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Archive for: case law

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. 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.

Wzór Przemysłowy Rp-11243

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

Tax law, case I FSK 1444/09

May 21st, 2010, Tomasz Rychlicki

The Polish entrepreneur asked the Director of the Tax Chamber in Kraków, whether the inclusion in the billing of VAT of the amount of tax charged on the purchase of goods and services on the basis of invoices and correction invoices received by e-mail or fax, not in the form of electronic invoices with digital signature, is correct. The Director ruled that such interpretation is incorrect. The Company did not agree with this decision and filed a complaint to the administrative court. The Voivodeship Administrative Court (VAC) in Kraków in a judgment of 17 March 2009, case file I SA/Kr 97/09 dismissed the case. The Company filed a cassation complaint. The Supreme Administrative Court in a judgment of 20 May 2010, case file I FSK 1444/09, ruled that invoices that were sent via fax or e-mail are equivalent to these sent via traditional mail. What’s more important, such invoices do not need any electronic signature.

Tax law, case III SA/Wa 1823/09

May 17th, 2010, Tomasz Rychlicki

The Director of Tax Control Office in Warsaw ruled that the amounts of cash referred to as a “license to exercise the media rights” that were received by Legia football club from the Polish Football Association (PZPN), should be subject to tax on goods and services. Legia argued that such an agreement is not a contract of sale of rights, but the license agreement. However, the Director has found that the PZPN was the sole owner of intangible (economic and non econimic) property rights to the Polish national championships. To be the sole owner of the rights to football matches, PZPN had to acquire these rights. Therefore, Legia had to transfer these rights in some way, and that included proper fee.

The Director referred to a series of court decisions and pointed out that the sports’ event, namely football games, do not constitute a copyrightable work under the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No. 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No. 90, item 631. Legia as a football club does not take action on the creative nature. In the opinion of the Director, it is not precluded that on the legal market may exist licensing agreements relating to intangible property, other than works that are defined in the ARNR.

Only article 43(1) pt 13 of the Act on Goods and Services Tax – GSTA – (in Polish: ustawa o podatku od towarów i usług) of 11 March 2004, Journal od Laws (Dziennik Ustaw) No. 54, item 535, includes a reference to the ARNR.

Art. 43. 1. The following shall be exempted from the tax:
13) licensing or authorization to use a license, as well as assignment of the proprietary right within the meaning of the copyright law – in relation to computer programmes – free of charge, for educational facilities, referred to in paragraph 9.

That provision indicates the grant of the license or authorization to use copyright licenses and the transfer of property rights under copyright law (the ARNR). The absence of such references in other regulations means that the transfer of copyright may affect the rights of the author, or a sole owner of any intangible property, which does not have the characteristics of the copyrightable work. A similar situation will occur in the case of a license. Wherever there is no reference to copyright law (ARNR) it will also mean the license agreement for the use of intangible property other than the copyrightable work.

The Tax Office ruled that Legia transfered “media rights” to the PZPN, so the Association could fully manage of them, and so enter into an agreement concerning the disposition of such rights. The rate of the tax shall be 22% for such service. The tax shall become chargeable upon the receipt of all or part of payment, though not later than upon the expiry of the due date specified in the contract or invoice – for the performance in the territory of the country of services referred to in article 27(4) pt 1 of the GSTA.

4. The provision of paragraph 3 shall apply to the following services:
1) sale of rights or granting of licenses or sublicenses, transfers and assignments of copyrights, patents, trademarks, letting joint trademarks or joint guarantee marks for use, or other related rights.

Legia did not agree with the decision of the Director of Tax Control Office and filed a complaint against. The Voivodeship Administrative Court in Warsaw in its judgment of 26 March 2010 case file III SA/Wa 1823/09 dismissed it.

Trade mark law, case II GSK 555/09

May 17th, 2010, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case VI SA/Wa 2376/08“. The Free Trade Union of Drivers of the Republic of Poland (FTUD) and its representative disagreed with the decisions of the Polish Patent Office and the Voivodeship Administrative Court, and filed a cassation complaint to the Supreme Administrative Court. The FTUD claimed that the drawing of an eagle included in its sign differs from the National emblem, because it has different colors and is on a different background. The Union also argued that the sign emphasizes its national identity, and not link with the state bodies. According to the Union, the PPO already registered many characters that consist of national symbols that were artistically altered. The refusal of registration of the questioned sign limits the competition argued the Union.

