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Archive for: trade mark infringement

Personal interest, case XXIV C 1035/10

November 14th, 2011, Tomasz Rychlicki

The “Nigdy Więcej” (Never Again) Association and the “Zielone Światło” (Green Light) Foundation organized a social action entitled “Nazism never again on Allegro”. It was a protest against a Polish auction website Allegro.pl which allowed to buy and sell different Nazi gadgets and memorabilia. The Foundation together with a writer, artist and social activist Jerzy Masłowski prepared an illustration with Allegro.pl logotype in which in which two L letters were changed and shaped as the SS symbol. This illustration was used on postcards that were handed out to different people during the street-action that happened near Metro Świętokrzyska in Warsaw on 21 March 2010.

Stop Allegro

On 20 April 2010, the Foundation received a cease and desist letter from QXL Poland – the owner of Allegro. The Company requested the removal from all public places of all publications, photographs, posters and billboards, and other materials that included the altered trade mark. QXL demanded destruction of all the above mentioned materials and asked the Foundation to publish an apology on its website, as well as in the pages of Gazeta Wyborcza newspaper. The Foundation refused to comply.

Z-342240

QXL Poland sued the “Zielone Światło” foundation and Jerzy Masłowski for the infringement of personal rights. During the trial, the Foundation argued that it has conducted correspondence with Allego with regard to products with fascist symbols or products referring to fascist ideology, that were offered at different auctions. However, it has not brought the intended effect, because Allegro.pl did not remove these items from its website. For this reason, the Foundation organized the street action. The Foundation argued that from 8 June 2010, the provisions of Article 256 of the Criminal Code were amended.

Art. 256.
§ 1. Whoever publicly promotes a fascist or other totalitarian system of state or incites hatred based on national, ethnic, race or religious differences or for reason of lack of any religious denomination
shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to 2 years.

§ 22 The same punishment shall be imposed on anyone, who for the purpose of dissemination, produces, records or import, acquire, stores, possess, presents, transports or transfers a print, record or other item of the content specified in § 1 or being a carrier of the fascist, communist or other totalitarian symbolism..

§ 3 A crime is not committed by a perpetrator of a forbidden act specified in § 2, if he or she commits the said act in the course of artistic, educational, collectible or scientific activity.

The Foundation concluded that its action was a response to long-term omission of Allegro. The action was organized to draw the attention of relevant authorities and the public at auctions that poses a danger to others. It sought to protect an important public interest, and therefore was not unlawful. In addition, the Foundation argued that according to the legal doctrine the criticism aimed at improving the reality is not illegal, even if it is excessively expressive in description and in negative assessment, as well as it’s impolite way of expression and presentation of arguments, if it is justified by the importance of issues raised and the literary form that was used. Moreover, the scope of permissible criticism depends on the weight of social affairs, and in case of doubt, freedom of expression takes precedence, and in some cases even offensive criticism is acceptable. If the case requires so, the criticism might be very offensive, and it may even seek to destroy the enemy, for example, in the dispute against pedophilia or against the view that is glorifying Stalin. The Foundation argued also that a request for legal protection raised by Allegro cannot ban the Foundation and other individuals from expressing their critical opinions of the plaintiff’s conduct. Such behavior constitutes an abuse of the subjective right as decided by the Appeallate Court in Lódź in its judgment of 25 May 2006, case file I ACa 15/06, published in electronic database LEX, under the no. 512493.

On 9 November 20011, a lawyer representing the Foundation presented a legal opinion issued by Prof. Wojciech Sadurski. Prof. Sadurski wrote that there was no violation of personal interests. In the opinion of the author, the case brought by QXL Poland illustrates the conflict between two types of claims related to absolute rights protected by the law. The claims relating to freedom of expression, and intellectual property claims relating to the protection of trade marks owned by QXL Poland. Citing the case law of the Polish Constitutional Tribunal, prof. Sadurski argued that freedom of speech is superior to other constitutional rights and freedoms. He noted that limiting the right to freedom of expression by issuing a ban on speech, would violate the essence of the constitutional right to freedom of speech. Prof. Sadurski cited Smith v Wal-Mart Stores, 537 F.Supp.2d 1302 (ND GA 2008), however he pointed out that the Foundation does not conduct any commercial activity, and the risk of consumers’ confusions is clearly excluded. Please bear in mind that such opinions are treated by the Courts as private documents, not as the expert witness evidence/testimony. The case is pending and the next hearing is scheduled on 6 February 2012.

