Archive for: trade mark infringement

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.

R-181286

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.

R-129085

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.

Trade mark law, case II GSK 361/06

December 12th, 2008, Tomasz Rychlicki

On 9 July 1998, the Polish company called “Przedsiebiorstwo Uslug Technicznych INTEL Spólka z o. o.” (PUTI) applied for trade mark reigstration for word-figurative sign “i INTEL” in class 37 for services such as: electric appliance installation and repair, fire alarm installation and repair, burglar alarm installation and repair, installation and repair of extinguishing and smoke ventilation systems, installation and repair of access control systems, and in class 38 for industrial television. The Polish Patent Office has granted the protection rights in its decision of 9 December 2002. On 21 July 2003, Intel Corporation has filed an opposition against the PPO’s decision. Since the trade mark application was filed while the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, was in force, so the opposition had to be based on its article 8(1) and (2) and article 9(1)(i) and (ii).

Article 8
A trademark shall not be registrable if:
(i) it is contrary to law or to the principles of society coexistence;
(ii) it infringes the personal or economic rights of third parties;

Article 9
(1) Registration of a trademark for goods of the same kind shall not be permissible where:
(i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;
(ii) it is similar to a trademark that is well known in Poland as a trademark for goods of another enterprise to an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity;

To support its opposition, Intel Corp. has provided arguments that a sign is applied for or registered in contrary to the principles of society coexistence if it seeks to use or to undermine the reputation of other trade mark, regardless of the nature of the goods or services to which it refers. Intel Corp. successfully argued that Intel is word trade mark which is well-known and reputable. It is widely recognized and valued as a synonym for the highest quality products branded by this sign (or its derivatives) in the IT sector. The widespread knowledge of that trade was also confirmed in the Polish Patent Office’s decision in early 1994. The features and the highest quality of Intel brand products have also to be attributed to the Intel Inside trade mark because of its equally vast, global popularity and strong positive associations among customers. Intel R-93693 and Intel Inside R-86431 trade marks were registered in Poland in priority, respectively of 8 November 1990 and 18 June 1991.

“i Intel” is a sign which has a distinctive part consisting of Intel sign which is similar to Intel Copr. trade marks. It leads consumers to think that there is an association between Intel Corporation and a disputed sign, consequently, there is a risk of confusion as to the origin of goods or services which are identified by the disputed mark. According to Intel Corp., the use of the contested trade mark by PUTI was based on the reputation and the widely recognized quality of Intel trade mark. PUTI registration was made in favour of its marketing business and for the economic benefits of the Polish company. This kind of behavior also brings the risk of confusion among consumers as to the identity, trade and economic links and between Intel Corporation and PUTI. In addition, Intel Corporation has filed the explanatory memorandum arguing that “i Intel” sign violates the applicant’s personal rights. The firm (protected as personal rights under the Polish Civil Code) is the name under which Intel Corporation conducts its business, it is also the reputation of a company, to which the applicant has worked since 1968 (the establishment of Intel Corporation in the U.S.).

Since fields of business activities of PUTI and Intel Corp. did not overlap, The Polish firm argued that Intel Corp. had not demonstrated that the disputed trade mark makes difficult for Intel to use its company name. PUTI has also argued that the opposition should not be based on article 9 of the PTA since the disputed trade mark is designated for services not goods. PUTI argued that it has been using the name “Przedsiebiorstwo Uslug Technicznych INTEL” in 1989 and 1990, which was before Intel Corporation had registered its trade marks in Poland.

The Polish Patent Office invalidated “i Intel” trade mark in its decision of 19 October 2005. It was proved before the PPO that PUTI was founded on 23 July 1997 as a limited liability company, and previously (from 1 November 1983) it had operated on the market in the form of a civil company and the name Intel had been used for the first time in its firm in 1994. In PPO’s opinion, PUTI’s use of “i Intel” sign with ® before trade mark registration was granted was also a proof of taking the advantage of reputation of Intel Corp. trade marks, which was contrary to the principles of society coexistence that were defined in this case as a matter of fairness trade.

