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Tax law, case I FSK 1520/09

March 15th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 10 March 2010, case file I FSK 1520/09 held that the free of charge transfer of advertising materials for purposes related to operating a company is not deemed as supplying the goods and therefore not subject to value added tax as defined in article 7(2) and (3) 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.

Article 7.
1. The supply of goods, referred to in Article 5.1.1, shall mean the transfer of the right to dispose of the goods as owner, including also:

1) transfer under an order made by a public authority or an entity acting in the name of such an authority, or transfer in pursuance of the law, of the ownership of the goods against payment of compensation;

2) release of goods under the tenancy, lease or a similar contract concluded for a definite period of time, or a credit sale contract, if the contract provides that in the normal course of events envisaged in that contract or upon payment of the last instalment, ownership shall be passed;

Categories: advertising law | case law | Polish Act on Goods and Services Tax | Polish Supreme Administrative Court | tax law.

Internet websites, case I C 1532/09

March 13th, 2010, Tomasz Rychlicki

The Observatory of Media Freedom in Poland run by the Helsinki Foundation for Human Rights reported on a case of Augustyn Ormanty, the mayor of Kalwaria Zebrzydowska town, who sued Tomasz Baluś, the administrator of naszakalwaria.pl website, for personal rights infringement after he found that the website hosted defamatory comments directed to his person. Mr. Ormanty decided to request the court to order the removal of 18 comments because he received negative response from Tomasz Baluś who claimed that these questioned statements put in the form of comments to information published at his website, are the individual opinions of people who wrote it, for the content of which, Tomasz Baluś is not responsible, because they are owned by their authors.

The District Court I Civil division in Kraków in a judgment of 11 MArch 2010, case file I C 1532/09, ruled that naszakalwaria.pl website cannot be deemed as the press according to provisions of the Polish Act of 26 January 1984 on Press law – APL – (in Polish: ustawa Prawo prasowe), Journal of Laws (Dziennik Ustaw) No. 5, item 24, with later amendmets, because it did not meet the criterion of periodicity. The court noted that naszakalwaria.pl website is rather a collection of publications and serves as a wall on which people are able to post their comments. The court emphasized that the purpose of Internet portals, such as naszakalwaria.pl is primarily to initiate and shape public debate on issues important to the local community. The court added that the Internet is, in principle, free from control and could be subject to control only, if it fits the regulation provided in the APL. The court also stated that Augustyn Ormanty failed to prove that the offensive – in his opinion – comments related to the facts. According to the Court, they were rather opinions, which in principle cannot be judged based on the criterion of truth and falsehood.

In addition, the court held that Tomasz Baluś had a limited capacity for meticulousy checking and editing of the entries appearing on the forum of his website because of their large numbers. The court stated that the measures taken by the Mr. Baluś to search and control the entries for vulgarity and to remove obviously insulting comments were sufficient. According to the Court, Mr. Ormanty had a possibility and the right to request the removal of comments he found insulting, based on provisions of article 14 the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), Journal of Laws (Dziennik Ustaw) No. 144, item. 1204, as amended.

1. A person who gives access to the contents of a network IT system to a customer, where the customer stores data, is not aware of the illegal features of the data or activity connected with the data and upon receiving an official notification or credible information about the illegal features of the data or activity connected with it, immediately bars access to the data, shall not be responsible for the data.
2. A Service provider who has received the official notification of an illegal character of the stored data that was supplied by the customer, and prevented the access to the data, shall not be liable to the customer for damages resulting from preventing access to such data.
3. A service provider who has received credible information of the illegal character of the stored data supplied by the customer and prevented access to the data, shall not be liable to the customer for the damage resulting from preventing access to such data, if it has immediately notified the customer of the intention to prevent access to data.

The court pointed out to the argument stating that the mayor is a public figure who must reckon with the fact that its activities may be subject to criticism. As a public figure, Mr. Ormanty should show greater resistance to critical opinions, negatively evaluating the performance of the functions entrusted to him.

In conclusion, the Court added that the law has not kept pace with the development of modern technology and therefore, it does not precisely regulate the issues of freedom of expression in the Internet. Therefore, the careful evaluation of such situations, is entrusted to the judges. Their task is to ensure and guarantee the freedom of expression in similar cases.

Trade marks and taxes, case IPPB1/415-288/09-2/AG

March 12th, 2010, Tomasz Rychlicki

A taxpayer being also an entrepreneur has requested the Director of the Tax Chamber in Warsaw to issue an interpretation to a question whether by contributing a trade mark to a general partnership (ordinary partnership), he would receive a revenue that is subject to personal tax income. The right of protection for a trademark was granted by the Polish Patent Office. The taxpayer received revenue from licensing the use of that trade mark. However, he decided to form a general partnership, to which he wanted to make a contribution in a trade mark, based on its market value. The partnership would treat such trade mark as a legal and intangible asset and would make it available to other entities under a license agreement. The entrepreneur was also considering the possibility to sale his right of protection for the trade mark to another entity if the general partnership would not count it as the intangible asset.

He argued that making a contribution to a partnership, such as general or ordinary one (these are not having a status of a legal person), is not a source of revenue in personal income tax. His opinion was based on provisions of article 17(1) pt. 9 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

Revenues from financial capital shall be:
9) par value of shares (stocks) of an incorporated company or shares of a cooperative societ received in exchange for a non-financial contribution;

The Director of the Tax Chamber in Warsaw in the interpretation of 25 June 2009, no. IPPB1/415-288/09-2/AG, concluded that the contribution of a trade mark to a general partnership is considered as a sale. The value of a trade mark that was established in the partnership contract serves as a basis to set the revenue from financial capital. Therefore, according to article 14(2) pt. 1 of the PITA it is a revenue from commercial activity of a contributing person. The Director of the Tax Chamber referred to article. 4 § 1 of the Commercial Companies Code, under which the general partnership is a partnership, which may on its own behalf acquire the rights, including real property and other property rights, to incur obligations, may sue and to be sued – it has legal capacity but not the legal personality (a private company not an incorporated one). A non-financial contribution causes a transfer the ownership of things or rights to a general partnership because the capital share of the partner shall equal the value of the contribution effectively made. From the viewpoint of the civil law regulations, it is a payable sale of things or rights. Because the general partnership has no legal personality separate from its partners, therefore is not subject to personal tax income. Only partners are subject to personal tax income in such case.

See also “Trade marks and taxes, case II FSK 1003/08” and “Trade mark law, I SA/Rz 249/09“.

