Polish IP & IT law – copyright trademark computer internet telecomm

Archive for: trade mark infringement

Copyright law, case I C 471/16

April 22nd, 2016, Tomasz Rychlicki

Niezależny Samorządny Związek Zawodowy “SOLIDARNOŚĆ” (Independent Self-governing Trade Union “Solidarity”), the owner of the figurative European Union trade mark EUTM no. 014026454, sued Czesław Mozil, a Polish singer known also as Czesław Śpiewa (Czesław sings), for the infringement of copyrights and personal interests. Mr. Mozil has recorded and published a song and a TV clip entitled “Nienawidze Cię Polsko” (I hate you Poland) in which the well-known and iconic “SOLIDARNOŚĆ” logotype was also presented. NSZZ “SOLIDARNOŚĆ” demanded 500.000 PLN of compensation.

EUTM no. 014026454

The District Court in Kraków in its judgment of 8 April 2016 case file I C 471/16 dismissed the case. The Court held that the logo was used in the video as a symbol of Poland and as a Polish identity, and not as a logotype that identifies a trade union, so there was no infringement of personal rights. Any attempts to limit forms of artistic expression would violate the constitutional principle of freedom of artistic expression. The judgment is not final.

Trade mark law, case VI Kp 84/14

September 1st, 2014, Tomasz Rychlicki

The Regional Court in Szczecin in its decision of 18 June 2014 case file VI Kp 84/14 ruled that the provisions of Article 305 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, that provides that anyone marking goods with a counterfeit trade mark, registered trade mark for which one does not have the right to use, for the purpose of introducing them on the market or anyone who is making a turnover of goods bearing such trade mark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years, does not apply to services for which a trade mark was registered for. The Court noted that the definition of goods in the IPL also covers services, however, incriminated actions that are subject to the provisions of Article 305 of the IPL, were defined very narrowly and does not apply to trade mark use in advertising services. According to the Court, this view is shared by legal commentators who agreed that the protection provided in Article 305 of the IPL only covers the rights to mark the goods by the entitled person. Based on the principle of guarantee in the criminal law, the Court did not agreed for the analogy in order to extend the protection. The principle of the guarantee of law provides that those who do not violate the rules of law will not suffer negative consequences from the state. This function is of particular importance in the system of criminal law. By establishing sanctions for violation of, or for exposure of certain goods (criminalization) the legislator expresses its will to secure respect for such interests (the protective function of law), but also ensures (guarantee function of law) those who did not commit a criminal act, that they will not be held criminally responsible. The Court added that due to the nature of the service, it can not be introduced to the market, or be subject to market turnover.

Internet domains, case IV CSK 191/13

April 10th, 2014, Tomasz Rychlicki

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

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

Z-368187

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

See also “Polish case law on domain names“.

Personal interest, case I ACa 841/2013

January 9th, 2014, 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.

The District Court in Warsaw in its judgment of 13 March 2013 case file XXIV C 1035/10 ruled that the “Zielone Światło” (Green Light) Foundation infringed personal rights of Allegro, such as reputation and fame. The Court decided that the demonstrations against the sale of Nazi memorabilia and interference with the logo of the portal were too excessive and bore the risk of linking the portal with Nazi organizations.

The Appeallate Court in Warsaw in its judgment of 9 January 2014 case file I ACa 841/2013 dismissed Allegro’s claims. The Court noted that in this case there was a conflict of values, but also drew attention to the historical context of the sale of items referring to the Nazi ideology. The court held that undoubtedly there has been violation of the good name of the plaintiff – the name of the portal website, and in consequence, it could interfere with its business because some customers would not have positive opinions regarding the auction site. However, the rough means of expression that were undertaken by the Defendants, in order to remove the sale of a Nazi gadgets, excluded illegality. According to the Court this actions proved to be effective – have led to restrictions on the sale of Nazi’s memorabilia . What’s more important, the Court held that the Defendants acted to protect a legitimate public interest. The court ruled that artistic criticism of such business activities of an auction portal is not an unlawful action and deserves constitutional protection. The judgment is final.

