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Archive for: product packaging

Trade mark law, case VI SA/Wa 334/11

December 13th, 2011, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. This judgment is not final yet. A complaint can be brought to the Supreme Administrative Court.

Trade mark law, case IV CSK 393/10

October 5th, 2011, Tomasz Rychlicki

Hochland Reich Summer & Co. KG owns a three-dimensional trade mark IR-736770 in Poland, and Hochland AG is the owner of the right in registration of an industrial design Rp-5337. The 3D trade mark is not used in the clear registered form, but is marketed as a product package of ALMETTE cheese, with additional verbal and figurative elements. Both Hochland AG and Hochland Reich, Summer & Co. KG, together with Hochland Polska sued the Polish dairy cooperatives in Piątnica, because it has used the packaging for cheese, on which a graphic of a wooden pail that was similar to Hochland’s trade mark and design, was placed.

IR-736770

The District Court in Białystok in its judgment of 13 October 2009 case file VII GC 49/07 dismissed the suit and refused to recognize the trade mark as a renowned one. However, the Court agreed with the opinion issued by the expert witness that a clean pail, without any identifiers, stands out positively in comparison to other packagings, and by its distinctive shape is strongly associated with the Almette brand. The District Court agreed with Piątnica that this trade mark was not used in trade in its registered form, and that Hochland did not prove that the use of cup-like pail brings Piątnica unfair advantage or is detrimental to the distinctive character of Hochland’s trade mark, which is a prerequisite to the protection of reputed/renown trade marks. The Appellate Court in Białystok in its judgment of 26 February 2010 upheld these findings except the costs and the issue of trade mark use. Hochland filed a cassation complaint.

The Supreme Court in its judgdment of 10 February 2011 case IV CSK 393/10 found that the Appellate Court decided that the expert’s opinion had no probative value because of the unrepresentative range of research on which it was based, and as a result, the Court found that Hochland failed to prove that its trade mark is a distinctive sign, with reputation. The Appellate Court spoke on the inadequacies of the expert opinion only in the justification of the judgment, and not during the proceedings, which precluded Hochland from filing proper evidence. The Supreme Court ruled that renowned trade marks enjoy special protection – wider than the other trade marks, i.e., even if there is less similarity between trade marks or the goods. In the case of reputed signs, the risk of confusion or the likelihood of confusion is not required. The association with the earlier renowned sign is a sufficient condition. The Court noted that the Polish Industrial Property Law does not provide any definition of reputable trade mark, but only points to the specific conditions of protection. The Supreme Court emphasized that the definitions provided in the legal commentaries, as well as in the case law of the Court of Justice of the EU and Polish courts, differ in this respect. The Court noted that a reputable trade mark is recognized by a significant part of relevant public. The Polish legal commentators argue that such a sign must be known at least by 25 percent of relevant public, and if the percentage exceeded 50 percent, the reputation is always proved. The Supreme Court also noted that the protection of a reputable trade mark does not require the owner to prove that the use of a similar trade mark has brought its user unfair advantage or was detrimental to the distinctive character or the reputation of the earlier mark. A mere possibility of obtaining unfair advantage by the infringer or the very possibility of harmful effects to the distinctive character or the repute of the earlier trade mark, is a sufficient condition. Therefore, these conditions have normative and hypothetical nature. The Supreme Court held that the Appellate Court erred in the examination of the opinion of another expert witness, who showed that the use of the image of a wooden pail on the packaging of cheese, in the assessment of 69% of consumers may affect their decision on the purchase of goods, and therefore it could potentially influence the purchase of the goods produced by the defendant in its packagings. This circumstance was important for assessing whether the use by the defendant of Hochland’s trade mark could bring Piątnica unfair advantage at the expense of the owner of the trade mark, who first used the sign and incurred substantial costs for its promotions within a few years.

