Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: Art. 296(2)(ii) IPL

Internet domains, case IV CSK 191/13

April 10th, 2014, Tomasz Rychlicki

The Polish company PASTA i BASTA Sp. z o.o. from Warszawa, the owner of the word-figurative trade mark pasta i basta 100 sposobów na makaron cafè R-212390 sued Restaurators Podlaszewscy Spółka Jawna from Toruń. PASTA i BASTA requested the court to prohibit Restaurators Podlaszewscy the use of restaurant name Pasta & Basta and to refrain from the use of Internet domain name pastaandbasta.com and to oblige the defendant to withdraw from the Polish Patent Office an application for the word-figurative trade mark pasta&basta Z-368187 and the withdrawal of the application for a Community trade mark and the award of 60.000 PLN.

The District Court dismissed the complaint and PASTA i BASTA decided to appeal. The Appeallate Court ordered Restaurators Podlaszewscy to cease the use of the name of the restaurant and refrain from using the website and ordered the defendant to pay 10.000 PLN. Restaurators Podlaszewscy filed a cassation complaint.

Z-368187

The Supreme Court in its judgment of 11 December 2013 case file IV CSK 191/13 held that if the competitor uses Internet domain name identical or similar to a registered trade mark, there may be trade mark infringement if such domain use may cause the likelihood of confusion as to the origin of the goods or services, or result in violation of the advertising function of the trade mark.

See also “Polish case law on domain names“.

Trade mark law, case I ACa 1268/12

July 4th, 2013, Tomasz Rychlicki

Wytwórcza Spółdzielnia Pracy SPOŁEM (WSP SPOŁEM) from Kielce (the capital city of the Świętokrzyskie Voivodeship) sued ROLESKI Sp. J. for the infringement of word and figurative trade marks R-197616, R-170401, R-123588 and R-193780 and unfair competition torts/delicts. Both Polish companies produce different mayonnaise products that are sold in jars of a similar capacity. WSM Społem is a manufacturer of “Majonez KIELECKI”. In 2008, ROLESKI produced mayonnaise in a package bearing the designation “Świętokrzyski”. The label of this package was modified twice, by removing the word “Świętokrzyski” and by replacing it, during courts’ proceedings, by the word “Regionalny”. WSP SPOŁEM asked the District Court in Kraków to secure the claims and to issue preliminary injunction in order to prohibit ROLESKI, until the final decision is rendered, the sale of mayonnaise in a jar with a label containing a yellow background, a centered white box in the shape of an ellipse with a green border, and a green jar lid, and a round yellow sticker connected with jar’s side, and to seize and retain, until the final decision is issued, of all products held by the defendant in the form of mayonnaise packages with labels containing centered yellow background, a centered white or yellow field in a shape similar to an ellipse, framed or underlined by a green or red line, with a green round jar lids and a yellow label (band) connected to jar’s side, and also containing any of the elements described above.

R-123588

ROLESKI requested the Court to dismiss the suit. The Company argued that it does not counterfeit products of WSP SPOŁEM as it manufactures own products bearing reputable trade mark, which in consequence, eliminates not only identity, but also the similarity of products. ROLESKI noted that if the two parties compete under their own brands, there is no harm to the reputation and distinctive character of their trade marks. According to ROLESKI, WSM Społem mistaken reputation of the registered trade mark with the concept of the reputation of a product. As a result, it does not prove the reputation of the figurative mark R-197616, but generally a particular product “Majonez KIELECKI”. WSM by designating its product with a word “Majonez KIELECKI” indicates only its generic name and determine the place of origin, and therefore such trade mark is devoid of any distinctive character, as opposed to the trade mark used by ROLESKI, that is a distinctive sign.

R-193780

The District Court in Kraków in its judgment of 23 May 2012 case file IX GC 86/10 found that graphics of mayonnaise packages produced and marketed by ROLESKI were modeled on the graphics of mayonnaise package produced and marketed by WSP SPOŁEM. The Court noted that similarities outweighed the differences. The Court made findings of facts on the basis of documents submitted by the parties, as well as the testimony of witnesses and the opinion of an expert witness, except for the part where the expert speaks about the intentions of the designer’s of ROLESKI’s trade marks. The Court asked the expert on the likeness of packages containing the elements of trade marks and the impact of possible similarity on the likelihood of consumer confusion. ROLESKI filed an appeal complaint. The Court also found that ROLESKI used the word “Świętokrzyski”, but the office of the company was located in another voivodeship (Małopolska Voivodeship, in the Tarnów community), which was deemed as an act of unfair competition.