Trade mark law, case XVI GCo 204/13

September 30th, 2013, Tomasz Rychlicki

On Augut 2013, Polish telecom Polkomtel sp. z o.o. started an advertising campaign of its mobile Internet access services. In a short movie, a girl named Basia is starting new life by dumping her boyfriend and moving to a new flat with an Internet access based on LTE technology. She mentions that her boyfriend had Internet access provided by Telekomunikacja Polska S.A. under the brand name Neostrada. She is very happy about the changes. The ad ends with the statement that Internet provided by Plus (brand name of Polkomtel) is faster from Neostrada. This comparison is based on the ranking provided by SpeedTest.pl of July 2013.

On 9 September 2013, Telekomunikacja Polska requested the District Court in Warsaw to issue a preliminary injuntion against Polkomtel, in order to prohibit acts of unfair competition and trade mark infringement of the word trade mark NEOSTRADA R-182762. Telekomunikacja noted that Polkomtel is one its major competitors on the Polish telecommunication market. The Company argued that Polkomtel infringed its trade mark rights by taking unfair advantage of reputation and distinctive character of the NEOSTRADA brand, and the advertising movie was comparative advertising contrary to good practices, and as such, should be deemed as unfair competition.

The District Court in Warsaw in its order of 23 September 2013 case file XVI GCo 204/13 dismissed the request. The Court held that premises to secure the claims are based on substantiation of claims, i.e. on providing prima facie evidence of the infringement and legitimate interest in granting the order. According to the Court, Telekomunikacja did not provide evidence on reputation of its trade mark and Polkomtel did not infringe the right of protection for NEOSTRADA, because this sign was only used to specify the service to which it relates. The word was used as a name for a given service, not as a trade mark. The Court noted that advertising that allows to identify, directly or indirectly, the competitor or products or services offered by the competitor, described as “comparative advertising”, should be deemed the act of unfair competition if it is contrary to good practices. However, the short movie clip published by Polkomtel is not in any way contrary to such practices, because it is not misleading and it does not affect market decisions as to the purchase of goods or services. The Court agreed with the decision of the President of the Office of Competition and Consumer Protection of 6 August 2009 case no. DDK 4/2009, according to which, advertising is deemed as misleading when a consumer gets false idea of the goods or services, and misleading information influence the decision to purchase these products.

See also “Trade mark law, case XXII GWo 68/12“.

Trade mark law, case XXII GWwp 19/10

September 4th, 2013, Tomasz Rychlicki

ZIMBO Fleisch- und Wurstwaren GmbH & Co. KG sued Wanda Szczupak for the infringement of Community Designs nos. 000729694-0001, 000729694-0002, 000729694-0008 and 000729694-0009, and the CTM ZIMBO no. 006462592. ZIMBO argued that Mrs. Szczupak distributes her products in packagings similar to ZIMBO’s. This similarity is reflected in the choice of colors, arrangement of individual elements of the package, with the dominant red color in the upper part in the white frame surrounding the window showing the product, with figurative floral patterns in green. ZIMBO argued that such packaging did not create a different overall impression on the informed user, and the identity of the goods and the similarity of Viando and ZIMBO trade marks create the likelihood of confusion as to the origin of the products offered by the parties. ZIMBO provided some evidence on consumer confusion. Mrs. Szczupak requested dismissal of the action and reimbursement of costs of legal representation. She alleged lack of standing, and explained that on 31 VII 2010, she sold the entire enterprise to the company Zakłady Mięsne “VIANDO”, all together with the right of protection for a trade mark Viando R-188683 that was granted with priority of 8 April 2004.

R-188683

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 4 April 2011 case file XXII GWwp 19/10 dismissed the complaint. The Court agreed with Mrs. Szczupak and ruled that the word-figurative trade marks are not identical or even similar in the visual, phonetic and conceptual aspects. Moreover, VIANDO’s packaging and CDRs nos. 000729694-0008 and 000729694-0009 fundamentally differ in number of elements, and they produce on the informed user (consumer of meats, employee of shops with meat products) different overall impression.