PUTI appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 21 April 2006 case file VI SA/Wa 126/06 dismissed the appeal. The court held that trade marks of Intel Corp. that were registered with the earlier priority are renowned in Poland in relation to the persons involved in electronics, computers, electrical and electronic equipment of various kinds, and PUTI’s application for the contested trade mark was intended to use the reputation of Intel Corp. trade mark portfolio. In court’s opinion the Polish Patent Office has had to compare these trade marks with the disputed sign in aural verbal and visual aspects and it has reasonably concluded that there is a clear likeness between them, and given that the signs are used for determining goods, which are compatible with regard to services to which the disputed trade mark is intended use, so there was a condition for the inadmissibility of the disputed trade mark registration within the meaning of article 9.

PUTI filed a cassation complaint before the Supreme Administrative Court. However, the Court dismissed the case in its judgment of 15 May 2007 case file II GSK 361/06. SAC explicitly held that Intel is well-known trade mark on the Polish market (strong sign) and its reputation was not questioned even by the Polish company. Consequently, it should be considered that the danger of confusion between trade marks by customers, is the greater, the more well-known (or as the Court also said – standardized) is a trade mark with an earlier priority, because customers’ memory directs them in a particulary easy way, to trade marks which are well-known on the market.

Trade mark law, case I KZP 8/08

July 1st, 2008, Tomasz Rychlicki

The Polish Supreme Court, the Criminal Law Chamber sitting in extended bench of seven Justices, in its judgment of 30 June 2008 case file I KZP 8/08 answered the question, whether the Polish legislator’s intent was to leave acts of purchasing counterfeit goods with impunity, or should such deeds be deemed as fencing according to provisions of Articles 291 and 292 of the Criminal Code – CRC – (in Polish: Kodeks Karny) of 6 June 1997, published in Journal of Laws (Dziennik Ustaw) No 88, item 553, with subsequent amendments.

This case concerned Małgorzata N. (publication of full personal data is not allowed in Polish criminal proceedings unless otherwise decided by a court) who was accused by the prosecutor of helping to sell clothes which were unlawfully bearing registered trade marks such as Everlast, Adidas, Puma and Nike. The charges were based on the article 291 of the CRC.

1. Whoever acquires property obtained by means of a prohibited act, or assists in its disposition, or receives such property or assists in the concealment thereof shall be subject to the penalty of deprivation of liberty for a term of between 3 months and 5 years.
2. In the event that the act is of a lesser significance, the perpetrator shall be subject to a fine, the penalty of restriction of liberty or the penalty of deprivation of liberty for up to one year.

The court of the first instance (Regional Court) has ruled that Małgorzata N. was guilty of buying contested clothes in unfound place and time, and at the same time knowing that those products unlawfully bore registered trade marks. The Court sentenced the defendant for 50 daily rates of fine, each worth 40 PLN. Małgorzata N. appealed. Her attorney argued that the court of the first instance erred in the interpretation of article 291 of CRC which should be only applied in a case of the first purchase as it was decided by the Supreme Court in its judgment of 24 May 2005 case file I KZP 13/05. See “Trade mark law, case I KZP 13/05“. According to defendant’s attorney the Supreme Court’s interpretation excluded Małgorzata N.’s guilt because further turnover of such goods was beyond the scope of penalisation. Article 305(1) was amended of 31 July 2007 to adjust its provisions to every situation of “market turnover”.

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.

The Supreme Court held that any behaviour which is not understood as “introduction to market” as defined in article 305(1) of the IPL (after amendments from 2007) and consisting of further market turnouver of goods bearing counterfeited trade marks is not a misdemeanour defined by article 291 and 292 of the PPC because it does not fulfill a trait of “property obtained by means of a prohibited act”.

Trade mark law, case I KZP 13/05

May 23rd, 2008, Tomasz Rychlicki

The Supreme Court in its judgment of 24 May 2005 case file I KZP 13/05 interpreted the meaning of the term “introducing to market” and clarified the provisions of Article 305(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 on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, before amendments of 2007.

Anyone marking goods with a counterfeit trademark for the purpose of introducing them on the market or introducing on the market goods bearing such trademark, shall be liable to a fine, limitation of freedom or imprisonment for a period of up to two years.

The Supreme Court defined the term “introduction to market” as a passing on of goods labelled with a fake trade mark for the first time by a producer or importer of those goods. A subsequent sale of such a product should not therefore be recognized as “introduction to market” and could not therefore be the subject of criminal proceedings.