The Supreme Administrative Court in a judgment of 21 April 2010, case file II GSK 555/09, dismissed the cassation appeal. According to the SAC the provisions of the IPL and the Act on Coat of Arms, Colours and Anthem of the Republic of Poland should be read together. Neither the emblem or image of the Eagle established as the emblem and symbols of the Republic of Poland shall not be subject to protection rights. This applies also to similar signs – said Judge Małgorzata Korycińska. The judgement is final.

Polish patent attorneys – substitution and delivery of documents

May 16th, 2010, Tomasz Rychlicki

According to the provisions of Articles 240 and 241 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, a representative shall be authorised to appoint a substitute (substitution).

Article 240
1. Except for the persons referred to in Article 236(2), a representative shall be authorised to appoint a substitute (substitution).
2. Authorisation by another joint right holder shall not be required for performing conservatory action.

Article 241
1. Where two or more persons are parties to a proceeding and no representative has been appointed, the persons concerned shall be required to indicate one address for service. Failing to indicate such address, the address of the person named first in the application or in another document, on the basis of which the proceeding is instituted, shall be deemed to be that address.

2. At a party’s request, the Patent Office shall also send letters addressed according to paragraph (1) to the addresses additionally indicated by that party. This provision shall also apply accordingly, where only one person who has appointed a representative is a party to the proceeding.

As the effect of establishing a substitute, the same relationship, which was established between a party and a patent attorney is also created between a party and a substitute, while maintaining the existing powers of attorney. This means that the party has two equivalent proxies since the establishment of an effective substitution. See for instance opinions presented by the Supreme Court Civil Chamber in a judgment of 13 February 2004, case file IV CK 269/02, the Supreme Court Civil Chamber in a decision of 7 November 2006, case file I CZ 78/06, or judgment of the Voivodeship Administraive Court in Poznańof dnia 20 February 2007, case file I SA/Po 1432/06.

On the basis of provisions of Article 40 of the 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, where a party has established a representative, all documents are delivered to the proxy and not a party.

Article 40.
§ 1. Documents shall be served on the party to proceedings, and if the party is acting by a representative – on that representative.
§ 2. If a party to proceedings has appointed an attorney then documents shall be served on the attorney.
§ 3. If a case has been commenced at the instigation of two or more parties the documents shall be served on all parties, unless the application indicates that one of them is authorised to receive service.

Due to the limitation established for granting the substitute power of attorney only to patent attorneys and provisions of article 237(1) of the IPL which provide that there can be only one proxy for one legal action, in case of existence of a substitute, all correspondence will be delivered to one person – the agent or a substitute.

Article 237
1. In the performance of one act a party may be represented by one natural person only.
2. A power of attorney shall be in writing and shall be included in the files on performance of first legal act.
3. Where the power of attorney covers two or more cases, it shall be included in the files of that of the cases, in respect of which the first act is performed by the representative. When acting in other cases covered by the power of attorneys, the representative shall be required to furnish a certified copy of the power of attorney.
4. A patent agent shall be allowed to certify himself a copy of the power of attorney granted to him.
5. Failing to pay a due stamp duty for the power of attorney, the Patent Office shall invite the representative to make relevant payment and in case it should not be made, it shall additionally invite the party to confirm, within the fixed time limit, the acts performed by the representative. Failing to observe the fixed time limit, the provision of Article 223(4) shall apply accordingly.

The decision in this regard will be taken following an assessment of attorney documents and attorney substitution. However, in the case of granting substitution of confluence with the scope of powers of attorney and without indicating an address for delivery of documents, the Polish Patent Office will continue to deliver documents only to a substitute.

Personal rights, case II CSK 580/09

May 1st, 2010, Tomasz Rychlicki

The Supreme Court in a judgment of 6 May 2010 case file II CSK 580/09 ruled that if there is a high probability of irreversible impairment of the fetus, the mother can decide whether to remove the pregnancy. The Court has confirmed that the decision on the abortion is every mother’s personal right/interest, and in the case of an infringement of such right, a woman has the right to seek the redress for the harm and damages to compensate for both parents increased costs of raising a handicapped child.