Trade mark law, case XXII GWo 68/12

July 26th, 2013, Tomasz Rychlicki

The Greek company I. & K. Nikolaidis Anonymi Viomichaniki Kai Emporiki Etaireia Oikiakou Kai Epaggelmatikou Exoplismou – Geniko Emporio I.D. Sourcing A.E. requested the Polish Court for the Community Trade Marks and Community Designs to order Media Service Zawada to disclose information on producers, manufacturers, distributors and suppliers of quantities of produced and sold goods and products bearing the signs BEN 10. The Greek company is the owner of the CTM FAN BAG No. 8487911. The Polish company noted it does not use the sign in question as a trade mark but in the descriptive function, to indicate the type of goods – bags of toys related to the Ben 10 TV series, designed for fans of the series.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of in its order of 3 December 2012 case file XXII GWo 68/12 dismissed the request. The Court ruled that while alleging that the defendant infringed on its CTM, the Plaintiff should indicate what type of infringement, as defined in Article 9(1) of the CTMR, has occurred in its case, and should also prove all the conditions which must be met to justify opposition to the Defendant’s use of the CTM FAN BAG No. 8487911. Usually, the Plaintiff should also indicate how the allegedly infringing actions of the defendant affect the functions performed by the trade mark. In any event, it could not be considered as sufficient evidence to only refer to the certificate of registration and description of the defendant’s actions, as did the Greek company in this case. It was also necessary to present the claims of identity/similarity between the CTM and the questioned sign and the identity/similarity of the goods or services of either party, the strength of the trade mark, its reputation, and if there is a risk of consumer confusion, and also to provide proper evidence. The Court is allowed to apply provisional and protective measures based on the provisions of the CTMR and the Polish Industrial Property Law. The Court noted that the right to obtain information (informational claim), does not in fact secure the claim. It has its own nature, which is similar to the informational claim referred to in Polish copyright law. At this stage of the proceedings the owner/requesting party can not make claims which occur in the future, possibly before the courts. These may be claims defined in the CTMR and Polish Industrial Property Law. The order to grant access to such information is intended to determine the responsibilities of a particular entity for breaching industrial property rights. Such information will allow the owner to make a decision how to sue (how to develop a lawsuit and actions) the infringer with the use of relevant and proper claims. Filing a request with an informational claim, the owner/holder must, however, explain what is the infringing act or acts and highly substantiate them but most of all, it has to indicate the claims to which the necessary information is needed, and the person to whom such claims will be directed in a future suit. Quite different information may be used in constructing claims such as interdiction, removal the effects of the infringement, payment of damages, recovery of unlawfully obtained profits or publication of the judgment, that were used against the importer, exporter, manufacturer, the person placing the product on the market, or advertiser. The main condition in order to take account of the informational claim is to establish high probability of the infringement (prima facie evidence of the infringement). Such wording was used by the Polish legislator while implementing Directive 2004/48/EC. As the Court noted it is a very original and new wording. The legislator did not refer to concepts already existing in the Polish law based on proving and making probable of facts, but required a “high degree of probability”. The Court recognized such situation as something being between “the probable” and “the proved fact of the infringement”, however, its evaluation is always left in each case to the Court hearing a request for disclosure of information. In addition, deciding on such request, the Court must also ensure the protection of business/trade secrets. The Greek company while alleging infringement of its CTM, should, inter alia, to show that Media Service Zawada was using this sign for goods which were identical or similar to these protected. However, the Company included in the request a very general statement “goods infringing the Applicant’s right” which did not allow the Court for assessment of the validity of alleged infringement. The Court held that the request did not contain evidence, and even claims of the infringement of the CTM FAN BAG No. 8487911, that could be considered as a higly probable evidence that could establish a trade mark infringement case (prima facie evidence).