The Appeallate Court in Białystok in its judgment of 7 July 2011 case file I ACa 305/11 was bound by the decision issued by the Supreme Court. The Court pointed out that according to the opinion of Grzegorz Urbanek, who was appointed as an expert witness, the wooden pail is associated to the Almette brand in the perception of most respondents. Both the opinion and attached results showed that even a same wooden pail without and with identifiers has the same effect, i.e. the half of the respondents, because of the packaging, was willing to buy the Almette cheese, and not other cheese of the same type but in the same packagings. Therefore, the Appellate Court prohibited Piątnica to use in the course of trade of a figurative sign representing a wooden pail with a handle, on the packaging of its cheese products. Piatnica still uses the packaging for its cheese, which is similar to a wooden pail. The dairy cooperatives replaced the image from the packaging with the milk-churn with pouring milk.

Trade mark law, case VI SA/Wa 538/11

July 9th, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case Sp. 457/08“. Unilever filed a complaint against the decision of the Polish Patent Office in which the PPO decided on the lapse of the right or protection of 3D trade mark R-134678 because of its non-use in the form in which the trade mark has been registered.

R-134678

The Voivodeship Administrative Court in Warsaw in its judgment of 22 June 2011 case file VI SA/Wa 538/11 overturned the decision of the Polish Patent Office and held it unenforceable. However, the Court did not even consider the arguments submitted by the parties. The decision was overturned because of the procedural issues. One of the members of the Adjudicative Board of the Polish Patent Office who was involved in taking the questioned decision did not sign it and later on she retired, therefore, the PPO was not able to obtain her signature. An administrative decision should include at least the name/designation of authority, the addressee of the decision, the conclusion and a signature of the person entitled to issue an administrative decision. If the document lacks a signature, it is not an administrative decision but a draft of such a decision. See also “Procedural law, case IV SA/Po 304/10“. Unilever’s case returns to the PPO where it will be decided on again.

Trade mark law, case II GSK 206/06

April 25th, 2011, Tomasz Rychlicki

On 16 July 1996, the Polish Patent Office refused to grant the right of protection for the figurative trade mark DVORAK IR-639197. On 27 August 2003, the PPO upheld its decision and ruled that the sign in question is similar to two figurative trade marks R-79913 and R-80064 that were registered with an earlier priority for POLMOS S.A., and it violates the rights of third party, by using elements that are incorporated in earlier registered industrial designs Rp-1 and Rp-2 that are also owned by POLMOS.

IR-0639197

The Supreme Administrative Court in its judgment of 18 January 2007 case file II GSK 206/06 held that the registration of a trade mark whose description largely overlaps with the description of the industrial design that was previously registered to another company, without its permission, is a violation of the rights from the registration of industrial designs and meet the grounds for refusal of registration of the mark because it infringes the personal or economic rights of third parties. See also “Polish regulations on industrial designs” and “Polish case law on industrial designs“.

Trade mark law, case Sp. 457/08

February 21st, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the registration of the industrial design “bottle with cap” Rp-2543 owned by Zakład Produkcj Opakowań Rosiński i S-ka sp.j. The request for invalidation was filed by Unilever, which claimed that the design infringes on its 3D trade mark R-134678. This 3D trade mark has the form of a bottle for liquids and it was registered on 20 March 2002 (with a priority of 29 January 1999) for goods in Classes 03 and 05 such as detergents, preparations and substances all for laundry use, fabric conditioning preparations, bleaching preparations, cleaning, polishing, scouring and abrasive preparations, soaps, deodorants for personal use, hand washes disinfectants, sanitary preparations, preparations for destroying vermin, insects and noxious animals, fungicides, germicides, bactericides, parasiticides, algicides, insecticides, weedkillers, deodorants, other than for personal use, air freshening preparations, insect repellents. The decision of the PPO was uphold by the Voivodeship Administrative Court. Rosiński filed a cassation complaint and the Supreme Administrative Court agreed with the Polish company and returned this case for reconsideration. The PPO will again decide on the invalidation of the industrial design in question.

Rp-2543

Meanwhile, during the battle over the industrial design, Rosiński requested the Polish Patent Office to decide on the lapse of the right of protection to 3D trade mark R-134678.