Categories: abortion | case law | personal rights or interests | Polish Supreme Court.

Advertising of pharmaceuticals, case GIF-P-R-450/147-3/ZW/09/10

April 28th, 2010, Tomasz Rychlicki

The Main Pharmaceutical Inspector (MPI) questioned the legality of a few ads that were aired on different TV channels. See for instance the decision of the the Main Pharmaceutical Inspector of 4 March 2010, no. GIF-P-R-450/147-3/ZW/09/10, with regard to indication of a sponsor in “The producer of Guajazyl – cough syrup, invites to a forecast” (in Polish “Na prognozę pogody zaprasza producent Guajazylu – wykrztuśnego syropu na kaszel”), the decision of the the Main Pharmaceutical Inspector of 10 March 2010, no. GIF-P-R-450/141-4/ZW/09/10, with regard to indication of a sponsor in “The producer of Pectosol – herbal preparation on cough, invites to a program” (in Polish: “Na program zaprasza producent Pectosolu – ziołowego preparatu na kaszel”), the decision of the the Main Pharmaceutical Inspector of 6 January 2010, no GIF-P-R-450/126-3/ZW/09/10, with regard to indication of a sponsor in “The producer of DEXAPINI invites to a forecast. DEXAPINI – goodnight without a cough” (in Polish: “Na prognozę pogody zaprasza producent syropu DEXAPINI. DEXAPINI – dobranoc bez kaszlu”).

According to article 17(1) of the Polish Act on Broadcasting – LOB – (in Polish: Ustawa o radiofonii i telewizji) of 29 December 1992, Journal of Law (Dziennik Ustaw) of 1993, No 7 item 34, consolidated text of 19 Novemver 2004, Journal of Laws (Dziennik Ustaw) No 253 item 2531, with later amendments, sponsored programmes or other broadcasts shall be identified as such by sponsor credits at their beginning or end. Such credits may specify only the sponsor’s name, business name, trademark or contain some other identification of the business operator or its business activities, the image of a single product or service. According to article 4 pt. 7 of the LOB, the “sponsorship” shall mean a direct or indirect financing or co-financing of the production or transmission of a programme or other broadcasts by an entity other than the broadcaster or producer of the programme, with a view to establishing, enhancing or promoting the renown of the name, business name, product or service, trademark. The MPI held that publishing of information relating to the product, not the manufacturer’s is basically beyond the scope of sponsorship.

The MPI ruled that these sponsorship spots were illegal advertising of the medicinal products.

Trade mark law, case II GSK 344/09

April 20th, 2010, Tomasz Rychlicki

This is the continuation of the history described in the post entitled “Trade mark law, case VI SA/Wa 1388/07“.

The Polish Patent Office (PPO) and the Voivodeship Administrative Court (VAC) ruled that EAU DE TOKYO trade mark is totally dissimilar to KENZO or to L’eau par Kenzo trade marks. The mere fact of the use of the word eau did not predict similarity of questioned signs, because the word as part of the expression of eau de toilette, in relation to cosmetics does not have any distinctive character. The PPO and the VAC did not agree with arguments that MGT Parfum Création wanted to use the reputation that was understood as the good name of KENZO.

According to the PPO and the VAC, the use of packaging that is confusingly similar to the packaging used by KENZO could only give rise to claims of delict of unfair competition which is decided in the civil proceedings. The very fact of any dishonest conduct of the holder of the disputed registration cannot be interpreted that the trade mark application has been made in bad faith. Even if the court agreed that events which took place in 2006, i.e. MGT actions based on producing EAU DE TOKYO packaging that looked alike L’eau par Kenzo perfumes, and advertising of its products with “the type of Kenzo perfume” slogan, could raise doubts about compliance of such actions with the rules of fair competition, but these were not sufficient facts to consider that in 2000, MGT had the intention to act dishonestly – in bad faith.

