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Archive for: knock-offs

Trade mark law, case VI SA/Wa 203/10

October 11th, 2010, Tomasz Rychlicki

The Polish company INTERKOBO Sp. z o.o. filed a request for the invalidation of the right of protection for “kucyk pony” R-139097 trade mark registered for HASBRO POLAND Sp. z o.o. Kucyk means “pony” in Polish language. INTERKOBO argued that it has the legitimate interest in the invalidation proceedings because it is a manufacturer of toys, and it offers products such as toy ponies. In addition, in the cease and desist letter dated on 24 April 2007, HASBRO called INTERKOBO to stop the infringement of the right of protection for “kucyk pony” R-139097 trade mark which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence.

HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character.

The Polish Patent Office dismissed the request. INTERKOBO filed a complaint against PPO’s decision. The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2010 case file VI SA/Wa 203/10 affirmed this decision and dismissed the case. The VAC held that the trade mark in question is is a fanciful sign and has the primary distinctive character. It is not a generic name of any of the listed goods, and it does not inform about their properties. Pony (in Polish: kucyk) is the generic name of the horse species while it is not the name of the goods protected by the trade mark, which goods do not have any direct connection with any species of horses.

Trade mark law, case I CSK 96/08

March 20th, 2009, Tomasz Rychlicki

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

Lindt's hare

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

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

Terravita's hare

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

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

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

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

Unfair competition, case V CSK 162/08

December 14th, 2008, Tomasz Rychlicki

The Supreme Court in its judgment of 14 October 2008 case file V CSK 162/08 interpreted the provisions of Article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 13.
1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.
2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation to adequately mark the product.

The SC held that an act of unfair competition within the meaning of Article 13(1) of the CUC is also based on introduction to the market by a third-party of products copied in the manner specified in that provision.

Unfair competition law, case I CKN 1319/00

December 7th, 2008, Tomasz Rychlicki

Lego system A/S, Lego Trading A/S, Kirkbi A/S from Denmark and Lego Polska spólka z o.o. sued Polish companies “COBERT” spólka z o.o. and “COBI” for unfair competition (the delict of imitating a product) based on regulations included in article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 13.1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.

2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation adequately to mark the product.

COBERT is a manufacturer of plastic bricks. These bricks are structurally compatible with LEGO’s bricks and externally; some of them are very similar to LEGO’s. There is a “Cobi” trade mark impressed on each brick. The right for protection was granted by the Polish Patent Office on 6 September 1993 (R-77743). Each packaging is printed in colour and in addition there is a clearly visible “Cobi” sign in six different places of the packaging. There is also a sign of the manufacturer, with an indication of his exact address. The court of first instance noted that colours and themes of packaging for COBERT bricks are different than those used by LEGO. Those findings were acknowledged by the court of appeal. The court also held that the average customer can not be confused as to the origin of these bricks. According to the Court, the plaintiffs did not show any evidences that would allow them to base its claims on the so-called “unnamed delict” as afforded by regulations included in Article 3(1) of the CUC.

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.

LEGO filed a cassation complaint before the Polish Supreme Court in which it requested the Supreme Court to overrule the court of appeal’s jugdment and to order the court of appeal to hear the case again or to change the appealed judgment by the SC and to issue a ruling as to the facts and costs of proceedings. The SC dismissed the cassation complaint. The Court noticed that parties had provided both extensive and exhaustive arguments about the conditions leading to qualify an act as unfair competition delict. Those arguments included economic, legal, even ethical issues. However, the Court held that imitation of others’ products is not reprehensible and blameworthy per se. The progress of civilization is possible thanks to the past legacy. Therefore, the development and improvement of each product is in the public interest. The Supreme Court found that CUC regulations are designed to ensure the accuracy of the behavior and activities of business entities in conditions of free competition and access to the market on an equal footing.

The Polish Supreme Court in its judgment of 11 July 2002 case file I CKN 1319/00 found that implementation of the constitutional principle of economic freedom also justifies the search for balance between market freedom and the freedom of goods circulation and the objectives of the CUC. The court found that the ban on other’s products imitation would lead to the emergence of unlimited monopoly against exploitation of technical solution (technology) and would prevent or at least hindered from entering the market for other companies engaged in the same or similar business activity. In Court’s view that was based on the principle of economic freedom and the rules of fair competition, such ban would be in contradiction with the law. The mere imitation of goods of another business, imitation of goods that are not enjoying any special protection by exclusive rights, does not conflict with the pursuit of competition and does not justify the interpretation of article 13 or 3 of the CUC that it is a delict of unfair competition, even if copies are in the same size as the original brick. As regards the packaging the SC held that comprehensive and clear indication of the manufacturer which is placed on a product packaging, and permanent placement of a trade mark on each product, which are put on the market, excludes the possibility of consumer confusion as to the identity of the manufacturer or the product.

Unfair competition case, V CSK 311/06

May 11th, 2007, Tomasz Rychlicki

The Supreme Court in a judgment of 2 January 2007, case file V CSK 311/06, held that it is contrary to good customs/practice to introduce into the market of a product that is generically equivalent to existing one produced by another manufacturer, if the attraction of the attention of customers was caused by the similarity of the packages that created positive associations in the minds of customers’ of the product previously introduced.

Unfair competition, case I ACa 900/99

September 11th, 2005, Tomasz Rychlicki

The Appellate Court in Katowice in its judgment of 29 March 2000 case file I ACa 900/99, interpreted provisions of article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.

Article 13.
1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.
2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation to adequately mark the product.

The Court held that according to the intention of the legislator, the delicts/torts defined in article 13 of the CUC concern not imitation, in general, but only the so-called “slavish imitation” (also referred to as look-alikes, knock-offs or parasitic copying), which is based on copying the external appearance of a product by technical means of reproduction and it creates the likelihood of customer confusion as to the identity of the manufacturer or a product.

Unfair competition, case I ACa 147/99

August 10th, 2005, Tomasz Rychlicki

The Appellate Court in Lublin in a judgment of 27 May 1999, case file I ACa 147/99 ruled that the term “competitive activity” shall mean all actions taken in connection with participation in the market gambling, consisting in achieving maximum benefit from the sale of goods. The court also clarified the provisions of Article 13 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with later amendments.

Article 13.
1. Imitating a finished product by way of technical means of reproduction, to copy an external image of such product where it may mislead customers as to the identity of the producer or product, shall be the act of unfair competition.
2. Imitating functional features of a product, in particular its make, structure and form ensuring its usefulness shall not be deemed the act of unfair competition. Where the imitation of functional features of a finished product requires including its characteristic form, which may mislead customers as to the producer or product identity, the imitator is under obligation to adequately mark the product.

The Court held that according to article 13 of the CUC, it is the important, that the copied outer form of the product creates the likelihood of customer confusion as to the identity of the manufacturer or a product. This situation appears only when the product becomes a commodity, that goes on the market and it’s exposed for sale to buyers.