Trade mark law, case I ACa 1268/12

July 4th, 2013, Tomasz Rychlicki

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

R-123588

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

R-193780

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

R-197616

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

Trade mark law, case I ACa 1402/12

June 28th, 2013, Tomasz Rychlicki

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

R-165550

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

R-203677

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

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

Trade mark law, case I ACz 1156/12

December 31st, 2012, Tomasz Rychlicki

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

R-247390

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

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

Trade mark law, case II GSK 2324/11

October 5th, 2012, 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 presence and 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. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case V ACa 77/11

April 18th, 2012, Tomasz Rychlicki

The Appeallate Court in Katowice in its judgment of 5 April 2011 case file V ACa 77/11 ruled that there is no reason to claim that a reputable trade mark must have a greater recognition than well-known signs. Decisive are the quality criteria, and not the quantity. A reputed trade mark does not have to be well-known, and a well-known sign does not have to be reputed one.

Trade mark law, case I ACa 149/08

November 10th, 2011, Tomasz Rychlicki

The Appeallate Court in Kraków in its judgment of 18 March 2008 case file I ACa 149/08 ruled that the inclusion of the ® symbol can be done in order to inform that the trade mark is protected. There are no other rights associated with this sign that could strengthen the market position of the product bearing the trade mark. This symbol does not contain any information about the product itself, but is a clear signal for those entities wishing to undermine the right of protection for a trademark that in the event of such a breach, the holder shall have specific claims in relation to the infringer.

Trade mark law, case I ACa 988/08

October 17th, 2011, Tomasz Rychlicki

The Appeallate Court in Wrocław in its judgment of 17 December 2008 case file I ACa 988/08 held that the wide scope of protection of reputed trade marks should be afforded only for well-known signs that are characterized by prestige, that is associated with the goods of exceptional – especially high-quality – and, most importantly, signs of such a strong and established position that they attract attention no matter for which of the goods they are used.

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 reputed 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 XXII GWzt 5/10

March 17th, 2011, Tomasz Rychlicki

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 31 May 2010 case file XXII GWzt 5/10 ruled that when deciding whether a trade mark has a repute, the Court examines in detail the evidence offered with respect to the scope and level of commercial, sponsorship and promotional actions of the proprietor, used for building the reputation. The Court pays attention to the type of goods, their volume of sale, popularity among consumers, the size, frequency and regularity of sponsoring of various events attracting a large number of viewers, allowing it to decide that the trade mark meets the requirement of repute and thus should be known to a significant part of the public.

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. However, the entrepreneur 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

In this case, the object of protection was a combinations of two colors. The right or protection to the figurative trade mark R-115856 was granted to the BP P.L.C. by the Polish Patent Office based on the provisions of Article 120(2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.

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. The Court noted that a reputable sign serves not only as the carrier of information about the origin of goods (services). It also provides some important information that may relate to the quality of goods (services), as well as the reputation of the owner of that trade mark or to its activities. Reputed Mark is a sign known, recognizable to a greater extent than usual signs, which does not mean that it must be known widely. Such recognition is provided precisely by these values that the character embodies, so for example, prestige, reputation, uniqueness, high quality. The reputation is not a simple consequence of the distribution of the mark, but it a notion settled in the minds of buyers (customers) about the qualities of goods (services), the prestige of the trade mark or other values.

See also “Trade mark law, case IV CSK 61/09“.

Trade mark law, case I ACa 767/07

October 13th, 2010, Tomasz Rychlicki

The Appellate Court in Wrocław in its judgment of 3 October 2007 case file I ACa 767/07, published in Lex no. 519252, held that reputable characters in comparison with other signs are characterized by stronger distinguishing ability that results from good information and notions of quality and prestige, provided by a sign to potential customers, facilitating the sale of goods bearing that trade mark.At the same time, such trade mark has a measurably market value and represents a significant, or even dominant component of the company’s assets. A reputed trade mark is protected even outside of its class or classes. Because, in such cases, advertising and qualitative functions of a trade mark are protected, and not the function of designation of origin of the product or service. The term of reputation refers both to the registered trade marks as well as well-known signs that are not registered.

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), published in 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, published in 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 that the Court would clarify the interpretation of Article 117(2) of the Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

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 the provisions 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.