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

March 8th, 2010, Tomasz Rychlicki

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

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

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

Trade marks and taxes, case II FSK 1003/08

March 3rd, 2010, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 20 November 2009, case file II FSK 1003/08, confirmed the rule that the Polish taxpayer is allowed only for the depreciation of the registered trade mark. This judgment was based on provisions of article 16b(1)(6) of the Polish Act of 15 February 1992 on the Legal Entities’ Income Tax – LEIT – (in Polish: Ustawa o podatku dochodowym od osób prawnych) consolidated text published in Journal of Laws (Dziennik Ustaw) of 2000, No. 54, item 654 with subsequent amendments.

The following intangible assets, acquired and fit for commercial use as at the date of acceptance for use, shall be depreciated, subject to Article 16c:
(6) rights to: inventions, patents, trade marks, designs.

The SAC ruled that the priority to obtain the right of protection for a trade mark which is determined according to the date of filing of a trademark application with the Polish Patent Office (PPO) is something different than the possibility of introducing such a right in the records of intangible assets, which is allowed by the LEIT only after the PPO issued a positive decision on the grant of a right of protection for a trademark. Such a decision is always taken after having established that the statutory requirements for the grant of the right have been satisfied. Having only a priority does not guarantee such situation will take a favourable turn.

See also “Trade mark law, I SA/Rz 249/09“.

Personal interest, case I ACa 1176/09

February 26th, 2010, Tomasz Rychlicki

In the summer of 2008, a popular Polish tabliod Super Express published a nude picture of Justyna Steczkowska that was taken on a Turkish beach during her holidays. The singer sued the publisher for the violation of privacy interest. The Appellate Court in Warsaw in a judgment of 24 February 2010, case file ACa 1176/09, awarded Justyna Steczkowska 80000 PLN compensation and ordered Super Express to publish an apology. The court held that there is no implied consent to the intrusion into privacy, even though it was the hotel’s private beach and a photographed person wasn’t too cautious.

Polish case law on e-access to public information

January 21st, 2010, Tomasz Rychlicki

Below, you will find a list of judgments on e-access to public information. By “e-access to public information” I mean all issues related to obtaining public information through or with the help of IT technology. You can find a more detailed discussion on each judgment under the link provided with the case file. All judgments are given in chronological order.

- The judgment of the Voivodeship Administrative Court in Gliwice of 19 September 2011 case file IV SA/Gl 1002/11.

- The judgment of the Voivodeship Administrative Court in Gliwice of 2 August 2011, case file II SAB/Wa 86/07.

- The judgment of the Regional Court Katowice Wchód in Katowice of 27 April 2010, case file I C 19/10.

- The judgment of the Voivodeship Administrative Court in Szczecin of 16 December 2009, case file II SAB/Sz 148/09.

- The judgment of the Voivodeship Administrative Court in Warsaw, case file II SAB/Wa 57/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 10 December 2007, case file II SAB/Wa 86/07.

Polish case law on industrial designs

January 12th, 2010, Tomasz Rychlicki

Below, you will find a list of judgments on industrial designs that were decided upon in administrative proceedings. Finding cases that are decided upon in civil proceedings is more problematic becasue they are rarely available to general public. You can find a more detailed discussion on each judgment under the link provided with the case file. All judgments are given in chronological order.

- The judgment of the Voivodeship Administrative Court in Warsaw of 4 October 2010 case file VI SA/Wa 736/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 3 October 2010 case file VI SA/Wa 1339/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 20 September 2010 case file VI SA/Wa 852/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 13 September 2010 case file VI SA/Wa 922/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 13 September 2010 case file VI SA/Wa 921/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 23 June 2010 case file VI SA/Wa 505/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 16 June 2010, case file VI SA/Wa 134/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 27 May 2010, case file VI SA/Wa 506/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 19 May 2010 case file VI SA/Wa 2026/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 12 May 2010 case file VI SA/Wa 599/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 12 May 2010 case file VI SA/Wa 598/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 11 May 2010 case file VI SA/Wa 504/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 26 February 2010, case file VI SA/Wa 34/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 23 February 2010, case file VI SA/Wa 1038/09.

- The judgment of the Supreme Administrative Court of 20 January 2010, case file II GSK 323/09.

- The judgment of the Supreme Administrative Court of 16 December 2009, case file II GSK 238/09. This judgment was issued on the basis of the cassation complaint brought from the judgment of the Voivodeship Administrative Court in Warsaw, of 11 December 2008, case file VI SA/Wa 1827/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 15 December 2009, case file VIII SA/Wa 332/09. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

- The judgment of the Voivodeship Administrative Court in Warsaw of 14 December 2009 case file VI SA/Wa 1764/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 14 December 2009 case file VI SA/Wa 1727/09.

- The decision of the Supreme Administrative Court of 9 December 2009, case file II GSK 772/09.

- The Judgment of the Voivodeship Administrative Court in Warsaw of 4 December 2009 case file VI SA/Wa 1706/09.

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

- The judgment of the Voivodeship Administrative Court in Warsaw of 13 November 2009, case file VI SA/Wa 1376/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 9 October 2009, case file VI SA/Wa 189/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 29 September 2009, case file VI SA/Wa 211/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 19 August 2009, case file VI SA/Wa 664/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 10 June 2009, case file VI SA/Wa 498/09

- The judgment of the Voivodeship Administrative Court in Warsaw of 21 July 2009, case file VI SA/Wa 518/09.

- The judgment of the Supreme Administrative Court of 17 June 2009, case file II GSK 1034/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 8 June 2009, case file VI SA/Wa 536/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 2 June 2009, case file VI SA/Wa 502/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 4 April 2009, case file VI SA/Wa 109/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 4 February 2009, case file VIII SA/Wa 332/08.

- The judgment of the Supreme Administrative Court of 27 January 2009, case file II GSK 612/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 11 December 2008, case file VI SA/Wa 1827/08. The cassation compliant bought before the Supreme Administrative Court was rejected in a decision of 16 December 2009, case file II GSK 238/09.

- The judgment of the Voivodeship Administrative Court of 21 November 2008, case file VI SA/Wa 710/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 4 November 2008, case file VI SA/Wa 1053/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 11 August 2008, case file VI SA/Wa 1088/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 10 June 2008, case file VI SA/Wa 543/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 4 November 2008, case file VI SA/Wa 1054/08.