R-197616

The Appeallate Court in Kraków in its judgment of 15 January 2013 case file I ACa 1268/12 dismissed it and ruled that the District Court has made the appropriate findings. The Court noted that the evidence and testimony of expert witness allowed for a clear and comprehensive answer to the question of similarity of the goods, understood as a whole, including packaging, manufactured and marketed by the parties, taking into account changes made by ROLESKI in the appearance of mayonnaise packaging produced by the Company from Tarnów. The Court confirmed that by the use of the word “Świętokrzyski” together other elements similar to those attributed to WSM Społem, ROLESKI has exploited a set of associations created by WSM Społem for the product, which is mayonnaise with a specific package. The use of the additional word “Świętokrzyski” perpetuated these associations and allowed the Court to treat ROLESKI’s action as an act of unfair competition. ROLESKI appealed directly to the reputation of the product of WSM Społem by invoking the name of the capital of Świętokrzyskie region. The Court acknowledged similarity of the vast of words and figurative elements of packaging. All the elements visible on the packaging of both parties, although they include other wordings by the use of the same color and compositional arrangement lead to customer confusion as to the origin of the goods, and it also constitutes an act of unfair competition.

Trade mark law, case I ACa 1402/12

June 28th, 2013, Tomasz Rychlicki

The Polish company SOBIK, a producer of butter, sued Okręgowa Spółdzielnia Mleczarska in Radomsk (OSM) for trade mark infringement of the word-figurative trade mark NATURALNY PRODUKT POLSKI, MASŁO EXSTRA OSEŁKA GÓRSKA z ekologicznie czystych terenów R-165550 and the word-figurative trade mark Naturalny polski produkt z ekologicznie czystych terenów MASŁO EKSTRA OSEŁKA GÓRSKA Naturalny polski produkt z ekologicznie czystych terenów SOBIK DOBRE BO POLSKIE Wyróżnione nagrodą konsumenta LAUR KONSUMENTA 2005 Wyróżnione Srebrnym Laurem Konsumenta R-203677 and three other trade marks.

R-165550

SOBIK argued that OSM in Radoms used similar product packages for butter, in particular these with words “Masło Extra” (extra butter) and “Osełka” (butter pat) written in red font on white or creamy background, and with a layout of words and figurative elements that were similar to these used in the registered trade marks.

R-203677

The District Court in Łódź in its judgment of 30 August 2012 case file X GC 391/10 held that SOBIK failed to show the existence of three products on the market and the competitive behavior of the defendant in respect of infringements of trade marks R-200466, R-200467 and R-195683. However, the Court found the infringement of other two signs and ruled that consumers examine packaging of products, such as butter, from a distance. The Court noted that everyday-use products (FMCG) are displayed in stores next to each other, which may lead to likelihood of confusion, because consumers do not attach so much attention in their selection. The Court also found that OSM was involved in acts of unfair competition by imitating products of SOBIK. OSM filed an appeal complaint.

The Appeallate Court in Łódź in its judgment of 29 April 2013 case file I ACa 1402/12 dismissed it and ruled that OSM was not prohibited from the use of words such as “Masło Extra” or “Osełka”, but the company cannot use similar graphic design for these words on its products that could lead to consumers’ confusion.

Trade mark law, case I ACz 1156/12

December 31st, 2012, Tomasz Rychlicki

The Polish entrepreneur Przedszkola Pomarańczowa Ciuchcia A. Sławek sp. jawna from Warszawa, the owner of the word-figurative trade mark pomarańczowa ciuchcia przedszkola R-247390 (orange choo-choo kindergartens), sued another entrepreneur seated in Mińsk Mazowiecki who runs kindergarten as its business activity under the name “Wesoła ciuchacia” (Jolly choo-choo).

