Polish IP & IT law

Trade mark law, case Sp. 334/05

July 30th, 2010, Tomasz Rychlicki

On 1 March 2004, the Polish Patent Office registered word-figurative trade mark CZUWAJ R-152214 (in English: “Be Prepared”). Związek Harcerstwa Polskiego – Główna Kwatera is the owner. The sign looks exactly the same as the Scouts Cross.

The final design of Scout’s Crass was approved during ZHP’s unification conference held on October 1-2 1918 which has choosen this sign as the official badge of Polish scouting In November 1918 the Polish Ministry of War decreed that the Krzyż Harcerski was the only civilian emblem that might be worn on military uniforms. The tradition continues to this day.

Nowadays, there are three major scouting organizations in Poland. Związek Harcerstwa Polskiego, Związek Harcerstwa Rzeczypospolitej and Stowarzyszenia Harcerstwa Katolickiego Zawisza.

Krzyż harcerski

ZHR filed a request for invalidation of the right of protection. The request was based on provisions of article 8(1) of 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 later amendments.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence,

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 later amendments, provides more stricter regulations against registering such signs.

Article 131
1. Rights of protection shall not be granted for signs:

(…)

(ii) that are contrary to law, public order or morality, or

(…)

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,
(ii) it incorporates the name or abbreviated name of the Republic of Poland, or its symbols (emblem, national colours or national anthem), the names or armorial bearings of Polish voivodships, towns or communities, the insignia of the armed forces, paramilitary organisations or police forces, reproductions of Polish decorations, honorary distinctions or medals, military medals or military insignia, or other official or generally used distinctions and medals, in particular those of government administration, local self-administration or social organisations performing activities in vital public interests, where these organisations’ activities extend to the entire territory of the State or to a substantial part thereof, unless the applicant is able to produce evidence of his right, in particular in a form of an authorisation issued by a competent State agency or a permission given by an organisation, to use the sign in the course of trade,

(…)

(v) it incorporates elements being symbols, in particular of a religious, patriotic or cultural nature whose use could hurt religious feelings, sense of patriotism or national tradition,

The Polish Patent Office in its decision case file Sp. 334/05 invalidated the right of protection. The PPO ruled that all Polish scouts’ organizations should have the right to use this sign.

This judgment is not yet final. A complaint may be filed to the Voivodeship Administrative Court.

Trade mark law, case VI SA/Wa 2178/09

July 30th, 2010, Tomasz Rychlicki

Polish entrepreneur requested the Polish Patent Office for the invalidation of “panorama religii” trade mark R-145419, claiming the it owns copyright to the aforementioned sign. The PPO decided to stay the proceedings and ordered the applicant within two months from the date of receipt of the order to file a suit to the civil court with regard to establishement of copyrights to the disputed trade mark. The applicant was also ordered to provide the PPO with certified copies of the suit within two months from the date of receipt of the order. The applicant did not file such a suit and stated that he will not take those steps. After filing another motions this case went to the administrative court.

The Voivodeship Administrative Court in Warsaw in its judgment of 28 July 2010 case file VI SA/Wa 2178/09 held that whether there was an infringement of civil jurisdiction, in this regard, the matter will be subject to review by the Court on the complaint against the merits of the PPO’s decision.

Advertising of pharmaceuticals, case VI SA/ Wa 1136/10

July 29th, 2010, Tomasz Rychlicki

This is the continuation of a story described in “Advertising of pharmaceuticals, case II GSK 461/09“. The Voivodeship Administrative Court in Warsaw in its judgment case file VI SA/ Wa 1136/10 canceled the decision of the Main Pharmaceutical Inspector (MPI) that ordered the Polish Federation for Women and Family Planning (in Polish: Federacja na rzecz Kobiet i Planowania Rodziny) to remove information about different contraceptions. Such information was published on the website operated by the PFWFP. Being bound by a legal interpretation issued by the Supreme Administrative Court, the VAC ruled that the mere use of the name of a pharmaceutical product does not prejudge that such message is advertising. One cannot automatically equate information on medicinal products with an incentive to use them.

Trade mark law, case VI SA/Wa 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 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, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.