QXL Poland filed also a request for preliminary injunction. The District Court in Warsaw in its order of 20 January 2011 case file XXIV C 1035/10 dismissed it during a closed-door court session (in camera). However, the Appeallate Court in Warsaw in its decision of 5 May 2011 case file I ACz 671/11 decided to secure the claim of QXL. The Court prohibited the Foundation and Jerzy Masłowski from transmitting and disseminating on their websites of any publications or materials containing the questioned trade mark.

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 1901/10

July 15th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark VILLA PARK WESOŁA R-171029 owned by “VILLA PARK WESOŁA” Spółka z o.o. The request was filed by MPM PRODUCT Spółka z o.o. the owner of the word trade mark “villa park” R-139436 that was registered with an earlier priority. MPM filed also a civil suit against “VILLA PARK WESOŁA” Spółka z o.o. claiming the infringement of its trade mark rights. However, the court dismissed the injunction.

R-171029

“VILLA PARK WESOŁA” Spółka z o.o. decided to file a complaint against the decision of the PPO. The Company claimed inter alia that even a civil court shared the company’s argument stating that there is no risk of confusion in a group of relevant recipients of services bearing the trademarks at issue.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 March 2011 case file VI SA/Wa 1901/10 dismissed the complaint and ruled that, undoubtedly, the Polish Patent Office, while considering the specific case at issue, acts under certain laws and regulations. In such situation one must understand that the PPO does not decide on the case based upon the judgments of the courts. This, of course, does not mean that if the specific circumstances of the case allow for taking into account the judgment, the Patent Office may not decide on a case in accordance with a convergent judicial decision issued in a similar case. This judgment is not final yet.

Trade mark law, case IV CSK 231/10

October 27th, 2010, Tomasz Rychlicki

The Supreme Court in its judgment of 21 October 2010 case file IV CSK 231/10 held that the combination of colors may serve as a trademark but the entrepreneur, who is entitled to the right of protection, cannot prohibit the use of one of such colors that is used by another entrepreneur in its trade mark. Judge Wojciech Katner stated that the single color cannot be a trademark.

R-115856

The object of protection is in this case a combinations of colors, as referred to in Article 120(2) of the Polish Industrial Property Law. The trade mark infringement occurs when the proportions and the use of a given color by another entrepreneur will not allow for distinguishing of trade marks. Sending the case back for reconsideration the Court stated that the judgment of the court of the second instance should be clarified so that the dominance of the green color, would not suggest that this was British Petroleum fuel station. The court agreed with the defendant that one cannot monopolize the colors, and only some are valuable on the fuels market. The Court held that although different entrepreneurs use the same color to designate their stations, it will not lead to consumers confusion because of the layout, and even a shade of these color. See also “Trade mark law, case IV CSK 61/09“.

Trade mark law, case II GSK 626/09

September 6th, 2010, Tomasz Rychlicki

The Swiss company Marquard Media, current publisher of the magazine “Przegląd Sportowy”, which since 1974 always includes a supplement entitled “Skarb Kibica” (in English: Fan’s Treasure), succeeded in registering SKARB KIBICA R-134960 at the Polish Patent Office.

In 2004, Profus Management requested the invalidation of the right of protection for the SKARB KIBICA trade mark. Profus claimed that this sign has informational nature rather than distinctive character. It provided an opinion written by professor Urszula Promińska to support its arguments with this regard. In 1992 Profus Management bought the weekly football magazine “Piłka Nożna” with “Skarb Kibica” column. Marquard Media filed a trade mark infringement suit.

In 2006, the PPO has decided on the invalidation of the right of protection. The Voivodeship Administrative Court in Warsaw in its judgment of 2 October 2006 case file VI SA/WA 791/06 reversed this decision, but only because of deficiencies in the proceedings and send it back to the PPO for reconsideration.

When examining the case after the judgment, the PPO in its decision of 25 February 2008 case file Sp. 213/07 dismissed Profus Management request. The PPO held that the mere use of the sign in question by different entities cannot deprive its distinctiveness. When the case went again in 2009 to the VAC, the owner of “Przegląd Sportowy” and “Skarb Kibica” was Axel Springer Poland. The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2009 case file VI SA/Wa 2219/08 dismissed Profus complaint. The Supreme Administrative Court in its judgment of 31 August 2010 case file II GSK 626/09 upheld this decision. The SAC held that the mere use of this sign by different publishers at the date of its registration cannot deprive its distinctiveness. The distinctive character of such a sign is examined, of how it was perceived by readers interested in football and sport activities.

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.

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

July 14th, 2010, Tomasz Rychlicki

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

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

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

Trade mark law, case IX GC 104/06

July 5th, 2010, Tomasz Rychlicki

In 2003, Polish company Zakłady Tytoniowe Lublin started to produce “Full Flavor ZTL Mont Blanc” and “Light ZTL Mont Blanc” cigarettes. Te tanie papierosy miały być konkurencją dla przemycanych z Ukrainy papierosów Monte Carlo. These latter cheap cigarettes were meant to be competition for Monte Carlo cigarettes smuggled from Ukraine.