R-247390

The District Court in Siedlce did not grant a preliminary injunction. The Court ruled that the plaintiff owns trade marks that only include the word “ciuchcia”, and the ban would block the use of such word for any other business, which would hamper the proper functioning of the market and could lead to the monopolization of this word by one company.

The Appeallate Court in Lublin in its judgment case file I ACz 1156/12 dismissed the complaint filed by A. Sławek. The Court held that the company cannot extend the right of protection for the word mark “orange choo-choo” on the mere word “choo-choo” in order to prevent others to use it in their company names. The right of protection include a sufficiently distinguishable words “orange choo-choo” and the word “choo-choo” itself, according to the Court, is not distinctive. Although these rights are in force throughout the whole territory of the Republic of Poland, but the risk of misleading recipients of kindergarten services is limited because both entrepreneurs are operating in very different areas – Warsaw and Mińsk Mazowiecki. The risk of confusion between the name “orange choo-choo” and “jolly choo-choo” is also minimized by establishing the entity that is responsible for running kindergartens, the scope of education and educational services, human resources services and the method of financing.

Internet domains, case I ACa 1087/10

August 2nd, 2011, Tomasz Rychlicki

The Court of Conciliation for Internet Domains at the Polish Chamber of Information Technology and Telecommunications (the CCID) in its award of 9 March 2010 case file 74/09/PA dismissed the complaint brought by Italian company Bisazza against Polish entrepreneur Rafał Kacprzak Installation.pl from Wrocław who registered the following domain names: bisazza.pl, bisazza.com.pl and bisazza-installation.com. Bisazza claimed that the registration of .pl domains infringed on its CTM BISAZZA no. 001494590 and word-figurative CTM “BISAZZA mosaico” no. 001500248. Surprisingly, the Court did not agree with arguments provided by the Italian company and held that there was no infringement because the regulations included in the Polish Industrial Property law that did not allow for such interpretation. According to the CCID, there was no delict/tort of unfair competition as activities of both companies should be deemed as complementary. The CCID noted that Bisazza could act more carefully and it should have registered both domain names much earlier. According to the Court, by advertising products of the Italian company, Mr. Kacprzak was not acting as a cyber squatter because he did not only intend to increase his financial benefits but he was doing it in order to maximise mutual benefits. The Court also said the Mr. Kacprzak did not infringe on the company name.

CTM no. 001500248

Bisazza S.p.A. filed a complaint against this controversial decision. The Company claimed the arbitration award is contrary to the public policy rules established in the Republic of Poland, including the protection of acquired rights, social justice, stable and secure law, comprehensive examination of the case, consistency of legal decisions and integrity of the legal system.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 20 September 2010 case file XXII GWzt 17/10 annulled the questioned award. To begin with, the Court reminded that the Polish legislator sought to strengthen the arbitration proceedings by limiting the possibility of challenge of the awards issued by courts of arbitration. The competence of common courts in controlling the correctness of awards issued by arbitration courts are very limited and strictly defined. The petition for the reversal of the arbitration award belongs to the category of special appeals. It has a cassatory character (annulment of a judicial decision is allowed only in certain cases under strict conditions). In such proceedings the Court will not examine the merits of the dispute (if the facts warrant issued ruling) or verify the correctness of the findings that were made and accepted. All the grounds justifying of the petition for the reversal of the arbitration award are included in the Article 1206 §1-2 of the Civil Proceedings Code – CPC – (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, published in Journal of Laws (Dziennik Ustaw) No 43, item 296, with subsequent amendments.

§ 1 By way of an application a party may apply for the award to be set aside if:
1) there was no arbitration agreement, the agreement is not valid, ineffective or has expired under the law applicable to it;
2) the party was not given proper notice of the appointment of an arbitrator, of the arbitration proceedings or was otherwise unable to present its case before the arbitration tribunal;
3) the award deals with a dispute not contemplated by or beyond the scope of the arbitration agreement, provided that, if the decisions on matters submitted arbitration can be separated from those not so submitted or falling beyond the scope of the arbitration agreement, then only that part of the award which relates to the matters not submitted or falling beyond the submission may be set aside; the fact that a matter is beyond the scope of the arbitration agreement cannot constitute a ground for setting aside the award if a party who participated in the proceedings did not object to those claims being heard;
4) the composition of the arbitration tribunal or the fundamental rules of arbitral procedure were not in accordance with the agreement of the parties or with a provision of law;
5) the award was obtained by way of a crime or on the basis of a forged or falsified document,
6) a final judgment has already been made in the same case between the same parties.