- The judgment of the Supreme Court – Civil Chamber of 23 October 2007, case file II CKS 302/07.

- The judgement of the Voivodeship Administrative Court in Warsaw of 11 October 2007, case file VI SA/Wa 1215/07.

- – The judgment of the Supreme Administrative Court of 20 March 2007, case file II GSK 277/06, published in the electronic database LEX, under the no 321283.

- The judgment of the Supreme Administrative Court of 18 January 2007 case file II GSK 206/06

See also “Polish regulations on industrial designs“.

Copyright law, case I CSK 160/09

January 11th, 2010, Tomasz Rychlicki

The Polish Supreme Court in its judgment of 16 November 2009 case file I CSK 160/09 confirmed that no consent of the portrayed sportsmen is necessary for the athletics association to make such images available to the sponsors. The judgment came out as a result of a heated dispute between the Polish national football (soccer) team player Maciej Żurawski and TP S.A. (a telecommunication company) – the official sponsor of the team. The dispute regarded the unauthorized dissemination of Żurawski’ s image by TP S.A. in its various advertising and informational materials (such as fliers, posters, press and television). Żurawski desired that TP S.A. ceased to publish and disseminate his images and that it publicly apologized to him. The proceedings were joined by the Polish Football Association (PZPN) as a third party defendant. The bone of contention in this case were the pictures taken during the photo shoot of the national soccer team prior to the world championship in Germany in 2006. The story goes that in 2004, PZPN entered into a sponsorship agreement with TP S.A., pursuant to which PZPN obliged itself to:

1) allow TP S.A. to use the pictures of the national team in all of TP S.A. advertising and informational materials; and
2) to obtain the respective players’ consent to do so.

In 2006 the national football team participated voluntarily in a photo shoot. All players were duly informed as to what purposes the pictures would serve, and how they would be used. However, no formal consent forms were signed. The players did not sign any Representative’s Cards (which explicitly stated the player’s obligation to participate in events such as i.e. the photo session in question) either. Additionally, none of the players received any remuneration for the photo session. And that’s what’s most problematic in this case. Pursuant to article 81 of 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, with subsequent amendments, the right to disseminate the image of a person does not require the consent of that person (unless explicitly stated otherwise) if that person had received an agreed to remuneration.

The Court of first instance found for Zurawski, however the appeal court reversed and dismissed the case. The reason of that were differing interpretations of article 33(2) of the Act on Qualified Sports – AQS – (in Polish: Ustawa o sporcie kwalifikowanym) of 29 July 2005, Jurnal of Laws (Dziennik Ustaw) No 155, item 1298, with subsequent amendments, which was relied on by TP S.A. and PZPN in their argumentation.

each member of the national team, grants an exclusive right to his/her image in the national representation team outfit, to an appropriate athletics association, which is then entitled to use that image for economic purposes within the scope set forth in the Statute of that association or other international organization active in that field.

However, the very same article in sec. 2 states that the representative does indeed give his/her consent to disseminate his/her image in the national representation team outfit, however he/she does that within the meaning of article 81(1) of the ARNR. And this led to two different interpretations by two different courts: court of I instance held that article 33(2) of the AQS creates a direct duty to obtain a separate consent from the sportsman, whereas the appeal court found that such consent is impliedly given the moment the athlete (here football player) joins the national team. The SC agreed with the latter interpretation, stating that by joining the national team the player does indeed agree to a significant limitation on his right to image, whenever the image consists of him in the national representation’s outfit. Other than that he retains full rights to his right to publicity (in particular image). Hence, Żurawski ultimately lost the case.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Polish case law on personal data protection

December 11th, 2009, Tomasz Rychlicki

Below you will find a list of judgments and decisions on personal data protection in the context of IT technologies. You can find a more detailed discussion on each judgment or decision under the link provided with the case file. All judgments and decisions are given in chronological order.

- The judgment of the Voivodeship Administrative Court of 7 October 2011 case file II SA/Wa 364/11.

- The judgment of the Supreme Administrative Court of 19 May 2011 case file I OSK 1086/10.

- The judgment of the Supreme Administrative Court of 19 May 2011 case file I OSK 1079/10.

- The judgment of the Voivodeship Administrative Court in Warsaw of 16 March 2011 case file II SA/Wa 2037/10.

- The judgment of the Voivodeship Administrative Court in Warsaw, of 1 December 2010, case file II SA/Wa 1212/10. This judgment is not yet final.

- The decision of the Inspector General for Personal Data Protection of 13 September 2010 case file DOLiS/DEC-1013/10.

- The order of the Supreme Administrative Court of 15 July 2010 case file I OSK 1079/10. This decison is related to the judgment of the Voivodeship Administrative Court in Warsaw, of 3 February 2010, case file II SA/Wa 1598/09.

- The judgment of the Supreme Administrative Court of 11 May 2010, case file I OSK 963/09.

- The judgment of the Supreme Administrative Court of 15 March 2010 case file I OSK 756/09.

- The judgment of the Voivodeship Administrative Court in Warsaw, of 3 February 2010, case file II SA/Wa 1598/09. This judgment is not yet final. The cassation complaint may be filed to the Supreme Administrative Court.

- The judgment of the Supreme Administrative Court in Warsaw, of 18 November 2009, case file I OSK 667/09.

- The judgment of the Voivodeship Administrative Court in Warsaw of 26 August 2009 case file II SA/Wa 297/09.

- The judgment of the Supreme Administrative Court of 3 July 2009 case file I OSK 633/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 3 March 2009, case file II SA/Wa 1495/08.

- The judgment of the Supreme Administrative Court of 26 January 2009 case file I OSK 174/08.

- The judgment of the Voivodeship Administrative Court in Warsaw of 30 Novmeber 2007, case file II SA/Wa 71/07.

- The judgment of the Voivodeship Administrative Court in Warsaw of 9 February 2005, case file II SA/Wa 1085/04.

Polish case law on copyright

December 9th, 2009, Tomasz Rychlicki

A more detailed discussion about each judgment may be found under the link provided with the case file. All judgments are presented in the chronological order.

- The judgment of the Appellate Court in Warsaw of 27 October 2011 case file VI ACa 461/11.

- The order of the Polish Supreme Court of 26 October 2011 case file III CZP 61/11.

- The judgment of the Supreme Court of 21 October 2011 case file IV CSK 133/11.

- The judgment of the Supreme Court of 17 October 2011 case file III CSK 30/11.