Rosinski claimed that the 3D mark in question must be treated, as the so-called weak sign. A bottle as such, is not, remarkably original shape significantly different from other packaging that are available on the Polish market for liquid toilet cleaners. Rosinski emphasized that the registered form of a trade mark significantly differs from the form that is actually used. Only the label, take than 50% of the bottle, and it is insignificant part of a packaging, that attracts attention of the buyer. Rosinski also noted that Unilever cannot argue and prove that the use of the mark in the form without additional elements is genuine use if the actually used a form of a registered trade mark (with labels) was subject to a separate registration (word-figurative trade mark Domestos SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS R-155952). Rosiński added that while the request does not seek to challenge the general idea of registrability of 3 dimensional trade marks such as the shapes of packages. However, such registration has its consequences. While, Unilever was allowed to register its bottle, and as a rule all the other manufacturers are allowed to do, these are weak signs, because such registration does not break the idea of a bottle for fluids.

R-134678

Unilever argued that Rosiński has no legal interest (locus standi) in requesting the lapse and presented a series of evidence on the genuine use of its 3D trade mark. The evidence included market research of 2009 on the knowledge of the DOMESTOS bottle shape amongst consumers, annual (1999-2000) spendings on television advertising of Domestos, black and white and color prints of television commercials, CD with TV ads recorded on it, color printings of press advertisements, series of judgments issued by French and German courts that were consistent with Unilever’s arguments.

R-155952

The Adjudicative Board of the PPO composed of five members (usually the board decides a case in a panel composed of the chairman and two members of a board, but five members’ board may be appointed for hearing complicated cases) in its decision of 20 December 2010 case file Sp. 457/08 ruled on the lapse of the right or protection because of non-use in the form in which the trade mark has been registered. The PPO agreed that Rosiński presented clear evidences on locus standi. All legal actions initiated by Unilever were directed against Rosiński’s freedom of business activity and this justified the request to the PPO to decide on the lapse. The PPO held that all submitted materials do not themselves constitute evidence of the genuine use of a bottle with a red cap without a label. Unilever did not show the place and time, extent and nature of use of its trade mark based on specific and objective evidence. The PPO noted that Unilever is the holder of other trade marks that have the same shape, especially word-figurative trade mark R-155952 and R-107207, IR-787372 and IR-798868 and according to the case-law, if there is a registered form of the trade mark with a label and it is genuinely used, then one cannot argue about the genuine use of another registered trade mark that lacks these additional elements. The PPO also ruled that evidence in the form of private public opinion research was dated on 2005 and did not constitute direct evidence of the genuine use of a green bottle with red cap but rather it tried to prove the renown of another trade mark with a label. Also, according to the case-law of the Polish Supreme Administrative Court, the reputation of a trade mark does not preclude the issuance of a decision on the lapse of this trade mark. The PPO ruled that frames from the TV ads and print ads were poor quality and were not in any way dated, It was also not proven whether the TV ads were aired in Poland. There has not also been proved that these ads were even broadcasted. As regards the print ads there were not provided titles of newspapers that the ads appeared nor numbers or dates of editions, and often other bottles of Domestos product appeared in these materials. Judgments of foreign courts that were submitted in this case are not very important considering that the law under which they were issued is not valid and binging in the Republic of Poland and each case before the PPO is examined individually based on specific facts of the particular situation. Also it was difficult for the PPO to consider these decisions to be persuasive, becasue the 3D sign must retain its individual character and it needs to designate the origin of goods and in this case Unilever had other trade marks of the same shape.

Therefore, in the opinion of the Polish Patent Office, Unilever has not produced evidence of the genuine use of the 3D trade mark R-134678 on the Polish territory during an uninterrupted period of five years after the date of the decision to grant a right of protection. This decision is not final yet. A complaint may be filed to the administrative court. HT goes to Grzegorz Pacek.

Trade mark law, case VI SA/Wa 1099/10

October 20th, 2010, Tomasz Rychlicki

The Polish company Polski Koncern Naftowy ORLEN S.A. applied for the right of protection for word-figurative trade mark “BIG energy drink” Z-336460 for goods in Classes 06, 16, 32, 35, 43.