§ 2. The arbitration award shall also be set aside if the court finds that:
1) the dispute was not capable of settlement by arbitration under the law;
2) the award is contrary to the public policy rules in the Republic of Poland (public order clause).

The Court noted that when assessing whether an arbitration award is contrary to the fundamental principles of law, the Court should take into account its content and not the correctness of the proceedings that were held before the arbitration body. The basic principles of the law underlying the assessment of the award should be understood not only as the constitutional rules but also as the general norms and rules in particular areas of law. The breach by an arbitration body of the proper substantive law justifies the reversal of the arbitration award only if the award is contrary to legal order. The arbitration body shall decide on the dispute according to the law of the legal relationship and when the parties explicitly mandated it – by the general principles of law or equity/fairness. The Court for the Community Trade Marks and Community Designs concluded that the interpretation of basic principles of trademark law both national and Community, that was provided by the CCID in its award, shows lack of understanding of the merits of law and lack of the ability to apply existing rules to the facts of this case. The arbitration court committed various irregularities: by qualifying the rights to Bisazza trade marks as national property rights, in examining the infringement based on only one character – probably a word trade mark – without considering the reputation, by dismissing the infringement claims on the basis of facts that do not have any meaning in trademark law while failing to examine identity/similarity of the marks and signs included in Internet domains and the goods and services of each party. The court reminded the arbitrator that the rules and regulations under the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, the CTMR and the case law of the Court of Justice of the UE apply directly in disputes over infringement of the Community trade mark. These rules and regulations must be applied also by national courts including arbitration bodies. Incorrect choice of legal norms and wrongful interpretation led to an unjustified deprivation of protection which is afforded to Bisazza in relation to its trademarks. Mr Kacprzak appealed.

The Appellate Court in Warsaw in its judgement of 1 April 2011 case file I ACa 1087/10 overturned the judgment of the Court for the Community Trade Marks and Community Designs. The Appellate Court found that since the CCID ruled that it has no jurisdiction to hear and decide upon some of the demands made by Bisazza, and rejected them in the suit, the decision was final and could not be controlled at all by the civil courts, including the proceedings caused by an action for annulment of an arbitration award. The findings stating that the CCID had no jurisdiction, that were based on the domain names regulations issued by the Scientific and Academic Computer Network (Naukowa i Akademicka Sieć Komputerowa), did not constitute a breach of the basic principles of the law (the public order clause), because Bisazza could take these demands to a civil court. In the opinion of the Appellate Court, the District Court failed to consider whether the erroneous application of the Polish law rather than the EU by the CCID was tantamount to violation of the basic principles of the law. It could have been so, only if it had a significant impact on the content of the decision rendered by the CCID. In the opinion of the Appellate Court, however, there was no such effect in this case. The Appellate Court ruled that the relevant regulations provided in the Polish law are the result of the implementation of the Directive 89/104/EEC and its relevant provisions required for this case to be then included in the CTMR. The Court decided that the solutions provided in the Polish law are similar to those of EU legislation, and the classification of infringement of trade mark rights is done by the same rules. The Appellate Court noted that the CCID found that Mr Kacprzak used, in the course of trade, a trademark identical to a protected mark not in relation to identical or similar goods but to goods protected by this trademark. The defendant is an installer of Bisazza mosaics but not identical or similar mosaics. The CCID examined also whether or not there is an infringement of reputed trademark, however, found no such breach. The Appellate Court also ruled that the award of the CCID did not violate the rules and principles of a stable and secure law because these rules should relate to the creation of law and not its application.

See also “Polish case law on domain names“.