Trade mark law, case V ACa 469/07

January 7th, 2008, Tomasz Rychlicki

The District Court in Częstochowa in its judgment case file V GC 83/04, and the Appellate Court in Katowice in its judgment case file V ACa 469/07, ruled that the name DELICJE (better known by English readers as Jaffa cakes) is not a distinctive sign. This ruling ends long standing legal battle that was started by Lu Polska S.A. (owned by Kraft Food) against other five Polish companies. However, this judgment is not consistent with other courts’ decisions regarding the trade mark Delicje R-70513. The District Court in Warsaw ruled on 27 march 2007, that Tago Company, owned by Tadeusz Gołębiowski, which produces jaffa cakes under different brands such as Delicje, Delicje Mazowieckie, Delicante and Fruktolicja, infringed on Lu Polska’s trade mark.

Internet domains and trade mark law, case I ACa 1228/05

June 14th, 2007, Tomasz Rychlicki

The Appellate Court in Poznań in its judgment of 26 April 2006, case file I ACa 1228/05, published in electronic database LEX no. 214296, ruled that in the case of a trade mark in the form of a particular word, the word representing a sign it is important, so long as it has the distinctive character and it is possible to distinguish the goods supplied or manufactured by a company from the products of another company. The appearance of a sign that may be represented by letters written in different fonts was less important in the described case. The conclusion that the only the graphic/figurative similarity between the two marks would give a plaintiff the right to assert claims arising out from article 296 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, would render the protection resulting from this provision purely illusory and would wreck the sense of norms arising from this article.

Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
(i) in accordance with the general principles of law,
(ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.

1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(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;
(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.

3. The claims referred to in paragraph (1) shall also be enforceable against a person who only puts on the market the goods already bearing that trademark, provided that the goods do not originate from the right holder or from a party authorised by him to use the trademark.

4. When invoking the right of protection conferred by his trademark, the licensor may enforce the claims referred to in paragraph (1) against a licensee who breaches any provision in his licensing contract with regard to its duration and territory covered by the contract, the form covered by the contract in which the trademark may be used, as well as the scope of the goods for which the trademark may be used or the quality of the goods. This shall apply accordingly to the sub-license.

5. A holder of a right of protection for a trademark may enforce the claims referred to in paragraph (1) against a licensee or a sub-licensee in case where the provisions of the sub-license contract, referred to in paragraph (4) have been breached, as well as in the case, where the contract has been concluded in breach of Article 163(2).

The Court also held that the registration of a web site under a given domain name address, and conducting a business activity through, and also its advertising, complete the condition of “trade mark use”.

See also “Polish case law on domain names“.

Trade mark law, case I CK 626/04

April 14th, 2007, Tomasz Rychlicki

Jerzy Gojawiczyński owns the word-figurative trade mark ALE KINO! R-113226, registered for advertising and printing services in Class 35 and 42. Canal + Cyfrowy Spółka z o.o. is a broadcaster of a specialized TV program called “Ale Kino”, in which the company places also ads. Mr Gojawiczyński sued for trade mark infringement.

R-113226

The Supreme Court in its judgment of 17 February 2005 case file I CK 626/04 held that the use of a registered mark in the course of trade by other entrepreneurs will be deemed as a violation of the provisions of the Industrial Property Law only if it is associated with the continuity of such activity, and when it is done effectively in business, i.e. outside the company, where it can be recognized and associated by consumers. The mere use of the trade mark within the company, especially one-time use or shortly periodic, is not deemed as a trade mark infringement.

Trade mark law, case V CK 280/04

November 23rd, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 17 June 2004 case file V CK 280/04 held that the owner of rights listed in Article 8(2) of the TMA can claim, with reference to the normative basis of these rights, for their protection, to prohibit the activities covered by the exclusive right, arising from the decision to register a trade mark, which violate these laws, without first having to invalidate the registration of the trade mark.

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

The Court ruled that legal protection resulting from registration of the trade mark is only formal and does not constitute an obstacle to a prohibition of infringement of rights of a particular entity. The court is not bound by a final decision of the Polish Patent Office on the registration of the trade mark when it comes to assessing the facts underlying the judgment that was rendered in civil proceedings.

Trade mark law, case III CK 410/03

February 5th, 2005, Tomasz Rychlicki

The Supreme Court in its judgment of 27 October 2004 case file III CK 410/03 held that the use of someone else’s trademark for informational purposes and in advertising is allowed, if it does not mislead as to the existence of economic links between the trade mark owner and the person that uses such trade mark.