R-160948

German company Montblanc – Simplo sued Polish company for infringement of Montblanc trade marks’ reputation, unfair competition delict and infringement of personal rights/interest. Montblanc – Simplo demanded the cessation of production of these cigarettes and the publication of a statment on illegal use of the trade mark, in nationwide newspapers.

R-160949

The District Court in Lublin in its judgment case file IX GC 104/06 dismissed these claims. The court held that that the contested name is written on cigarette packs separately (as the name of a mountain peak) and in a figurative aspect it has a different color, font and background. Therefore it cannot mislead consumers, what is more important, these are goods of various kinds. The expert in the field of commodities found that use of the trade mark for cheap cigarettes has no effect on the reputation of Montblanc sign and there is no percolation of the two groups of consumer of both products. Also an expert in the field of social psychology, did not reveal blurring of Montblanc reputation by the use of the geographical name “Mont Blanc” on the cheap cigarettes.

Internet domains, case I ACa 1334/07

June 17th, 2010, Tomasz Rychlicki

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

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

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

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;

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

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

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

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

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

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

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

See also “Polish case law on domain names“.

Trade mark law, case I ACa 16/10

October 8th, 2009, Tomasz Rychlicki

The French company Marin’s International brought a case before the Court for the Community Trade Marks and Community Designs, located in Warsaw (in Polish: Sąd Okręgowy w Warszawie Wydzial XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych). The issue concerned the use of CTMs Marin’s and Lama by the Polish company Display Flash Poland sp. z o.o., within its website in NOSCRIPT tag. The Court in its judgment of 25 September 2009 case file XXII GWzt 8/09, ruled that the use of someone else’s trademark in website’s metatags infringes trade mark rights of such person, and such behaviour may be also deemed as an unfair competition delict.

I know that I should mention the opinion of the Advocate General Poiares Maduro of 22 September 2009 in joined cases C‑236/08, C‑237/08 and C‑238/08, Google France, Google Inc. v. Louis Vuitton Malletier, Google France v. Viaticum, Luteciel and Google France v. CNRRH, Pierre Alexis Thonet, Bruno Raboin, Tiger, a franchisee of Unicis.

(1) The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

(2) Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.

(3) In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94.

(4) The provider of the paid referencing service cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the internal market (‘Directive on electronic commerce’).

This is way more interesting if one realizes that almost month ago Google has announced that it doesn’t use the “keywords” meta tag in web search ranking.

Display Flash Poland filed an appeal complaint. The Appellate Court in Warsaw in its judgment of 14 July 2010 case file I ACa 16/10 dismissed it.

Trade mark law, case I ACa 967/08

July 5th, 2009, Tomasz Rychlicki

The Appellate Court in Poznań in its judgmet of 28 January 2009, case file I ACa 967/08 held that after the introduction of goods bearing a trademark on the market, the right of protection is “exhausted”. This follows directly from the provisions of Article 155(1) 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 subsequent amendments.

Article 155
1. The right of protection for a trademark shall not extend to the acts in respect of the goods bearing that trademark consisting, in particular, of offering the goods or further putting on the market the goods bearing that trademark, where the said goods have earlier been put on the market on the territory of the Republic of Poland by the right holder or with his consent.
2. The right of protection for a trademark shall neither be considered infringed by an act of importation or other acts, referred to in paragraph (1), in respect of the goods bearing the trademark, if these goods have earlier been put on the market on the territory of the European Economic Area by the right holder or with his consent.

3. Paragraphs (1) and (2) shall not apply, where there exist legitimate reasons for the right holder to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

This means that further market participant has the right to use the trade mark for advertising and information purposes, as long as this does not mislead as to the existence of economic links between the trade mark owner and a person who uses such sign. See also “Trade mark law, case III CK 410/03“.

The Court also ruled that the “pauperization” of a word trade mark means its adoption to the colloquial speech, which involves changing its function from being the name the unit of goods to the description of the species or genus and by enlarging its description on items that are in no way connected with the person entitled to a trade mark. This is usually the result of the existence of the brand for a long time in large areas and of its high popularity and intensive advertising. Such a phenomenon does not limit the exclusive rights of a holder of a registered trade mark and per se does not authorize other entities to use a protected trade mark in their business.