Internet domains, case I ACa 1334/07

June 17th, 2010, Tomasz Rychlicki

The District Court in Warsaw in its judgment of 29 August 2007, case file XVI GC 756/06 dismissed the complaint filed by “Euro–net” sp. z o.o. against the judgment of the Court of Conciliation for Internet Domains at the Polish Chamber of Information Technology and Telecommunications of 23 March 2006 case file 22/05/PA in which the Court of Conciliation dismissed the “Euro-net” complaint against Rafał Falęcki in case of infringement of trade mark rights and unfair competition delict/tort concerning eurortv.com.pl domain name.

The Appellate Court in Warsaw in its judgment of 16 April 2008 case file I ACa 1334/07 dismissed the appeal, although it also found that some of the allegations included in the complaint proved to be accurate. The Court of Conciliation violated the adversarial rule because it has conducted an investigation of evidence ex officio, by looking on web pages and performing a search for disputed words “euro” and “rtv” in Google. The Court has not made any survey protocol or notes. This was made personally by the arbitrator without a request of both parties, however, the parties have not raised any comment to that evidence. The Court of Conciliation should issue the provision of evidence, indicating the date and place to carry out, so the parties could participate in this investigation. However, the appeal did not contain any allegations as to the veracity of the abovementioned evidence. The court may conduct investigation of evidence ex officio and on its own initiative but it should do it only in situations of an exceptional nature.

The Appellate Court did not agree with the “Euro-net” that the circumstances in which the investigation of evidence was conducted required special knowledge, and therefore should be subject to expert opinion. The Court of Conciliation made only a visual overview of the web pages of the plaintiff and the defendant, to which it was not necessary to posses special knowledge in the field of IT. The Appellate Court held that since the issue of the case was the infringement of “Euro-net” rights of protection for trade marks that was allegedly made by Rafał Falęcki in the Internet, therefore the inspection of his websites was sufficient way to determine whether and how the defendant used plaintiff’s trademarks. The expertise is not needed for such action, because a regular Internet user usually does not have such knowledge. It was a regular Internet user who could be mislead, in particular by a risk of associating the domain name with a registered trade marks, as defined in Article 296(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(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;

However, there were no doubts for the Court that provisions of article 153 of the IPL mean that one cannot infringe the protection rights for a trade mark in the Internet.

Article 153
1. The right of protection shall confer the exclusive right to use the trademark for profit or for professional purposes throughout the territory of the Republic of Poland.
2. The term of the right of protection shall be 10 years counted from the date of filing of a trademark application with the Patent Office.
3. The term of protection may, at the request of the right holder, be extended for subsequent ten-year periods in respect of all or of a part of the goods.
4. The request referred to in paragraph (3) shall be submitted before the expiration of a running protection period, however not earlier than one year before the expiration thereof. The request shall be submitted together with the payment of a due protection fee.
5. The request referred to in paragraph (3) may also be submitted, against payment of an additional fee, within six months after the expiration of a protection period. The said time limit shall be non-restorable.
6. The Patent Office shall make a decision on refusal to extend the term of protection for a trademark, where the request has been submitted after the expiration of the time limit referred to in paragraph (5) or the due fees referred to in paragraphs (4) and (5) have not been paid.

According to the Court, one cannot use signs (or its elements) or similar trade marks, in its Internet domain names, if its business deals with selling the same group of products. There was no question that the mentioned above rule belongs to the fundamental socio-economic principles of the legal order of the Republic of Poland. However, in this case, such conditions were not met, bacuse all signs constituting “Euro-net” trade marks and used by Rafał Falęcki lack distinctive character, there was no risk of confusion, and there existed the exclusion of protection of signs as set out in article 156(1)(ii) of the IPL.

1. The right of protection shall not entitle the right holder to prohibit third parties from using, in the course of trade:
(ii) indications concerning, in particular, the features and characteristics of goods, the kind, quantity, quality, intended purpose, origin, the time of production or of expiration of usability period,

There is one thing I wanted to add. I asked the Appellate Court in Warsaw to send me the judgment via e-mail. My request was based on the Polish Act on access to public information. On 14 June 2010 I received an e-mail from the Court.

