rosinski Michal Rosinska Joanna”, the name “packages production plant” and the type of legal entity they operate “general/partnership company”) applied for the design registration for bottle with top. On 14 January 2003, the Polish Patent Office has registered the design, Rp-2543.

Rp-2543

In 2006, Unilever NV of Holland asked the PPO to annul its decision regarding Rp-2543. Unilever based its claims on the provisions of Article 117(2) 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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with subsequent amendments.

A finding that the exploitation of the industrial design infringes third parties’ personal or author’s economic rights will also constitute a ground for invalidation of the right in registration.

Unilever’s legitimate interest to request the invalidation was based the earlier 3D trade mark registration, R-134678, which was granted by the PPO in a decision of 28 January 1999. However, the problem with applying article 117(2) lays in the rules of Polish administrative procedure. The PPO is not allowed to decide if third parties rights are infringed.

R-134678

The PPO in its decision of 19 October 2007, act signature Sp. 187/06 invalidated the contested design. The Office recognized the similarity between the trade mark and the design based on arguments presented by Unilever’s patent attorney. The Polish company appealed. Its representative called into question the correctness of PPO’s decision in applying provisions of article 117(2). In his opinion the infringement issue should be decided by the civil court, not the administrative body which the Polish Patent Office is. However, the Voivodeship Administrative Court in Warsaw in its judgment of 21 November 2008 case file VI SA/Wa 710/08 did not agree with the Polish company arguments. In Court’s opinion the PPO has been given the opportunity to assess similarities between a registered trade mark and a design. PPO’s conclusions that there exist a significant similarity may entitle the Office to decide with regard to the infringement of third parties rights.

This judgment is not yet final. A cassation complaint was filed to the Supreme Administrative Court. It will clarify the interpretation of Article 117(2) of the IPL. See “Industrial design and trade mark law, case II GSK 481/09“.

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

Industrial design, case VI SA/Wa 1054/08

November 10th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 4 November 2008 case file VI SA/Wa 1054/08 ruled that the requirement for the issuance of a preliminary decision by other authority or a court, is one of the conditions for stay of the administrative proceedings pursuant to the provisions of Article 97 § 1 point 4 of the Polish 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, but while looking for the justification that there exists the preliminary issue in a given case, one has to establish a causal connection between the settlement of the case and the preliminary issue. The lack of such connection makes the stay of proceedings under Article 97 § 1 point 4 of the APC unacceptable. The issue of the infringement of the exclusive right referred to in Article 284(6) of the IPL, and civil claims relating thereto are decided by a civil court under civil procedure and the question wheather the use of industrial design that violates personal rights or property of third parties within the meaning of article 117(2) of the IPL, which come with the Polish Patent Office duties (the condition for invalidation of the rights in registration) are separate issues. Therefore, there is no reason to assume that the preliminary issue occurs in this case because the civil court is a proper one to settle the matter of the infringement of an exclusive right.

Wzór Przemysłowy 5873

This case concerned the industrial design “Butelka cylindryczna” (in English: cylindrical bottle), Rp-5873. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

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

August 12th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its 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. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.