The Supreme Administrative Court (SAC) in a judgment of 26 January 2010,case file II GSK 344/09, ruled that the PPO has properly established and the VAC correctly agreed to facts, that at the time of application for the protection right for EAU DE TOKYO R-153843 trade mark, the bad faith could not be attributed to MGT Parfum Création.

Tax law, case III SA/Wa 396/10

April 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 8 April 2010, case file III SA/Wa 396/10, ruled that there is no legislative impediment to the existence of a mixed system for the storage of invoices, which consists of sending an invoice in paper and storage of its electronic copies with the option to print at the request of a legitimate authority. Such an interpretation was corroborated by teleological considerations, environmental and economic. According to the VAC the different findings would lead to a breach of the principle of proportionality, as set out in article 5(3) of the Treaty on European Union.

3. Under the principle of subsidiarity, in areas which do not fall within its exclusive competence, the Union shall act only if and in so far as the objectives of the proposed action cannot be sufficiently achieved by the Member States, either at central level or at regional and local level, but can rather, by reason of the scale or effects of the proposed action, be better achieved at Union level.

The institutions of the Union shall apply the principle of subsidiarity as laid down in the Protocol on the application of the principles of subsidiarity and proportionality. National Parliaments ensure compliance with the principle of subsidiarity in accordance with the procedure set out in that Protocol.

Consolidated versions of the Treaty on European Union and the Treaty on the Functioning of the European Union, Official Journal C 83 of 30 March 2010. PDF files.

Trade mark law, case VI SA/Wa 1988/09

April 15th, 2010, Tomasz Rychlicki

Kraft Foods Polska Spółka Akcyjna from Warsaw, the owner of PRINCE POLO R-148617 trade mark gave a reasoned notice of opposition to a final decision of the Patent Office on the grant of a a right of protection to MARCO POLO R-174796 trade mark that was applied for by Zakłady Przemysłu Cukierniczego MIESZKO S.A. for goods in class 30.

Kraft Foods claimed that there is a risk of confusion between these trade marks, which is the result of the similarity of the compared signs and the identity of the goods. Kraft also submitted evidence to prove the reputation of PRINCE POLO trade mark. Mieszko argued that the signs are dissimilar because the graphic/figurative element of these marks is essential, and verbal elements are blurred or faint and even minor. Mieszko also found arguments of POLO PRINCE reputation very questionable, because even Kraft indicated that the goods for which its trade marks are registered marks are cheap and directed for the mass consumer.

The Polish Patent Office (PPO) In a decision of 23 April 2009, ruled that the same element POLO does not determine the similarity between both signs, because the differences occurring in the conceptual aspect rule out the risk of consumer confusion as to the origin of goods. The PPO held that contrary to the Kraft’s arguments, Marco Polo sign will primarily be associated by purchasers of goods with a famous explorer, because it is simply his name. However, PRINCE POLO sign, regardless of how it can be translated into Polish, is not used to identify a specific person and it is not a proper name. Despite the recognition of Kraft’s trade marks on the Polish market, the average consumer will associate MARCO POLO in the first place with a person of a traveler rather than as Kraft claimed with its PRINCE POLO trade marks. Therefore, the PPO rejected the notice of opposition. Kraft filed a complaint to the administrative court.

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 11 February 2010, case file VI SA/Wa 1988/09, agreed with the PPO’s assessment of the similarity and ruled that since the signs are not similar then the discussion about using someone else’s reputation is not justified. Dissimilar signs cannot cause association in consumer’s mind, so there can be no question of imitation, and conscious deriving of benefits from someone else’s reputation.

Kraft filed a cassation complaint to the Supreme Administrative Court. See “Trade mark law, case II GSK 746/10“.

Tax law, case I SA/Kr 60/10

April 7th, 2010, Tomasz Rychlicki

The Polish company which provides advertising services that are based on placing advertising banners on Internet websites requested the Minister of Finance to issue an individual interpretation of tax law. The company rents websites from individuals and companies for remuneration. Banner ads are placed on rented websites by using a computer software owned by the company. The owners of rented websites were required at the start of cooperation only to do a single interference/change in the code in order to make space on their websites for ads placed by the Company. This moment was treated as a commitment by the parties to the lease agreement and such a website was subject to use and benefits/usufruct. The owners of websites were not required to render to the Company (or its customers) any other additional steps. The company receives payments from its advertisers/customers according to the agreement, i.e. periodicaly for example monthly or once after the ad campaign ended.