W związku z wnioskiem z dnia 11 czerwca 2010 r. o udostępnienie informacji publicznej uprzejmie informuję, że opłata za udostępnienie treści wyroku Sądu Apelacyjnego w Warszawie z dnia 16 kwietnia 2008 r. w sprawie o sygn. akt I ACa 1334/07 wraz z uzasadnieniem – zgodnie z Zarządzeniem Nr 130/09 Prezesa Sądu Apelacyjnego w Warszawie z dnia 31 lipca 2009 r. – wynosi 8 zł (1 zł za stronę) – w wersji elektronicznej. Opłatę można uiścić w kasie Sądu, znakami sądowymi lub przelewem bankowym na konto Sądu Apelacyjnego w Warszawie nr 93 1010 1010 0404 1322 3100 0000 z dopiskiem ” informacja publiczna Adm. 0137-119/10″.

I was informed that according to the Decree No 130/09 of the President of the Appellate Court in Warsaw of 31 July 2009, the fee for access to the judgment – is 8 PLN (1 PLN per page) – in the electronic version. I had no time to argue so I decided to pay. However, as you may remember from my post entitled “E-access to public information, case I C 19/10“, price-lists and flat-rate charges for making the public information available, may violate the provisions of the Polish Act of 6 September 2001 on access to public information.

See also “Polish case law on domain names“.

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 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 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.

Technopol’s claims were also based on 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 subsequent 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 its 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 II 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 IV CSK 61/09

June 16th, 2009, Tomasz Rychlicki

Combination of colors can be a protected trademark in Poland. Such a conclusion stems from the Supreme Court’s (SC) judgment of June 3, 2009, case file IV CSK 61/09. Pursuant to the SC, a combination of colors can be protected as a trademark, and shall not be deemed an attempt to monopolize the colors themselves. The issue arose in connection with the British Petroleum suit against Marian S., a Polish entrepreneur, who used the characteristic green and yellow colors to attract the prospective clientele to his gas stations. The efforts of the legitimate holder of the BP trademark, to convince the infringer to substitute the yellow component of his stations’ logo with another color proved unfruitful, and the case ended up in court. British Petroleum based its claims primarily on 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 subsequent amendments, and 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.

BP owns several Polish trade mark registration for color trade marks. For instance R-115842 and R-115843.

The Court of first instance found in favor of the claimant, stating that Marian S. had indeed committed not only the acts of unfair competition as described in articles 5 and 10 of the CUC.

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.

(…)

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.

But primarily, the Court ruled that Marian S. had infringed article 296(2)(ii) of the IPL that is, he had unlawfully used – in the course of trade – a trademark similar to a trademark registered in respect of identical goods, and the use of such mark is likely to mislead part of the public, in particular by evoking associations between the marks concerned (here Marian S. gas station logo and the BP gas station trademark). Unfortunately on appeal, the Court of II instance refused to share this view and the case was subsequently dismissed in whole, as the BP’s attempt to monopolize the colors of green and yellow. BP filed a cassation complaint. The SC did not understand why having made the same factual findings as the court of first instance, the court of appeals refused to recognize that the respondent had indeed committed the alleged acts of unfair competition. The SC noted also that the court of appeals should have and yet failed to address the important issue of whether the claimant’s trademark does indeed deserve protection under the IPL. As a result, the Supreme Court remanded the case back to the lower court for retrial.

See also “Trade mark law, case IV CSK 231/10“.

Trade mark law, case V CSK 109/08

April 24th, 2009, Tomasz Rychlicki

VKR Holding A/S from Horsholm sued Polish company OKPOL for trade mark infrigement and the delict (tort) of unfair competition. The suit was based on the provisions of Article 296(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

Infringement of the right of protection for a trade mark consists of unlawful use in the course of trade of:
(iii) a trade mark identical or similar to a renowned trade mark 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 trade mark.

The compalint was also based on Article 3(1) the 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.

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 District Court ruled that the figurative element of the trade mark in question, and its characteristic composition, have more influence on consumer awareness and subconscious than does their verbal aspect and that it is therefore necessary to protect VKR Holding’s brand, even if there are differences between the competing signs in verbal aspects. The court held that the signs are similar and that VELUX, being the renowned one, should benefit from the increased legal protection, as compared to “normal” i.e. the later mark of OKPOL company. The Polish company did not agree with such findings and filed an appeal complaint.