- The judgment of the Constitutional Tribunal of the Republic of Poland of 11 October 2011 case file P 18/09.

- The judgment of the Supreme Court of 15 June 2011 case file V CSK 373/10.

- The judgment of the Supreme Administrative Court of 21 July 2011 case file I OSK 678/11.

- The judgment of the Supreme Court of 25 May 2011 case file II CSK 527/10.

- The judgment of the Voivodeship Administrative Court in Gdańsk of 26 January 2011 case file II SA/Gd 529/10.

- The judgment of the Supreme Court of 26 January 2011 case file IV CSK 274/10.

- The order of the Supreme Administrative Court of 21 December 2010 case file I OSK 1975/10.

- The judgment of the Voivodeship Administrative Court in Łódź of 20 December 2010 case file II SAB/Łd 53/10.

- The judgment of the District Court in Warsaw of 14 September 2010 case file I C 626/06. Not final yet.

- The judgment of the Supreme Court of 13 July 2010 case file III CZP 1/10.

- The judgment of the Supreme Court of 22 June 2010 case file IV CSK 359/09.

- The judgment of the Appellate Court in Lublin case file I ACa 206/10.

- The judgment of the Polish Supreme Court of 16 November 2009, case file I CSK 160/09.

- The decision of the Constitutional Tribunal of 21 October 2009, case file P 31/07.

- The judgment of the Supreme Court of 27 February 2009, case file V CSK 337/08.

- The judgment of the Supreme Court of 19 June 2008, case file V CSK 22/08.

- The judgment of District Court in Tarnów of 20 December 2007 in re: Bochnia Independence Half-Marathon, case file I C 238/06.

- The judgment of the Supreme Court of 6 December 2007 case file III CZP 107/07.

- The judgment of the Appellate Court in Warsaw of 17 October 2007 case file VI ACa 1259/06.

- The judgment of the Appellate Court in Warsaw of 29 June 2007 case file VI ACa 210/07.

- The judgment of the Supreme Court of 3 January 2007 case file IV CSK 303/06.

- The judgment of the Appellate Court in Warsaw of 14 March 2006 case file VI ACa 1012/05, published in the Jurisprudence of Appellate Courts (in Polish: Orzecznictwo Sądów Apelacyjnych) of 2007, No 12, item 36, p. 56.

- The judgment of the Supreme Court of 25 January 2006 case file I CK 281/05, published in the Supreme Court’s Bulletin of 2006, No 5, the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2006, No 11, item 186, p. 64, the “Wokanda” magazine of 2006, No 7-8, p. 17.

- The judgment of the Supreme Court – Civil Chamber of 13 January 2006 case file III CSK 40/05, published in the Supreme Court’s Bulletin of 2006, No 3, the “Wokanda” magazine of 2006, No 6, p. 6, the Review of Economic Legislation (in Polish: Przegląd Ustawodawstwa Gospodarczego) of 2006, No 7, p. 32.

- The judgment of the Supreme Administrative Court of 13 October 2005, case file FSK 2253/04.

- The judgment of the Polish Supreme Court of 23 November 2004, case file I CK 232/04.

- The judgment of the Supreme Court of 3 December 2003 case file I CK 312/02.

- The judgment of the Supreme Court of 7 November 2003 case file V CK 391/02, published in OSN 2004, No 12, item 203.

- The resolution of the Supreme Court – Criminal Chamber of 21 October 2003 case file I KZP 18/03.

- The judgment of the Supreme Court – Civil Chamber of 15 November 2002 case file II CKN 1289/00, published in the Supreme Court’s Bulletin of 2003, No 6, p. 7, the Jurisprudence of the Supreme Court, the Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2004, No 3, item 44, p. 66.

- The judgment of the Supreme Court – Civil Chamber of 26 September 2001 case file IV CKN 458/00, published in the electronic database Legalis.

- The judgment of the Supreme Administrative Court of 30 June 1999 case file I SA/Lu 408/98, unpublished.

- The judgment of the Supreme Court of 26 June 1998 case file I PKN 196/98, published in the Jurisprudence of the Supreme Court, the Chamber of Administrative, Labour and Social Insurance (in Polish: Orzecznictwo Sądu Najwyższego Izba Administracyjna, Pracy i Ubezpieczeń Społecznych) of 1999, No 14, item 454.

- The judgment of the Appellate Court in Warsaw of 2 October 1996 case file I ACa 2/96.

- The judgment of the Appellate Court in Warsaw of 12 December 1995 case file I ACr 590/95, published in OSA 1997, No 3, item 16, at page 32.

- The judgment of the Appellate Court in Warsaw of 5 July 1995 case file I ACr 453/95, unpublished.

- The judgment of the Supreme Court of 10 February 1970 case file I CR 666/69, published in OSP 1972, No. 2, item 30.

- The judgment of the Supreme Court of 8 November 1932 case file II. 1K. 1092/32, published in Zb. Orz. 1933/I item 7.

See also “Polish regulations on copyright“.

Copyright law, case V CSK 22/08

November 16th, 2009, Tomasz Rychlicki

The Society of Authors and Publishers Polish Book from Kraków (in Polish: Stowarzyszenie Autorów i Wydawców Polska Książka w Krakowie) is one of the Polish collecting societies. The Society sued Euroimpex company which is a distributor of reprographic equipment, mainly photocopiers and scanners. The suit was based on Article 20(1)(ii) of of 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, with subsequent amendments.

1. The producers and importers of tape recorders, video recorders and other similar apparatus, or blank material for the recording of works with the aid of such apparatus for personal and private use, and also of reprographic apparatus shall be obliged to pay, for the benefit of the creators and performers of the said works and of the producers of phonograms and videograms, fees in an amount not exceeding 3% of the selling price of the said apparatus and material.
ii. The amount of the fees referred to in paragraph 1 shall accrue:
(1) to the creators for 50%,
(2) to the performers for 25%,

The District Court in Kraków ordered Euroimpex to pay the reprographic fee in the amount of 124,678 PLN. Euroimpex filed an appeal in which it argued that the provisions of ARNR are unconstitutional. However, the Appellate Court in Kraków shared the opinion issued by the District Court and ruled that there is a lack of grounds to question the compliance of article 20(1)(ii) and article 105(2) of the ARNR with the constitutional norms.