Z-336460

The Polish Patent Office issued a decision refusing to grant the protection in part of goods in Class 32 such as energy drinks, juices and juice drinks, carbonated and non-carbonated mineral water, drinks other than alcohol, syrups, concentrates for the preparation of drinks, sports drinks, nectars, beer and in part of services in Class 35 such as retail and wholesale sale services of energy drinks, juices and juice drinks, mineral water, alcoholic drinks, syrups, concentrates in the preparation of drinks, sports drinks. The PPO found also a conflicting CTM “BIG ENERGY” No. 002135812 registered for goods such as non-alcoholic beverages, fruit drinks, fruit juices and fruit nectars, bases and essences (included in class 32) for making the aforesaid beverages. ORLEN filed a complaint against this decision claiming that the refusal was based solely on the likelihood and hypothetical clues, not actual evidence of a convergence of signs and the resulting collision. There was also no presence of the product bearing the opposed trade mark on the Polish territory.

CTM-002135812

The Voivodeship Administrative Court in Warsaw in its judgment of 30 August 2010 case file VI SA/Wa 1099/10 annulled the contested decision. The VAC ruled the relationship between the petrol stations retail networks and certain “additional products”, bearing their trademark, is becoming ever closer. In such situation it significantly reduces the risk of confusion – the risk of misleading the public, which includes in particular the risk of associating the trademark with an erlier trade mark. The consumer begins to associate certain product (e.g., energy drink), not only with a specific sign, but also with a specific network of petrol stations, in which the drink will be available. The judgment is not final.

Trade mark law, case II GSK 691/09

October 5th, 2010, Tomasz Rychlicki

On 14 October 2002, the Polish company BWS Polska Sp. z o.o. based in Zaczernie applied for the right of protection for VARNA Z-256235 trademark for goods in Class 33 such as wines. The Polish Patent Office informed the applicant that it cannot be granted a right of protection because VARNA is also a geographical name of the Bulgarian city of Varna, which is located in the eastern Black Sea region famous for producing high quality white wines. Due to the fact that the seat of the applicant is located on Polish territory, the sign may lead the potential buyers to confusion as to the origin of goods. In response, BWS noted that the sign does not contain any false information, while simultaneously indicating that it is an importer and distributor of wines from south-eastern Europe, including Bulgaria.

The PPO received also comments issued by BSG Poland Sp. z o. o. in which the company raised objection of lack of statutory requirements for the protection of the questioned trade mark. Comments were sent to BWS but the company has not agreed to these statements.

The Polish Patent Office refused to grant a right of protection. The PPO ruled that VARNA sign is information on the place of the origin of wine – the site of a wine-growing and processing, without informing the consumer about anything else. According to the PPO, the importer has the right to register its trade mark, but the choice that violates the rights of manufacturers who conduct business in the region of Varna – infringes on the principles of merchant’s honesty. A situation in which the Bulgarian wine producers could not provide the Polish consumer that the wine has been produced by them is not fair, because they were outrun by an entity whose relationship with Bulgaria is at least questionable.

BWS requested the retrial of its case. The company reduced the original list of goods to wines from Bulgaria. It argued also that, under a contract with the Bulgarian multi-vendor, which is located in Varna, it has exclusive rights to sell original bottled VARNA wine. BWS indicated that the packaging of imported wine, includes bottle shape and color and shape, color, composition and location of the graphic label and it is its own creation. The company pointed out that the Trade Mark Register includs other signs being the name of national and international cities, towns, and in its opinion, the registration of VARNA trade mark will not be the monopolization of the word, because the Varna city remains a geographical name, the name of the appellation of origin or possibly the name of the seat of the suppliers of wine.