Trade mark law, case XXII GWzt 17/09

June 28th, 2010, Tomasz Rychlicki

Leszek Dudarski sued PRO-MED POLSKA Daniel Celej for the infringement of the CTM KLIMUSZKO no. 003533692. Mr Dudarski is a licensee of this trade mark. The CTM is the surname of Father Czesław Andrzej Klimuszko, the famous priest and herbalist. The right to use the word trade mark KLIMUSZKO and recipes belongs to the church order Prowincja Św. Maksymiliana M. Kolbego Zakonu Braci Mniejszych Konwentualnych w Polsce (Franciszkanów). The order acquired this right by way of inheritance.

PRO-MED POLSKA Daniel Celej used signs such as BRACIA KLIMUSZKO SYROP CZARNY BEZ Z ŻURAWINĄ and Bracia Klimuszko on its syrup products and in advertising. PRO-MED argued that its trade marks and labels of syrup packagings are based on the history of monk brothers Jan and Albert Klimuszko. The folklore story abouth these two monks is known in eastern Poland. The identicality of Klimuszko names was unintended and entirely coincidental.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 21 December 2009 case file XXII GWzt 17/09 ruled that the examination of the risk of confusion is the normative issue, and that there exist similarity of signs and goods. The Court prohibited the defendant from the use of the trade mark BRACIA KLIMUSZKO SYROP CZARNY BEZ Z ŻURAWINĄ in the course of trade and in advertising of syrup products.

Internet domains, case I ACa 1334/07

June 17th, 2010, Tomasz Rychlicki

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

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

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

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

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

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

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

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

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

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

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

See also “Polish case law on domain names“.

Trade mark law, case XXII GWzt 3/09

November 27th, 2009, Tomasz Rychlicki

The plaintiff in this case was Theatermogul ehf, owner of the CTM CAVEWOMAN no. 005051545 which was registered in Class 41 for services such as theatrical performances and orchestral services, production of radio and television broadcasts and programmes. The plaintiff also owned several Polish registrations, such as KOBIETA JASKINIOWIEC, JASKINIÓWKA, W OBRONIE KOBIETY–JASKINIOWCA, W OBRONIE JASKINIÓWKI, JASKINIOWIEC, and W OBRONIE JASKINIOWCA, which are mostly translations and variations of English signs. The defendant produced a show by Sigitas Parulskisa in an adaptation by Cezary Harasimowicz entitled CAVEWOMAN-Kobieta jaskiniowa, which was widely advertised and repeatedly shown in Poland and abroad.

The plaintiff argued that it had never allowed the use of its trade marks, and called for cessation of the infringement. However, the defendant only partially complied with this request, changing the title of the show to ‘Kobieta pierwotna’ but leaving in its advertising, tickets, and website a note that this show was previously called CAVEWOMAN-Kobieta Jaskiniowa. The defendant was also still using the website www.kobietajaskiniowa.pl.

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 4 June 2009 case file XXII GWzt 3/09 ruled that the defendant’s use infringed the CTM CAVEWOMAN and prohibited the use of all trade marks owned by Theatermogul ehf in the title or subtitle of the show, advertising and promotional materials, websites, or on tickets. The Court also ordered the defendant to withdraw from circulation and destroy all promotional and advertising materials and tickets containing the CAVEWOMAN and/or KOBIETA JASKINIOWA signs in the title or subtitle of the show. A public announcement of the judgment was ordered, this to be at the expense of the defendant, in the daily editions of national newspapers.

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 Wydział 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. 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. The Court held that using as a keyword a word identical or similar to registered trade marks on the Internet does constitute infringement of the right of protection provided that the said act was committed without the consent of the holder and, in addition to the foregoing, the average Internet user experiences difficulty in determining whether the goods or services designated or found on the basis of a keyword are in fact assigned to the trade mark proprietor or a company commercially affiliated to 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), 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 (tort) of unfair competition. The suit was based on the provisions of Article 296(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Dziennik Ustaw (Journal of Laws) of 2001 No 49, item 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, item 1117, with subsequent amendments.

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

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

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

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

R-63259

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

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

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

R-183931

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

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

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

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