Article 105
1. The collective administration organization shall be presumed qualified to carry out the administration and protection of rights in the areas of exploitation in which its administration is conducted, and to engage in judicial proceedings associated therewith. This presumption may not be invoked where two or more collective administration organizations claim competence in respect of one and the same work or performance.
2. In the course of its activity the collective administration organization may demand that information be communicated to it and that documents that are essential for the calculation of the amount of remuneration and fees that it claims be delivered to it.

A similar view was also expressed in relation to provisions of the Regulation of the Minister of Culture of 2 June 2003 on designation of categories of devices and media used for recording of productions and payments levied on sales of these devices and carriers carried out by producers and importers, Journal of Laws (Dziennik Ustaw) No. 105, item 991. Euroimpex filed a cassation complaint.

The Supreme Court in a judgment of 19 June 2008, case file V CSK 22/08, ruled that according to the settled case law, any court, in principle, has the same power to assess whether the provisions of regulation that may be applicable in a given case are not inconsistent with the Constitution. Additionally, the SC ruled that the provisions related to the remuneration fees are justified and their introduction was an expression of global trends in intellectual property law that was also made in order to compensate authors and publishers for what they lose by copying or reproduction of works made by third persons for the personal use. These are the civil law claims, which the collecting societies have the right to collect and which they are allowed to claim before the court. As these fees are divided, is no longer a matter to be decided by the Court, but it is the inner matter of organization and artists who are members of this organization.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Copyright law, case P 31/07

October 28th, 2009, Tomasz Rychlicki

A person acting without the authorization of the rightholder, sold in order to gain material benefits, a copy of a design of single-family house XENIA. The design was owned by the Project Studio Archipelag. The District Prosecutor’s Office qualified his actions as a criminal offense under article 117(1) and article 115(3) of 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, with subsequent amendments.

Art. 115. 1. Any person who usurps the authorship or misleads as to the authorship of all or part of the work or performance of another shall be liable to a term of imprisonment of up to 3 years, restriction of freedom or a fine.
2. Any person who, without mentioning the creator’s name or pseudonym, discloses the work of another either in its original or in a derived form, or a performance, or who publicly distorts a work, a performance, a phonogram or videogram or a broadcast, shall be liable to the same penalty.
3. Any person who, with a view to making a material profit in a manner other than that specified in paragraph 1 or 2, infringes the rights of the author or neighboring rights within the meaning of Articles 16, 17, 18, 19 paragraph 1, art. 191, 86, 94 paragraph 4 or article 97 or without performing his duties as mentioned in article 193 paragraph 2, 20 paragraphs 1-4, 40 paragraph 1 or paragraph 2, shall be liable to a term of imprisonment of up to one year, restriction of freedom or a fine.
(…)
Art. 117. 1. Any person who, without authorization or without respecting the conditions imposed, fixes or reproduces another’s work in its original version or in a derived form, or a performance, a phonogram or videogram or a broadcast, at the same time authorizing the disclosure thereof, shall be liable to a term of imprisonment of up to two years, restriction of freedom or a fine.
2. If the perpetrator of the infringement defined in paragraph 1 has made the infringement into a permanent source of income, or if he organizes or directs the offending activity referred to in paragraph 1, he shall be liable to a term of imprisonment of up to three years.

The Regional Court in Warsaw filed a question of law to the Constitutional Tribunal. The Court asked whether article 115(3) of the ARNR satisfy the requirement of preciseness, because it does not precisely define what behaviors are penalized by this provision. The court noted that the construction of the aforementioned provision is deemed by the Polish doctrine of law as defective, because the phrase “in a manner other than (…), infringes the rights” is devoid of characteristic of criminal offenses, which in turn makes it impossible to identify what behaviors shall be punished. This is contrary to a fundamental principle of criminal law – nullum crimen sine lege, which is also included in the article 42(1) of the Constitution. The definition of a crime shall be strictly construed and shall not be extended by analogy.

Article 42
1. Only a person who has committed an act prohibited by a statute in force at the moment of commission thereof, and which is subject to a penalty, shall be held criminally responsible. This principle shall not prevent punishment of any act which, at the moment of its commission, constituted an offence within the meaning of international law
2. Anyone against whom criminal proceedings have been brought shall have the right to defence at all stages of such proceedings. He may, in particular, choose counsel or avail himself – in accordance with principles specified by statute – of counsel appointed by the court.
3. Everyone shall be presumed innocent of a charge until his guilt is determined by the final judgment of a court.

The Court also pointed out that the scope of criminal penalties set by provision of article 115(3) of the ARNR are in fact too broad and unduly limits the rights and freedoms. Furthermore, this provision is particularly generous to authors, performers, producers of phonograms and videograms and broadcasting organizations. Namely, any breach of their rights, creates criminal liability.

The Constitutional Tribunal in a decision of 21 October 2009, case file P 31/07, discontinued the proceedings because of the inadmissibility to issue a judgment. The decisions was based on the fact that the request contained defects in the form.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

Unfair competition, case III CZP 58/09

October 19th, 2009, Tomasz Rychlicki

The court of first instance held that the basic relationship linking the parties was the agreement of sale of goods defined as to its kind/sort, and therefore, the ownership of the goods sold by the plaintiff to the defendant passed in the moment of their release. Therefore, the fees for marketing services and logistics were taken for actions which the defendant has taken in relation to his goods. The Court also ruled the breach of article 15(1) point 4 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 15
1. An act of unfair competition is the introduction of difficulties for other entrepreneurs to access the market through:
1) the sale of goods or services below their purchase cost in order to eliminate other entrepreneurs,
2) the enticement of third parties to refuse to sell to other entrepreneurs or to purchase goods or services from other entrepreneurs,
3) materially justified differences in the treatment of some customers,
4) collection of charges other than commercial margins for accepting goods for sale,

According to the Court the fees charged to the plaintiff limited its access to the market. If it had not give his consent, the defendant wouldn’t establish a cooperation. The Court did not found any evidence to charge fees for marketing services and for the common commercial policy.

The defendant appealed and the court of second instance having some doubts decided to request the Supreme Court to answer the question whether article 18(1) point 5 of the CUC creates an independent basis to the claim by the buyer for an improperly obtained benefits.

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,

The Supreme Court in a resolution of 19 August 2009, case file III CZP 58/09, held that pursuant to article 18(1) point 5 of the CUC, the party may – regardless of other claims arising from the contract – to recover improperly obtained benefits from the collection of non-commercial premium charges for the acceptance of goods for sale.