After reconsidering the matter, the Polish Patent Office upheld the contested decision. The PPO withdrew from contesting the trade as contrary to good merchant’s practice and public policy, pointing out also that the limited list of goods also been removed as an obstacle to the misleading nature of the sign. However, the PPO ruled that VARNA is the word trade mark, with no graphics, and indicates the origin of goods, therefore, it cannot be registered. The average consumer will read the sign as the Bulgarian city or geographic region on the Black Sea, famous for making wines. BWS filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 18 March 2009 case file VI SA/Wa 2098/08 held that the contested decision is the right. According to the Court the basic prerequisite for the grant of the right of protection is the distinctive character of a sign. The legal doctrine distinguishes between the so-called abstract distinctive ability and the concrete distinctive ability. The mark is characterized by the abstract distinctive ability, where a sign is examined abstractly (in isolation from the specific goods or services) capable of distinguishing the goods of one undertaking from those of another. The mark has concrete distinctive character when it is capable of distinguishing goods or services specified in the application to the Patent Office of goods or services of another company.

BWS filed a cassation complaint. The Supreme Administrative Court in its judgment of 13 July 2010 case file II GSK 691/09 reversed the contested judgment and refered the case back for reconsideration. The SAC held that the VAC overlooked in its deliberations, the fact that the disputed word mark VARNA is not present in the Polish language as the name of the city in Bulgaria. This spelling of the city name does not occur in Bulgarian either (it’s Варна). However, in Polish language the city is known as Warna. Meanwhile the VAC in assessing the facts of the case stated that it was undisputed that the sign is the name of the VARNA city in Bulgaria and that by placing it on the goods (wines originating from Bulgaria) it will indicate the relevant public without difficulty and without no additional actions the origin goods. The Court had the duty to assess the legality of the contested decision of the Polish Patent Office even if the allegation was not raised in the complaint. The law requires that the assessment whether the mark is sufficiently distinctive has to be made individually for each sign. The VAC should also examine the issue whether a questioned sign due to the use of the first letter “V” and not “W” (as is correctly spelled in Polish) has sufficient distinctiveness, although phonetically the “V” and “W” letters sound the same in the Polish language. Of those grounds the SAC held that the VAC has not made an overall assessment of distinctive character of the sign in question, taking into account its visual, aural or conceptual elements, and therefore the VAC infringed on Article 113 §1 and Article 145 §1 point 1 C of the Polish Act on Proceedings before Administrative Courts, since it dismissed the case without adequate explanation of the matter. The SAC noted also that the BWS claimed that, under the earlier decisions of the PPO, it acquired rights of protection for trademarks, even though they were the names of cities (Melnik – a city in Bulgaria), Calama (a city in Chile), or Beverly Hills (a city in California), however, the VAC did not respond to such arguments. In light of the settled case-law of the Supreme Administrative Court, the administration body can change its opinion on the content of the right conclusion, which should be issued in a specific type of cases, but it must carefully justify such a change, especially when changing the view of decisions taken in relation to the same applicant. The case-law of the administration may therefore be subject to change, if the authority demonstrates that there are reasonable grounds.

Trade mark law, case VI SA/Wa 2127/09

September 10th, 2010, Tomasz Rychlicki

The Polish company AFLOFARM Fabryka Leków Sp. z o.o. applied for the word-figurative trade mark “tabletki na uspokojenie Aflofarm” (in English: Aflofarm tablets for calming down) Z-298475 for goods in classes 03, 05 and 44. The Polish Patent Office refused to grant the right of protection in part of the goods in class 5 covering dietetic substances for medical use, food for babies. The PPO held that the right of protection shall not be granted for a sign that misleads the public as to the nature and properties of the good. Such misleading information is a sign that may cause false image of the average buyer as to the nature of the product, its quality or properties. The assesment of content of a signs is made by him or her from the perspective of the average consumer. The interest of the buyers requires the assumption that the sign is misleading, once a small group of consumers may be misled as to the characteristics of the goods or services, since these characteristics may affect the decision taken, in relation to those goods or services. Under such assumption, the assessment cannot be affected by anything outside the relationship sign – the goods with the reasonable buyer’s idea on such relationship. It follows that the sign “tabletki na uspokojenie Aflofarm” on the goods listed in class 5 should be considered as misleading the buyers as to the nature, purpose, or functional characteristics of these goods.