Trade mark law, case IV CSK 335/08

June 14th, 2009, Tomasz Rychlicki

The Supreme Court in its judgment of 4 March 2009, case file IV CSK 335/08, published in Jurisdiction of the Supreme Court Civil Chamber (in Polish: Orzecznictwo Sądu Najwyższego Izba Cywilna) of 2009, No. C, item 85, p. 161, ruled that the degree of similarity, which leads to linking (associating) both signs by relevant recipients is sufficient for the assessment of the similarity of the signs as a condition for infringement of a reputed trade mark. However, first, it is necessary to determine whether a trade mark has a status of reputable one, if the claim is based on article 296(2)(iii) 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.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Trade mark law, case V CSK 109/08

April 24th, 2009, Tomasz Rychlicki

VKR Holding A/S from Horsholm sued Polish company OKPOL for trade mark infrigement and the delict of unfair competition. The suit was based on article 296(2)(iii) 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 Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

Infringement of the right of protection for a trade mark consists of unlawful use in the course of trade of:
(iii) a trade mark identical or similar to a renowned trade mark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trade mark.

The suit was also based on Article 3(1) the Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No 47, item 211, with later amendments.

The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.

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

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

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

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

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

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

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

The protection of renowned trade marks is afforded by both acts. As regards “monopolization”, the SC ruled that the Polish company was banned from using a sign that associates to a specific sign used by the VKR Holding A/S. Accordingly no-one was granted a protection right to the principle of creating a trade mark.

Trade mark law, case Sp. 158/08

March 26th, 2009, Tomasz Rychlicki

On 17 October 2006, the Polish Patent Office registered the word-figurative trade mark BATCZEW KOMPERDA R-181286 in Class 29 for goods such as bacon, meat extracts, meat jellies, blood pudding, smoked meat, sausages, canned meat, meat, canned meat, canned meat, salted meat, pork, pie with liver, lard, ham, liver, cured and pork and in Class 40 for services such as the slaughter and food smoking. This sign was applied on on 22 March 2004 by the Polish company “FIRMA BATCZEW Stanislaw Komperda” from Morawczyn.

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The European Commission filed a request to invalidate the registration based on article 131(2)(iii) 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 subsequent amendments.

2. A right of protection shall not be granted for a sign, if:
(iii) it incorporates the abbreviated names or symbols (armorial bearings, flags, emblems) of other countries, international organisations, as well as official signs, hallmarks indicating control and warranty adopted in other countries, if the prohibition of registration follows from international agreements, unless the applicant is able to produce an authorisation issued by a competent authority, which authorises him to use such signs in the course of trade.

The EC alleged that the sign imitated the European Union flag and that the symbolism of its additional elements did not change the overall impression.

Permission to use the European emblem does not confer on those to whom it is granted any right of exclusive use, nor does it allow them to appropriate the emblem or any similar trademark or logo, either by registration or any other means. Each case will be examined individually to ascertain whether it satisfies the criteria set out above. This will be unlikely in a commercial context if the European emblem is used in conjunction with a company’s own logo, name or trade mark.

The Adjudicative Board of the Polish Patent Office in its decision of 6 March 2009 act signature Sp. 158/08 agreed with the EC’s arguments that FIRMA BATCZEW Stanislaw Komperda’s trade mark imitated the flag of the European Union. In PPO’s view the flag of the European Union can not be used in a trade mark, even if it is stylized, and even if the sign has more elements. The PPO cited judgment of the Court of First Instance of 21 April 2004 in case T-127/02, Concept v. OHIM (ECA).

40. State emblems and emblems of international intergovernmental organisations are protected not only against the registration and use of marks which are identical to them or which incorporate them but also against the inclusion in such marks of any imitation of those emblems from a heraldic point of view”.

The PPO’s decision is not yet final. The Polish comapany may file a complaint to the Voivodeship Administrative Court in Warsaw.

Trade mark law, case VI SA/Wa 2113/08

December 23rd, 2008, Tomasz Rychlicki

Skandinaviska Farginstitutet AB the owner of NCS Natural Color System R-129085 trade mark filed opposition against the decision of the Polish Patent Office on the grant of the right of protection for COLOR SYSTEM R-171995 trade mark for AGENCJA PROMOCYJNA “COLOR SYSTEM” Iwona Emilia Hachlica. The PPO dismissed the opposition.

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The Voivodeship Administrative Court in Warsaw in its judgment of 12 December 2008 case file VI SA/Wa 2113/08 affirmed this decision. The VAc held that the overall assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the trade marks at issue must be based on the overall impression, taking account in particular, their distinctive and dominant components/elements. The Court ruled also that the registration of the trade mark in a given form does not afford the exclusivity in relation to particular elements of this trade mar, apart from situations where a part of the sign is a reputed/renown trade mark.