Patent law, case VI SA/Wa 2566/08

October 13th, 2009, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 10 June 2009 case file VI SA/Wa 2566/08 held that it is up to the Polish Patent Office (PPO) to reconsider the matter in its entirety and refer to the statements and allegations contained in the request for the reconsideration of the case, taking into account the above guidance and administrative procedures by which the PPO is bound.

Looks like no big deal, right? But if you could read the whole judgment, which unfortunately is not available in English, you would understand that the Polish Patent Office will have to issue an opinion, and will have to justify and explain it appropriately, on the subject what is an invention and what is a computer program and why the PPO does not grant patents to so-called “digital” solutions.

In this context, I look forward to the EPO decision in G 3/08 case and to the SCOTUS’ judgment In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008).

Trade mark law, case VI SA/Wa 2376/08

August 28th, 2009, Tomasz Rychlicki

On 21 February 2004, Wolny Związek Zawodowy Kierowców Rzeczpospolitej Polskiej (Free Trade Union of Drivers of the Republic of Poland) from Warszawa applied to register the word-figurative trade mark WOLNY ZWIĄZEK ZAWODOWY KIEROWCÓW in classes 4, 12, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

In a letter dated 30 August 2006, the Polish Patent Office informed the applicant that, under article 131(2)(ii) and article 145 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, it can not be granted the right of protection for the applied sign.

Article 131
2. A right of protection shall not be granted for a sign, if:
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,
(…)
Article 145
1. Subject to paragraph (2), where the Patent Office finds that the statutory requirements for the grant of a right of protection for a trademark have not been satisfied, it shall make a decision on refusal to grant the right.

2. Before the decision referred to in paragraph (1) is made, the Patent Office shall fix a time limit, within which the applicant is invited to react on the collected evidences and documents which imply the existence of grounds that may cause the right of protection to be denied.

The PPO pointed out that the mark contains a white eagle, which is protected based on the provisions of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland (in Polish: ustawa o godle, barwach i hymnie Rzeczypospolitej Polskiej) of 31 January 1980, published in Journal of Laws (Dziennik Ustaw) No. 7, item 18, with later amendments.

In response to the objections raised by the Polish Patent Office, the applicant in a letter dated 11 September 2006, disagreed with the PPO’s assessment and claimed that the drawing of a bird included in the trade mark recalls an eagle, but it is a completely different bird to that depicted in the emblem of the Republic of Poland. WZZK pointed out the different colour of a bird, the colouring of his crown and claws, and the differences in the background. WZZK also noted that the mark includes the inscription “Wolny Związek Zawodowy Kierowców” (Free Trade Union of Drivers).

The Polish Patent Office in its decision of 22 June 2007 refused to grant a right of protection for the applied trademark. In a letter dated 23 July 2007 WZZK requested a retrial, calling for the reversal of the contested decision. In its decision of 19 September 2008, case file DT265/07, the Polish Patent Office upheld the contested decision of 22 June 2007. The PPO pointed out, that the provisions of article 131(2)(ii) of the IPL meet a double function. It is one of the provisions to guarantee the state, its bodies and institutions a monopoly on the use of state symbols. These symbols have a specific role in business transactions and are intended solely for the identification of specific nationals’ bodies or institutions, or documents derived or issued by them. Moreover, this provision assures the average consumer that the national symbols are used by the authorized institutions of the Polish state. The PPO also cited article 16(2) of the Act on Coat of Arms, Colours and Anthem of the Republic of Poland, according to which, it is permitted to place on goods intended for trading the emblem of the Republic of Poland or the colours in a stylized or artistically prepared form, but the PPO also said that these provision only authorize for the placement and they do not allow to grant the right of protection. WZZK filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw.

The Voivodeship Administrative Court in its a judgment of 6 March 2009 case file VI SA/Wa 2376/08 dismissed the complaint and ruled that pursuant to article 28 of the Constitution of the Republic of Poland, the emblem, colours and the national anthem of the Republic of Polish are protected by law and details regarding these symbols are provided in the Act on Coat of Arms, Colours and Anthem of the Republic of Poland. Article 1(1)(2) and (3) of this Act provides that the white eagle, white-red color and “Mazurek Dąbrowskiego” are the symbols of the Republic of Poland. The right and the duty of every citizen of the Republic of Poland and all state organs, institutions and organizations is to respect these symbols. These symbols remain under special protection provided in different regulations. The provision included in article 131(2)(ii) of the IPL excludes the possibility to grant the right of protection for the sign, not only when it contains an exact reproduction of the image of an eagle as provided in the Annex 1 to the Act on Coat of Arms, Colours and Anthem of the Republic of Poland but also when a sign contains a drawing of an eagle as described in article 2(1) of the Act.

The coat of arms of the Republic of Poland is the image of a white eagle with a gold crown on his head turned right, with unfolded wings and gold beak and claws, on a red field.

This provision allows for the registration of a trade mark which contains, among others the emblem, only in one case – the applicant has to prove to have the right to use such trade mark in trade. It was undisputed for the Court that the applicant had no such right. And for all readers interested in these issues I would like to recommend reading Grzegorz Pacek’s article entitled Marks as imitations of State emblems ‘from a heraldic point of view’ that was recently published in the Journal of Intellectual Property Law & Practice, Volume 4, Number 9, September 2009.

The rest of the story is described in the post entitled “Trade mark law, case II GSK 555/09“.

Trade mark law, case II GSK 950/08

August 12th, 2009, Tomasz Rychlicki

On 2 September 1998, the Polish Patent Office has granted the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the Polish company “SCOTCH & SODA” POLSKA Jadwiga i Piotr Szlegiel Spólka Jawna from Gorzów Wielkopolski for goods in class 25. On 2005, Scotch & Soda B.V. from Netherlands filed a request for invalidation of the right of protection for SCOTCH & SODA R-100588 trade mark based on article 8(i) and 8(ii) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No. 5, item 15, with later amendments:

A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence;
ii) it infringes the personal or economic rights of third parties

The request was also based on provisions of article 6septies of the Paris Convention for the Protection of Industrial Property. The S&S company argued that for over twenty years it exports clothing goods marked with the Scotch & Soda trade mark to many countries in the world through local distributors. One of them was a Polish businessman, who in 1994 became the sole importer and distributor of Scotch & Soda products in Poland. According to S&S his Polish partner has abused its trust by obtaining the trade mark protection for Scotch & Soda trade mark for himself and in this way blocking access to the Polish market for S&S. In 2002, the S&S company has signed with Piotr Szlegiel a document called “cession of rights from the registration of the mark.” However, at the date of the signature of this document, the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 already belonged to “SCOTCH & SODA” POLSKA. In addition the S&S company received a financial request from the Polish entrepreneur.