Z-298475

AFLOFARM argued, that it’s not true that the buyer/consumer “is left alone” with a sign and a product bearing the questioned trade mark. These products are only available in pharmacies and are issued only by a professional that is a pharmacist. Thus it excludes the confusion of the average consumer as to whether he or she has bought the wrong product.

The Voivodeship Administrative Court in Warsaw in its judgment of 18 March 2010 case file VI SA/Wa 2127/09 agreed with AFLOFARM’s arguments and reversed the contested decision. The Court also noticed that “tabletki na uspokojenie Aflofarm” trade mark was applied for dietary agents/means for medical use, rather than dietary substances for medical purposes. For this reason, the Court held that the goods that are marked with a “tabletki na uspokojenie Aflofarm” trade mark will not cause consumers’ confusion since products of such indications or effectiveness can be classified differently, depending on their registration or application.

Trade mark law, case V CSK 293/09

September 2nd, 2010, Tomasz Rychlicki

Polish company Technopol sp. z o.o. succeeded to register in the Polish Patent Office over a hundred word and word-figurative trade marks in the form of Arabic numeral “100″ and its multiples (200, 300, etc.) together with the word “Panoramicznych” or “Panoram”. Technopol was sued by another Polish entrepreneur, Roman Oraczewski who publishes crossword magazines under such titles as “222 Panoramiczne”, “333 Panoramiczne”, “500 Krzyżówek”, “300 Krzyżówek z Uśmiechem”, “300 Krzyżówek Panorama Rozrywki”. Mr Oraczewski claimed protection to its press titles and Technopol filed counter claims based on Article 10 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 10.1. Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
2. Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.

Technopol requested the court to issue preliminary injuction ordering Mr Oraczewski to cease the sale and introduction to the market of all his magazines bearing titles that are identical or similar to Technopol’s trade marks. The Court granted the injunctive relief. Mr. Oraczewski did not agree with such order and after couple of years this case ended in a final dismissal of the application for preliminary injunction. Mr. Oraczewski sued Technopol for the compensation for the loss incurred due to the enforcement of the injunction. He claimed over 67.000.000 PLN loss. According to Article 746 §1 of the Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, when a preliminary injunction has been granted and the plaintiff fails to file the principal claim, withdraws it, the claim fails for procedural reasons, or is dismissed as unfounded, the defendant may demand compensation for the loss incurred due to the enforcement of the injunction. The claim expires if it is not pursued within one year from the moment the loss occured. This provision makes a plaintiff who obtained a preliminary injunction but ultimately failed with its principal claim liable towards the defendant for the loss caused by the injunction.

100_panoramicznych-cover

The Supreme Court in its judgment of 25 February 2010 case file V CSK 293/09 held that the liability provided under Article 746 § 1 of the CPC is independent of plaintiff’s fault. However, the Court dismissed Mr Oraczewski complaint because he did not follow the preliminary injunction order.

Trade mark law, case VI SA/Wa 370/10

July 21st, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its order 17 June 2010 case file VI SA/Wa 370/10 held that if the party did not act properly within a given period of time in court proceedings without its fault, the court may decide on the request, on the restoration of a deadline. The request for restoration shall be filed within the Court, in which the act was to be made within seven days from the time as the cause of transgression ceased. The request for restoration of a deadline to file a complaint must be filed through the court or authority. The restoration of a deadline has unique nature and can only occur if the party convincingly proves of the absence of its guilt. The lack of guilt means a situation in which circumstances that were impossible to overcome and that were independent from the party, have occurred , and these were the reasons that the deadline set by the law was exceeded (see the order of the Supreme Administrative Court of 11 April 2008 case file I OZ 246/08).

In assessing the occurrence of this condition, the Court has to adopt an objective “test of care”, which may be required from everyone duly taking care of its interests. The restoration is therefore not admissible if the party is guilty of even slight negligence. If the party is represented by a professional representative, while assessing the guilt of not preserving a deadline, the representative acts should be considered, adopting an objective test of care, which may be required from a professional legal representative duly caring for the interests of its client, with the reservation that negligence of people, whom such representative employs, burden the representative itself, and therefore do not release the party from the guilt in non-reserving a deadline.