R-63259

The Court of Appeal in its judgment of 3 October 2007, shared the conclusions and assessments of the court of first instance that VELUX brand has the status of a reputable and renowned trade mark, and that word-figurative sign OKPOL is similar to VELUX which brings the risk of association between these signs. The risk of confusion is determined by the dominant element that both marks share – the red rectangle. According to the Court there is a similarity between disputed trade marks because of the overall visual impression and there is no significant difference in the word characters. The Court of Appeal also agreed for the admissibility of granting the protection under article 3(1) of the CUC because OKPOL’s action were in Court’s opinion very parasitic. In the Court’s view such behaviour was based on taking the advantage of VELUX’s renown and should be deemed an act of unfair competition, as behaviour contrary to the principles of good practices, which should be based honesty in business.

The Polish company filed a cassation complaint before the Supreme Court of the Republic of Poland in which it asked three important questions:
(a) May a person try to prohibit the use of a registered trade mark, referring to the right of registration of another trade mark?
(b) Is the protection of well-known/renowned trade marks based on the article 296(2)(iii) of the IPL or may it be protected also with reference to the provisions of the Act on combating unfair competition?
(c) How far one person can monopolize the principle of creating trade marks, especially word-figurative trade marks in relation to commonly encountered combination of colours and shapes that are used on the market?

The Polish Supreme Court in its judgment of 23 October 2008 case file V CSK 109/08 agreed with the lower courts that the risk of association should be based on similarity of figurative elements that both trade marks share. In court’s opinion, the overall visual impression is the basis for creating a positive image of VELUX products and it decides on the risk of association, in consequence, enabling for the parasitic use of the mark by the Polish company and which also led to dilution of the distinctive character and reputation associated with the VELUX trade mark.

R-183931

The Court also ruled that, if the use of a registered trade mark infringes on a previously registered trade mark, the infringer should refrain from using his right of protection because it is not a subject to protection based on rules of the civil law. The protection granted by the Polish Patent Office has only a formal aspect and it is governed by the administrative proceedings. In case of trade mark infringement it is up to the civil court to decide during the civil proceedings whether trade mark that was registered later should be afforded legal protection. There is no reason and no need to file a request for invalidation of the right of protection before the PPO.

In the answer to the second question the SC based its answer on the wording of Article 1(2) of the IPL.

The provisions of this Law shall not prejudice the protection of the subject matter referred to in paragraph (1)(i) [i.e. the relationships in the field of inventions, utility models, industrial designs, trademarks, geographical indications and topographies of integrated circuits], provided for in other legal acts.

The protection of renowned trade marks is afforded by both acts. As regards “monopolization”, the SC ruled that the Polish company was banned from using a sign that associates to a specific sign used by the VKR Holding A/S. Accordingly, no-one was granted a protection right to the principle of creating a trade mark. A comparison of the protection provided for in case of infringement of the right of protection for a trade mark with the scope of the protection provided for in the event of an act of unfair competition, it is clear that the scope of protection claims in the CUC is broader. Thus, there isn’t any sufficient axiological justification that in case of the infringement of a famous trade mark, which also involves a breach of good manners, the trade mark owner should be denied wider legal remedies provided for in the CUC. It would be contrary to the fundamental purpose of that Act, which is to ensure the healthy market competition.

Trade mark law, case III CSK 300/06

October 17th, 2007, Tomasz Rychlicki

The Supreme Court in its judgment of 22 February 2007 case file III CSK 300/06, held that each sign should be presented in a graphical way. This is understood in the case law as a visual perceptibility of the trade mark, i.e., a sign must be possible to be seen, even if it’s only a word trade mark, which is represented by writing letters. This case concerned the infringement of MIXEŁKO R-116044 trade mark owned by ALMAR spółka z ograniczoną odpowiedzialnością spółka komandytowa from Kraków.

Internet domains and trade mark law, case I ACa 1228/05

June 14th, 2007, Tomasz Rychlicki

The 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“.