“SCOTCH & SODA” POLSKA claimed that it was an equal partner, rather than the official importer and sole distributor of the S&S company’s goods and it was not bound by the agency or representative contracts. The legal predecessor of “SCOTCH & SODA” POLSKA had full autonomy inter alia, he was allowed to apply for the registration of the disputed mark on the territory of the Republic of Polish. This fact was known to S&S. Polish company has claimed that S&S failed to obtain the trade mark protection for SCOTCH & SODA sign based on the international registration under the Madrid Agreement and it did not take any action to change this situation. After the completion of courts’ proceedings the S&S company has offered “SCOTCH & SODA” POLSKA a royalty-free (free of charge) license to use the disputed trade mark for shoes throughout Europe in return for the transfer of the right of protection. These negotiations have not yielded results.

“SCOTCH & SODA” POLSKA was astonished by the fact that the S&S company “challenged” the right of protection for word-figurative trade mark SCOTCH & SODA R-100588 for the first time after it has received a cease and desist letter (a request for voluntary fulfilment of plaintiff’s demand is a prerequsite to file a complaint in a civil suit against trade mark infringer) on October 2003.

“SCOTCH & SODA” POLSKA requested the Polish Patent Office to dismiss a request for invalidation of the right of protection for SCOTCH & SODA R-100588. The Polish company called the circumstances with regard to litigation that ended in a judgment issued by the Regional Court in Zielona Gora (case act signature V GC 522/03). the Regional Court dmissed a suit brought by S&S company based on article 161 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. 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.

2. The right may not be demanded to be revoked or transferred, where the entitled person referred to in paragraph (1) has acquiesced, for a period of five successive years, in the use of the registered trademark while being aware of such use.

However, the PPO did not agree with “SCOTCH & SODA” POLSKA arguments and it has invalidated of the right of protection for SCOTCH & SODA R-100588 trade mark in its decision of 2007. In the PPO’s assessment the legal predecessor of “SCOTCH & SODA” POLSKA has been acting in bad faith while applied for the protection rights to the disputed sign. According to the Polish case-law and doctrinal opinions that were cited by the PPO, the applicant for trade mark registration is acting in bad faith when he/she knows or should know that such action violates third parties’ rights. Acting in bad faith is also one who is relying on a right or legal relationship and knows that this right or a legal relationship does not exist, or he or she does not know, but the lack of knowledge can not be regarded as the justified circumstances. The PPO has also noted that in the legal commentaries on Polish trade mark law two competing views on bad faith are taken into account. First, bad faith occurs when a person who owns a disputed trade mark registration had to know or should know that the legal conditions to acquire this right were not met. In such case, the owner is always acting in bad faith when a mark has been registered contrary to the applicable provisions of the law or expressly recognized principle of social coexistence (see: article 8(i) of the TMA). By contrast, in the case of trade mark registration that was made despite the existence of an earlier priority right, an owner of such righ can be entitled as acting in good faith only if he or she was deceived (and it can be justified) with regard the extent of protection resulting from the trade mark right with an earlier priority. If the registration has been aquired by a person for a purpose other than to use a trade mark (for example, to force financial concessions from other entrepreneurs, to obtain control over imports, to force reaching of a license agreement) in this case, bad faith is understood as a qualified form of a breach of social coexistence rules. Such opinion was issued by R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 224. However, in turn, dr Elzbieta Wojcieszko-Gluszko thinks that there is no reason to modify the general concept of good and bad faith for the needs of the IPL regulations. According to dr Wojcieszko-Gluszko a valuable guidance for the interpretation with regard to bad/good faith may be a reference to the legal definition of a filing made in bad faith that is provided in the Benelux Trademark Law.

The PPO also cited arguments provided in the judgment of the Supreme Administrative Court of 6 August 2002, case file II SA 3879/01 and interpretation included in the judgment of 17 July 2003, case file II SA 1165/02 that was issued on the basis of article 8(i) of the TMA and in which the Court concluded that the issue of an assessment of the contradiction of a trade mark application with rules of social coexistence does not refer to trade mark only and itself, but also takes into account the contradiction with the principles of actions made by an applicant and their intended effect. In courts’ opinion the extending interpretation of the rules of social coexistence is justified if one notices that this general clause/rule has displaced such clauses and rules as the principles of good manners, fair trading and good faith. The PPO has considered as totally unfounded all arguments that the consent for a trade mark registration belonging to a partner was justified due to a lack of prohibition in the relevant articles of association, or in other agreements concluded between the parties. The concept of an agent or a representative in this case should be interpreted according to the Polish law. Selling products on the Polish market by the involved people was in such a role. “SCOTCH & SODA” POLSKA brought a complaint to the Voivodeship Administrative Court in Warsaw, which, in a jugment of 29 May 2008, case file VI Sa/Wa 402/08 dismissed the complaint. “SCOTCH & SODA” POLSKA brought a cassation complaint to the Supreme Administrative Court in Warsaw. The cassation complaint was dismissed in judgment of 2 July 2009, case file II GSK 950/08.

The SAC emphasized the fact that for the assessment of compliance of a registration of a mark with the principles of social coexistence (as referred to in article 8(i) of the TMA) the most authoritative is the moment of filing an application for trade mark registration of in the Patent Office, which in this case took place in March 1995. It could not be left imperceptible by the Courts that even “SCOTCH & SODA” POLSKA claimed that the disputed mark was not its property at the date of filing for registration in the Patent Office (sic!). Moreover, the legal predecessor of “SCOTCH & SODA” POLSKA did not inform S&S about his registration neither got a permission for such action. If it were otherwise, what is clear, the S&S company would not file for the recognition on the territory of the Republic of Poland of the protection for its international trademark.

As a distributor of the goods of an entrepreneur located abroad who was not leading any commercial activities in its own name on the Polish territory, the legal predecessor of “SCOTCH & SODA” POLSKA probably knew, or in any circumstance must have known that the application in its own name for registration of a trademark belonging to a foreign business violates provisions of article 6 septies of the Paris Convention. But not only. “SCOTCH & SODA” POLSKA predecessor’s behavior violated the rules of social coexistence, within the meaning of article 8(1) of the TMA. His actions in fact were directed at the appropriation of trade mark property rights owned by the S&S company, without obtaining any consent, in order to achieve unjustified benefits. Such behavior clearly violates the principles of social coexistence as it was decided by the Polish Patent Office and the Voivodeship Administrative Court in Warsaw.