The company asked whether income from remuneration for the lease obtained by individuals (private persons) who were not doing any business activity in this field, must be considered to sources mentioned in article 10(1) pt 6 of the Polish Act on Personal Income Tax – PITA – (in Polish: ustawa o podatku dochodowym od osób fizycznych) of 26 July 1991, Journal of Laws (Dziennik Ustaw) No. 80, item 350, with later amendments.

Article 10.
1. The sources of revenues shall include:
6) letting, subletting, lease, sublease and similar contracts, including also lease, sublease of special sectors of agricultural production and agricultural undertakings or parts thereof for non-agricultural purposes or for running special sectors of agricultural production, with the exception of assets used for commercial activities;

The company wanted to know whether it should be also acting as withholding agent, who is obliged to collect withholding income tax. The company argued that according to article 10(1) pt 6 and 44(1) pt 2 of the PITA it is not its duty. The Director of the Tax Chamber, acting under the authority of the Minister of Finance, held the position of the Company to be invalid. The Director and the Minister of Finance held that every time there was a service contract concluded between the company and the owners of websites and not the lease agreement, because the owner should be regarded as a person cooperating with the Company based on the fact that they have been required to comply with personal activities, i.e. one-time intervention in the code of a website, so that ads can appear on their website. Their revenues shall be defined as in article 10(1) pt 1 of the PITA.

Article 10.
1. The sources of revenues shall include:
1) service relationship, employment relationship, including cooperative employment relationship, farming or other agricultural production cooperative, homework, retirement or disability pension;

The company appealed. The Voivodeship Administrative Court (VAC) in Kraków in its judgment of 5 March 2010 case file I SA/Kr 60/10 held that a website is not either the tangible object/property or the right. It cannot therefore be subject to a lease within the meaning of the Polish Civil Code. However, according to the principle of contractual freedom, as the company correctly pointed out, it would be acceptable to conclude the so-called unnamed contract, which would be similar to the standard lease contract as provided by the regulations included in the Civil Code. The changes made in HTML code were just the technical operation.

See also “Tax law, case ILPB2/415-679/08-2/AJ“

Tax law and Internet, case I SA/Gd 17/10

April 7th, 2010, Tomasz Rychlicki

On 3 March 2009, a Polish citizen (P.W.) requested the Minister of Finance to provide a written interpretation of tax law on individual case concerning personal income tax with regard to taxation of interest on loans granted over the Internet. P.W. wanted to use an online social lending website, which activity is based on associating individuals who want to take out a loan or to grant one. Loan agreements are concluded directly between the lender and the borrower by making a declaration of will in the electronic form.

P.W. had asked whether lending money to individuals through a social lending site will be an economic activity within the meaning of article 5a pt 6 of the Polish Act on Personal Income Tax – PITA – (in Polish: ustawa o podatku dochodowym od osób fizycznych) of 26 July 1991, Journal of Laws (Dziennik Ustaw) No. 80, item 350, with later amendments.

6) non-agricultural commercial activities – it shall mean profit oriented, organized and continuing activities, run in one’s own name and on own or another person’s account, the revenues from which are not included in other revenues from the sources listed in Article 10.1 subparagraphs 1, 2 and 4-9;

P.W. argued that his activities do not have all the above mentioned characteristics, and therefore such project will not constitute an economic activity within the meaning of the PITA. P.W. argued that the use of office equipment which is necessary for granting a loan by the use of the online social lending website does not imply the organized nature of such activity. He drew attention to the fact that having own devices is not necessary for carrying out such activities, since these activities may also be performed in Internet cafe or by the use of a third party equipment. The existence of the terms of service provided by the website does not prove the organized nature of lending activities either. P.W. also noted that his activities would not be a continuous process, because the loans will be sporadic, depending on the currently available resources.