Civil law, case I ACa 295/10

July 27th, 2010, Tomasz Rychlicki

Allego.pl is a very popular Polish auction website. Michał Z. is one of many of its users. He was acting on behalf of his father’s company when he placed an auction. When setting the option “buy now”, he allegedly by mistake underpriced the item he was trying to sell. The item was valued for 74000 PLN but Michał Z. set the “buy now” price for 7400 PLN. Alicja W. decided to buy this item and she choose “buy now” option. She received an e-mail confirming her purchase from Allegro.pl

Michał Z. tried to void the contract, arguing that he has made a mistake when setting a price for this auction. When Alicja Z. came for the auctioned item, its owners have refused to release it. They proposed purchase of another one – in a promotional price of 50000 PLN. Alicja Z. did not agree to a subsequent proposals, including 20000 PLN compensation and she sued.

The District Court in Radom dismissed her claim. The Court ruled that the parties came to the conclusion of the contract of sale, but Michał Z. has successfully evaded of legal consequences of his offer, because it was made by error of fact. It was clear for the Court that the value of the item was given incorrectly, and it did not correspond to real costs of such products. The Court ruled that Alicja W. was certainly aware of this price disparity. She could have acquired such knowledge even from the website of the seller because the address was included in the offer. Alicja Z. appealed.

The Appellate Court in Lublin in its judgment case file I ACa 295/10 held that if the declaration of will has been made to another person, the evasion of legal consequences it permissible only if the error was caused by that person, even if such person was not guilty, or if such person was aware of the error (for example such knowledge was acquired during the negotiations) or the error could easily be noted by such person. According to the Court, none of these conditions has occurred in this case. The Court ruled that it cannot be assumed that someone must be aware of the fact that the price is wrong, and that it was possible for such person to find out the actual price.

The Appellate Court ruled that the District Court overlooked the fact that the auction was placed on Allegro website, which has its own rules (TOS) of trading. The item was only available at the auction with the “buy now” option, in which the seller puts the goods at a fixed, predetermined price. The contract between the seller and the buyer takes upon confirmation of the “buy now” option, as the buyer is automatically notified. The terms of such auction cannot be changed in relation to the buyer who has made an offer, before such change was made. The seller, who choose this type of auction, is bound by the rules and cannot to change the conditions of the transaction after a bid by the buyer. The Appellate Court sent this case back for reconsideration.

Copyright law, case III CZP 1/10

July 24th, 2010, Tomasz Rychlicki

The Supreme Court in its order of 13 July 2010 case file III CZP 1/10 held that operators of cable networks may initiate court’s proceedings with regard agreements on remuneration scales/tables concluded or to be concluded with the competent organization for collective management of copyright, that concerns rebroadcasting of copyrighted works on radio and television programs, only after the exhaustion of the proceedings before the Copyright Commission. The issue of the inadmissibility of the courts’ proceedings was very unclear lately bacuse there was divergent case law of the Supreme Court and legal comentators presented different opinions and views. See “Copyright law, case IV CSK 303/06” and “Copyright law, case III CZP 107/07“.

The Copyright Commission, with a composition of three persons, two of them designated by the parties from among the arbitrators and the third co-opted as referee by the other two, shall settle disputes concerning the application of the scales referred to in article 21¹ of the Polish Act on Authors Rights and Neighbouring Rights – ARNR – (in Polish: ustawa o prawie autorskim i prawach pokrewnych) of 4 February 1994, published in Journal of Laws (Dziennik Ustaw) No. 24, item 83, consolidated text of 16 May 2006, Journal of Laws (Dziennik Ustaw) No. 90, item 631.

Art. 21¹
1. Cable network operators may rebroadcast on cable, works that are broadcasted on radio and television organization solely on the basis of an agreement with the competent organization for collective management of copyright.

2. In case of any disputes regarding the conclusion of the agreement referred to in paragraph 1, the provisions of article 108(5) shall apply.

If one of the parties does not designate an arbitrator or if the arbitrators do not designate a referee, the arbitrator or referee in question shall be designated by the Ministry of Culture and National Heritage. The party that is not satisfied with the decision of the Copyright Commission may, within a period of 14 days of the notification of the said decision, bring a judicial action before the competent district court.

See also “Polish regulations on copyright” and “Polish case law on copyright“.

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

July 21st, 2010, Tomasz Rychlicki

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

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

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

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

Trade mark law, case VI SA/Wa 503/10

July 20th, 2010, Tomasz Rychlicki

In January 2010, Polish company LMW sp z o.o. represented by a patent attorney filed via the Polish Patent Office (PPO) a complaint to the Voivodeship Administrative Court in Warsaw, against the decision of the PPO on the refusal to grant a right of protection for LIBERTY MOTORS trade mark Z-315048.