This means that the negligence made by administrative staff in activities necessary to preserve the procedural deadline, which was commissioned by a patent attorney who is a representative of a party, does not justify the restoration of a missed deadline.

Terravita Holding Establishment from Vaduz, Lichtenstein was a party who lost this case. See also “Trade mark law, case VI SA/Wa 370/10“.

Readability test of pharmaceutical products’ leaflet

June 2nd, 2010, Tomasz Rychlicki

In the Regulation of the Minster of Health of 26 April 2010 on the leaflet readability test (in Polish: rozporządzenie w sprawie badania czytelności ulotki), Journal of Laws of 18 May 2010, No. 84, item 551, the Polish Minister of Health provided the principles of examination under which the content of the information attached to the pharmaceutical products is understandable.

The readability test of a pharmaceutical product’s leaflet is carried out by the responsible entity (an entrepreneur who applies for or has received the marketing authorization for a medicinal product), or any other person on its behalf, to ensure that a consumer understands the relevant information contained in this leaflet and will be able to correctly apply the medicinal product. The readability test should be conducted with the following minimum requirements:
- a leaflet should be in the version that will be attached to the packaging of a pharmaceutical product, or its color layout design,
- test participants are those who may use the medicinal product, including those who have difficulty understanding written information.

The test is carried out with ten participants. A positive test result means that for each question, 90% of study participants may find the information on a given leaflet, of which 90% may show their understanding and give the correct answer and to proceed with the medicinal product.

Categories: consumer protection law | pharmaceutical law | Polish Act on Pharmaceutical Law | product packaging | regulations.

Product labelling, case VI SA / Wa 478/10

May 29th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 19 May 2010 case file VI SA/Wa 478/10 ruled that the labeling of food products must comply with the rules on food labeling. The full identity of the manufacturer should be placed on the product packaging and a P.O. Box does not identify the manufacturer and cannot be regarded as its address.

Categories: Polish law | product packaging | Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 370/10

May 21st, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its order 14 April 2010 case file VI SA/Wa 370/10 held that the complaint to the Administrative Court must be filed through the authority, whose action or inactivity is the subject of the complaint within thirty days from the date of notification to the applicant of the decision. The principle filing a complaint through a public authority means that in case of complaint filed directly to the administrative court or through a public authority other than the one whose action or inactivity is the subject of the complaint, the court or authority should pass it on to the competent authority of public administration. The date when the complaint was passed on by the court (public body) decide on the preservation of the deadline for bringing an action. If the complaint is brought after the deadline to file it, it shall be rejected. Terravita Holding Establishment from Vaduz, Lichtenstein was a party who lost this case. See also “Trade mark law, case VI SA/Wa 370/10“.

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

August 23rd, 2009, Tomasz Rychlicki

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

Rp-11003

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

R-91920

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

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

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

In the shade of the recent opinion of Advocate General Eleanor Sharpston QC given to the Court of Justice of the European Communities in case C‑529/07, Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, here is the story of couple of judgments decided in the recent suits brought against the Polish company Terravita by the Swiss company Chocoladenfabriken Lindt & Sprüngli, AG from Kilchberg in Switzerland.

Lindt's hare

Lindt & Sprüngli requested the Polish court to prohibit Terravita from offering, marketing or storage chocolate products with a characteristic shape of a seated hare, wrapped in metail foil with clearly marked drawings of nose, bandoline, eyes, ears and tail with bow placed on the neck. Lindt also asked the court to stop the defendant using or affixing “Terravita hare” or its image in advertising and commercial documents, and an order that the defendant withdraw the “Terravita hare” from the market, requiring the defendant to destroy all packagings, packaging designs and dies, molds and other devices intended to produce and direct wrapping the “Terravita hare”.