On 21 May 2009, the Minister of Finance issued a personal interpretation, in which it ruled the taxpayer’s position as incorrect and held that activities related to lending money that are conducted through the Internet via a social lending website are deemed as non-agricultural commercial activities. According to the Minister of Finance these activities are taken to profit on its own behalf and on its own interest. Such loans are given in an organized manner, i.e., to be able to make loans the applicant must be subject to rules (TOS) set by the system, it must have computer equipment and Internet access. The fact that loans are to be given once a month, proves that these are not sporadic or one-time events and in consequence argues for recognition of the continuous nature of such actions.

P.W. did not agree with such interpretation and filed a complaint to the Voivodeship Administrative Court (VAC) in Gdańsk. The VAC in a judgment of 9 March 2010, case file I SA/Gd 17/10 rejected the complaint and upheld the interpretation of the Minister of Finance.

Trade mark law, case II GSK 387/09

March 30th, 2010, Tomasz Rychlicki

Tianjin Cosmetics Scientific – Technical Research Institute Co., Ltd from China filed a request for invalidation of PULANNA R-76294 and PULANNA R-76424 trade marks. The company from China claimed that the person who applied for the protection of these two trade mark was acting as a Polish agent of Tianjin Cosmetics Scientific and he has concealed the fact of both trade mark applications and subsequent registrations.

The Supreme Administrative Court in a judgment of 17 February 2010, case file II GSK 387/09 ruled that to the extent as follows from an international agreement, where a trademark has been applied for protection by and on behalf of, or the right of protection has been granted for, an agent or a representative of the person enjoying the exclusive right to use that trademark in another country, that person may, if the agent or representative acted without that person’s consent, demand that the protection granting proceeding be discontinued or the right of protection revoked. He may also demand that the right of protection be granted on his behalf, or the right already granted transferred to him.

The right may not be demanded to be revoked or transferred, where the entitled person has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

See also “Trade mark law, case II GSK 950/08“.

Trade mark law, case II GSK 335/09

March 24th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court (VAC) in Warsaw in a judgment of 4 November 2008, case file VI SA/Wa 1529/08 dismissed the complaint brought by Fashion Group Sp. z o.o. against the decision of the Polish Patent Office (PPO) of 2008, case no. Sp. 504/06, on the discontuance of proceedings in case of the invalidation of the right of protection granted for OSKARY MODY R-178091 trade mark.

Fashion Group based its legal interest on provisions on the freedom of establishment and the existence of its exclusive right to OSKARY MODY R-180722 trade mark. Fashion Group also claimed that MEDIA SUKCES s.c., the owner of the questioned trade mark, published press information indicating alleged violation of its trade mark rights by Fashion Group, which involved a risk of legal proceedings.

The PPO and the VAC denied the existence of legal interest on Fashion Group side. The company filed a cassation complaint. The Supreme Administrative Court in a judgment of 9 February 2010, case file II GSK 335/09, ruled that a competitor has a legal interest in seeking the invalidation of the same registered trade mark as his right of protection, if the owner of such an identical trade mark took any action based on demanding for the cease and desist of use, or negating the right of its competitor.

See also “Trade mark law, case II GSK 774/08” and “Trade mark law, case II GSK 503/08“.

See also Berenika Depo’s article “Same procedure every year: locus standi as an effective barrier to trade mark revocation for non-use in Poland” published in Journal of Intellectual Property Law & Practice, 2010 5(1):55-64; doi:10.1093/jiplp/jpp186.

Procedural law, case II FPS 8/09

March 23rd, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 15 February 2010 case file II FPS 8/09 held that if the reasons of the judgment of the Voivodeship Administrative Court do not include a position as to the facts adopted as the basis for the contested decision, it may constitute an independent basis for the cassation appeal.

Categories: Art. 141 §4 PBAC | Art. 174 PBAC | case law | Polish Act on Proceedings Before Administrative Courts | Polish Supreme Administrative Court.

Social networking sites, case I C 1272/09

March 19th, 2010, Tomasz Rychlicki

The District Court in Wrocław in a judgment of 18 March 2010, case file I C 1272/09, ruled that the advertising of one of the Polish banks that promoted payment cards in such a way that it used profile pictures of users of nasza-klasa.pl website infringed their personal rights. A user who logged into his or her profile was presented with an advertising that showed his or her face/image placed on credit card together with a slogan “your card for your personal account may look like this”. The Court held that users agreed to the provisions of the terms of service, but the permission to use their pictures concerned solely the purpose of social networking, not advertising. The Court ordered the owner of nasza-klasa.pl to pay the plaintiff 5000 PLN as a compensation. This judgment is not yet final.