Z-315048

In the Court’s order of 8 April 2010, a representative of LMW was asked to remedy the formal deficiencies of a complaint by submitting a power of attorney/proxy to act on behalf of the applicant before the voivodeship administrative court or before administrative courts and the document setting out the power to represent the applicant, i.e. the original or a certified copy of the full entry from the National Court Register, within 7 days from the date of service of summons under pain of dismissal of the action. This summons were served on 16 April 2010. The deficiencies were not removed.

The Voivodeship Administrative Court in Warsaw in its order of 31 May 2010 case file VI SA/Wa 503/10 rejected LMW’s complaint. The Court held that according to provisions of article 58 § 1 pt 3 of the Act on the Law on proceedings before administrative courts – PBAC – (in Polish: Prawo o postępowaniu przed sądami administracyjnymi) of 30 August 2002, Journal of Laws (Dziennik Ustaw) No 153, item 1270 with later amendments, the administrative court shall reject the complaint, if it was not compensated for the formal deficiencies, within the prescribed period of time.

Trade mark law, case VI SA/Wa 369/10

July 19th, 2010, Tomasz Rychlicki

The Polish Patent Office (PPO) refused to grant the right of protection for “100 panoramicznych” trade mark (100 panoramic) Z-241510 applied for goods in class 16 such as brochures, books, journals, magazines, titles of magazines. The PPO held that this trade mark lacks sufficient distinctive character and that the sign is purely descriptive and therefore can not be covered by the right of protection. Agencja Wydawnicza TECHNOPOL Spółka z o.o. being the applicant in this case, filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 369/10, held that secondary meaning is the result of a genuine and consistent use of a trade mark by the entrepreneur, in order to indicate in this way, the origin of the goods. The assessment of whether a sign has a secondary meaning must be decided by examining all the facts such as time of use, its market share, the ways and intensity of use, and all the data showing that a given group of customers will evidently assign the sign and the goods to a particular trader. The VAC repealed the PPO’s decision and ruled as unenforceable.

Trade mark law, case VI SA/Wa 452/10

July 19th, 2010, Tomasz Rychlicki

In 2009, the Polish Patent Office declared that the right of protection for REAL trademark owned by real SB-Warenhaus GmbH from Germany, lapsed partially. The German company requested for the suspension of the contested decision. The request stated that the contested decision would cause a negative economic impact for real SB-Warenhaus GmbH, which, through a Polish subsidiary, uses lapsed trade mark continuously since 1997. The German company has made far-reaching financial investments to build market position of REAL trade mark, in Poland – around 10 million PLN. In addition, the public awareness of the brand position, has not only financial backing but also social, because the company built on Polish territory large-area markets, which are operated under the name REAL, therefore, renaming the company and its markets would also affect the 13,500 employees. Given the increasing competition in the market, other competitors, could in good faith (or intentionally) use this trade mark. There was therefore a real risk that, until final completion of this case, the distinctive character of REAL trade mark would be weakened.

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 452/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 451/10“.

Trade mark law, case VI SA/Wa 451/10

July 17th, 2010, Tomasz Rychlicki

R-132135

The Voivodeship Administrative Court in its judgment of 15 June 2010 case file VI SA/Wa 451/10 decided to stay the execution of the questioned decision and ruled that if the decision of the Patent Office has not been suspended, REAL trade mark used by the Polish subsidiary could not be used, and others could exploit the position of this trade mark. The Court also agreed that financial outlays made for the creation and operation of REAL’s supermarkets, were large, and the scale of employment in these supermarkets and the necessary change of the company name and the supermarket, could adversely affect the situation of workers.

See also “Trade mark law, case VI SA/Wa 452/10“.

Personal rights, case I ACa 1402/09

July 16th, 2010, Tomasz Rychlicki

The Appellate Court in Warsaw in its judgment of 15 July 2010 case file I ACa 1402/09 held that even if a website only republishes articles or summaries of works published in major periodicals, it is not absolved from responsibility for infrigement of personal right/interests of a person who was described in such an article.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

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“. The Polish company decided to file a cassation complaint to the Supreme Administrative Court, hoping the Court would clarify the interpretation of article 117(2) of the IPL.

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

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 held that at both the opposition proceedings as referred to in article 246 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, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a patent, a right of protection or a right in registration due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.

R-149940

Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.

2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.