The District Court in Warsaw, the Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 22 September 2005 dismissed the action. The court held that the conditions set out in article 9(1)(b) of the CTMR were not met. In the court’s opinion “Goldhase”, “Lindt” and “Terravita” signs that appear on the respective products differentiated them significantly and hence there is no risk of consumer’s confusion. The average consumer of chocolate hares does not perceive the origin of the goods only on the basis of the shape of a hare, but also on the basis of other important and distinguishing elements, including the mark placed on the product, the color of the packaging, its price, the trade mark identifying the manufacturer. The average consumer sees the difference in colour of the packaging of chocolate hares, and these were different in this case. Lindt’s packaging of the hare has the color of gold, red and brown, and Terravita’s are in silver. In addition, the District Court indicated that according to article 159a(5) of the CTMR, the defendant has only the right to prohibit the use of a trade mark on the territory of the Republic of Poland.

Terravita's hare

Lindt brought an appeal. The Appellate Court in Warsaw in its judgment of 6 July 2006 case file I ACa 616/07 dismissed the case. The Court held that the shape and the colour did not inform about the origin of the goods. The form of a sitting hare, Easter eggs or bells do not have a distinctive characteristic. The court similarly assessed the coloring of the aluminum foil placed on chocolate hares. The colour of silver and gold are typical for chocolate products. In this case, the only distinctive elements of both products were sings “Goldhase Lindt” and “Terravita” and they were dissimilar. Accordingly there was no risk of consumers confusion as regards the orgin of goods.

Lind brought a cassation complaint to the Supreme Court of the Republic of Poland. The Court, in its judgment of 13 April 2007, case file I CSK 16/07, ordered the Appellate Court to reconsider the case. The Supreme Court has interpreted the EU law, pointing to the need for a comprehensive assessment of similarity of the disputed signs. Only such an assessment would determine whether there is a risk of confusion.

The Court of Appeal, after rehearing the case, changed its judgment in favour of Lindt. The court found that the Golden hare was introduced by Lindt on the Polish market in 1997 (16 pieces), and 240 pieces in 1998. On March 1999, Terravita purchased in Germany the same form as the form used by Lindt and began producing and marketing of chocolate hares. Therefore the disputed hares share the same shape and size. Both are packaged in foil – gold, or silver, both have a ribbon tied to the neck in bow but Terravita’s is printed on the foil and there is no bell. The Court of Appeal stated that the condition for the likelihood of confusion has been met. The court stressed that Lindt’s Gold hare is well known among consumers of chocolate products. Therefore, there was no doubt to believe that Lindt’s hare has a huge recognition among consumers of chocolate products, especially if its presence on the market was established for more than nine years. With regard to the Terravita silver hare the Court of Appeal held that, although the latter figure was produced using the same form as used by the Lindt, and thus both hares are having the same shape and size but additional drawings and elements preclude similarities.

This time, Terravita brought a cassation complaint. The Supreme Court in its judgment of 3 October 2008, case file I CSK 96/08 held that in the circumstances of this case, there is no doubt that disputed hares are not identical and only its shape is the same, since they are manufactured from the same form. However on the foil of both hares, in a prominent place, one may find adequately put signs “Lindt Goldhase” or “Terravita”, which in fact makes the likelihood of consumer confusion practically excluded. The Court cited its earlier case law. The Supreme Court in its judgment of 1 February 2001, case file I CKN 1128/98, published at OSNC 2001, No. 9, item. 136, held that if word-figurative trade marks are used on the market then the word elements of such signs should have been attributed the distinvtice characteristics. The SC in its judgment 8 April 2003, case file IV CKN 22/01, published at OSP 2004, No. 5, item 61, held that in case of word-figurative trade marks the word element has the distinctive characteristics because it determines the ease of assimilation and the perception by the public. The Supreme Court in its judgment of 14 November 2003, case file I CK 176/02 (unpublished) excluded the risk of confusion in a situation where bottles used by the plaintiff and the defendant had the same shape (as in the facts of this case these bottles came from the same form), but were labeled with various word and images elements. In conclusion, the Court held that in the case of two identical products, one of which concerns the Community trade mark, the likelihood of confusion within the meaning of article 9(1)(b) of CTMR does not exist, if the other characteristics of goods, in particular bearing the word or image, allow them to be clearly distinguished.