Patent law, case II GSK 245/10

March 18th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in a judgment of 15 November 2009, case file VI SA/Wa 906/09 ruled that the scope of the European patent is the same as in the case of a national patent granted, and the case law of individual member states presents different approaches to the examination of the patentability of inventions using computer software. Article 27 of the PCT cannot be treated as a ban on the use of individual interpretation to assess the patentability of the invention for the protection of which one is applying. Article 27(5) of the PCT provides that the contracting States have flexibility in setting the conditions for patentability.

In this case, the PPO exhaustively referred to the fact of the grant of an European patent for the questioned invention and indicated the reasons for which it did not grant patent rights in Poland. Undoubtedly for the VAC, it was hard not to notice the importance of the referral by the President of the European Patent Office (EPO), to the Enlarged Board of Appeal of the EPO on the fundamental issues relating to the interpretation of articles 52 EPC in relation to computer programs. See case G 3/08, application filed on 22 October 2008. The questions asked by Alison Brimelow reflect the concerns and divergent interpretations which source is located in the line of EPO case law aiming to over-extend the concept of “patentability of inventions”. At the date of hearing of the case the mentioned referral was not considered by the Enlarged Board of Appeal of the EPO. Therefore, the unified position on the examination of the patentability of inventions using computer programs/software, which could be addressed by Member bound by EPC, did not exist yet. Given the above, the VAC held that the complaint should be dismissed because it did not include proper basis.

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 245/10 reversed this judgment and set the case back to the VAC for reconsideration.

See also “Patent law, case VI SA/Wa 2566/08“.

Trade mark law, case VI SA/Wa 1074/06

March 16th, 2010, Tomasz Rychlicki

I was so fascinated with the use of the law of prägnanz by the Polish court that I decided to look for something more. I was very surprised with my discovery.

On 24 October 2004, Diesel Company, seated in Molvena, Italy filed a notice of opposition to a final decision of the Patent Office on the grant of a right of protection to DSL R-148054 trade mark. According to Diesel S.p.A., DSL R-148054 trade mark was similar to DIESEL R-73457 and DIESEL IR-608499 trade marks. The Polish Patent Office in a decision of 9 January 2006, no. Sp.88/05, rejected the opposition. Diesel Company filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC in judgment of 16 November 2006, case file VI SA/Wa 1074/06, said the following.

It should be noted that one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign. Thus, the internal context may allow for the law of closure, i.e. for the full reading of the meaning of the word. In turn, the law of symmetry with the use of the simplicity of perception of an object can lead to the fact that elements close to each other, form a mild integrity and the independent shape.

R-148054

In this case, the VAC correctly quoted its source. These are excerpts from A. Falkowski, T. Tyszka Psychologia zachowań konsumenckich, (in English: Psychology of Consumer Behavior), Gdańskie Wydawnictwo Pedagogiczne, pp. 24-26.

Trade mark law, case VI SA/Wa 442/09

March 15th, 2010, Tomasz Rychlicki

In May 2006, the Polish Patent Office (PPO) granted the right of protection for COROVIN R-173989 trade mark. Coroplast Fritz Müller GmbH & Co.K.G. the owner of COROPLAST R-91907 trade mark filed a notice of opposition to this final decision of the Patent Office on the grant of a right of protection. The German company argued inter alia that both signs are similar. The PPO rejected the opposition and the German company filed a complaint to the Voivodeship Admnistrative Court (VAC) in Warsaw.

The VAC in a judgment of 4 January 2010, case file VI SA/Wa 442/09 applied rules of the law of prägnanz (German: pithiness) while deciding this case. The Court ruled that by creating specific stimuli, one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures, and in this case one can add to the already existing characters CORO other letters. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign.

Therefore, the VAC annulled the contested decision, and ruled it unenforceable. This judgment is not yet final. The party unsatisfied with the ruling may file a cassation complaint to the Supreme Administrative Court.