Press law, case VI Ka 202/09

August 3rd, 2009, Tomasz Rychlicki

This is the continuation of a story described in “Press law, case II K 367/08“. The District Court in Słupsk in its judgment of 18 June 2009 case file VI Ka 202/09 held that gby.pl – a portal website operated by Leszek Szymczak constituted press under the Press law, however, comments posted on this website by the Internauts do not constitute a press material for the content of which the website administrator could be held responsible. The District Court held that the posts are not letters to the editor or are not – as the Prosecutor argued – “quasi-letters” to the editor. The court said that the posting process on an internet forum is made automatically, there is no prior moderation of such messages.

The administrator of a portal website, which allows for posting comments, is the hosting service provider and is subject to regulations included in article 14 of the Polish Act of 18 July 2002 on Providing Services by Electronic Means – PSEM – (in Polish: ustwa o świadczeniu usług droga elektroniczną), Journal of Laws (Dziennik Ustaw) No. 144, item. 1204, as amended.

1. A person who gives access to the contents of a network IT system to a customer, where the customer stores data, is not aware of the illegal features of the data or activity connected with the data and upon receiving an official notification or credible information about the illegal features of the data or activity connected with it, immediately bars access to the data, shall not be responsible for the data.
2. A Service provider who has received the official notification of an illegal character of the stored data that was supplied by the customer, and prevented the access to the data, shall not be liable to the customer for damages resulting from preventing access to such data.
3. A service provider who has received credible information of the illegal character of the stored data supplied by the customer and prevented access to the data, shall not be liable to the customer for the damage resulting from preventing access to such data, if it has immediately notified the customer of the intention to prevent access to data.

The Court ruled that the service provider cannot be held liable for material posted by its users. The court noted that the decision does not mean that no one should be held liable for the posts that contain an offensive material that is a subject to criminal prosecution. The responsibility for this activity should be borne by a direct perpetrator and the prosecution authorities should identify such persons by using the available technical resources (IP addresses). The Prosecution cannot go after the smallest line of resistance and charge the administrators, instead of the actual perpetrators.

See also “Press law, case VI Ka 409/07” and “Internet websites, case I C 1532/09“.

Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.

Z-255004

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

IR-676508

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.

Trade mark law, case II GSK 774/08

July 20th, 2009, Tomasz Rychlicki

In June 2005, Societe Des Produits Nestle S.A asked the Polish Patent Office to make a decision on the lapse of the right of protection for “3in 1″ R-90234 trade mark owned by “MOKATE” sp. z o.o. from Zory. The request was based on article 28(1) of the old Polish Trade Mark Act – TMA – (in Polish: ustawa o znakach towarowych) of 1985, published in Dziennik Ustaw (Journal of Laws) of 1985 No 5, pos. 15, with later amendments.

The right deriving from registration of a trade mark shall expire if the person entitled has not used the mark within a period of three consecutive years in the Republic of Poland.

The request was also based on article 169(1) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo wlasnosci przemyslowej) of 30 June 2000, published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later amendments.

1. The right of protection for a trade mark shall also lapse:
(i) on failure to put to genuine use of the registered trade mark for the goods covered by the registration for a period of five successive years after a decision on the grant of a right of protection has been taken, unless serious reasons of non-use thereof exist,
(…)
2. In the cases referred to in paragraph (1), the Patent Office shall make a decision on the lapse of the right of protection for the trade mark at the request of any party having a legitimate interest therein.

The request was based on non-use of “3 in 1″ trade mark. Mokate filed a motion asking the PPO to reject Nestle’s request. The motion was based on the lack of legitimate interest on Nestle’s side. The PPO agreed with Mokate’s argument. Nestle filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 3 December 2007, act signture VI SA/Wa 1036/07 rejected Nestle’s complaint. The company filed a cassation complaint to the Supreme Administrative Court. The SAC in its judgment of 12 March 2009, act signature II GSK 774/08 held that conditions of legitimate interest are based on two levels — procedural — because it is justifying the initiation of administrative proceedings in a particular matter and “substantive”, as it results from the provisions of the law that apply to certain rights and obligations of a person (legal or natural). Although the substantive law is the source for the legitimate interest but the legal interest as a condition that justfies the initiation of the procedure for declaration on the lapse of the right of protection for the trademark is primarily a category of administrative procedure – one of the principles of this proceedings as to its proper initiation. The cassation complaint was rejected.

The SAC ruled also that it was uncontested that the First Council Directive left Member States free to establish procedural rules. The requirement of legitimate interest included in article 169(2) the IPL only entitles a party to initiate the administrative proceedings on the lapse of the right of protection for a trade mark, but does not guarantee such applicant that the PPO will issue a decision that is favourable to him, because the PPO shall issue a decision on the lapse of the trade mark rights if it finds the fulfilment of the substantial prerequisites to the lapse, and not the infringement of the legitimate interest. Since then the provision of article 169(2) are only applicable only to a right to file a request for a decision on the lapse of the right of protection for a trade mark for the reasons referred to in section 1 of article 169 being the substantial prerequisites, the requirement to demonstrate a legitimate interest can not be understood as an additional substantial prerequisite for deciding on the lapse of trade mark rights. Such assessment is not changed by the fact that, as the court already stated, the legitimate interest is the normative category of the substantive law.

In the Polish administrative law the legitimate interests requirement creates the concept of a proceedings party. This issue has been dealt similarly in the law of industrial property, including a prerequisite to request the Polish Patent Office to take a decision declaring the right of protection for the trade mark.

The legitimate interest prerequisite has two grounds – procedural because it justifies the initiation of the administrative proceedings in a particular case and substantive, because it results from the provisions of substantive law that apply to certain rights and obligations of an entity. Although a source of the legitimate interests lays in the substantive law, the legal interest as a condition requesting the PPO to issue a decision declaring on the lapse of the right of protection for the trade mark lapsed is primarily a category of administrative procedure – one of the principles of this proceeding as to its proper initiation.

The issues on legal interest are both regulated in the procedural law (including the administrative proceedings that apply to trade mark cases) and these are also the normative category of the substantive law. The source of the legal interest is the substantive law. If the source is the substantive law then the Directive should apply. However the SAC consistently refuses to refer this matter to the Court of Justice.

See also “Trade mark law, case II GSK 309/07“.