Trade marks
and unfair competition
Quarterly bulletin
no. 4/2012 (9)
Introduction
Introduction
Among the many interesting problems described in this issue of the bulletin, I would like
to highlight that of the concept of the use of a trade mark. The scope thereof largely sets
the boundaries of protection afforded to the trade mark holder. Contrary to what one might
imagine, a protection right to a trade mark does not cover all forms of use. It is strictly limited
by law, and the boundaries are precisely determined by court rulings. Legal protection is only
afforded to the use of a mark within those boundaries. What is more, the very use of a mark
(or lack of use) entails important legal consequences.
First of all, the use of a mark guarantees its endurance as a designation protected by law.
A lack of use brings on the risk of the protection right to the trade mark expiring, and this
may be taken advantage of by competitors, who may apply for a ruling on the expiry of the
right. It was within such a dispute over the continued existence of a mark that the Court of
Justice ruled on the subject of the territorial scope of the use of a mark. In a ruling discussed
in this bulletin, the Court of Justice answered the question of whether the use of a Community
mark in only one EU country can be deemed legally effective. The Court of Justice also
ruled that the use of a mark is an autonomic concept of Community law. On the one hand,
it strengthens legal certainty with regard to Community marks, but on the other hand it
may create a certain tension resulting from the differences between the criteria applied by
European authorities and those accepted in the domestic systems of individual Member
States.
It is not only a lack of use that can cause a trade mark holder trouble. As derives from the
article on the designation ‘Green Point’, the incompetent use of a mark may even lead to its
loss. If a mark is overused, and the trade mark holder has no proper policy regarding the use
of the mark, the designation may lose its distinctive capacity. In accordance with a ruling by
the Supreme Court of Administration, what is essential is the way the designation functions.
It must fulfill the function ascribed to trade marks, and so the universal use of a mark in
trading may prove fatal, even if everyone using the mark does so with the permission of the
trade mark holder. This confirms that managing a mark, even a very renowned and popular
one, is no easy task.
Also worthy of note is a planned amendment to the Act on Electronic Services. Though the
most controversial solution it contains, that of an exemption from liability for search engine
operators, has been removed from the draft, the community of companies whose growth
depends on compliance with intellectual property rights still has cause for concern.
The development of the internet industry in Poland should not take place at the cost of
loosening standards of legal protection over intangible goods, and the amended act may
substantially lower those standards.
K&L Gates Jamka sp.k.
Al. Jana Pawła II 25
00 854 Warszawa, Polska
www.klgates.com
T: +48 22 653 4200 F: +48 22 653 4250
I hope you enjoy this issue, and I encourage you to send in any comments you may have,
for which my thanks in advance.
Oskar Tulodziecki
Contents
Legislative initiatives
Poland – Work on amendments to the Act on Electronic Services ..............................4
Case-Law
EU – Territorial scope of the use of a trade mark – ruling of the Court
of Justice of the EU ................................................................................................. 5
EU – The use of a trade mark in a Community design – ruling of the Court
of Justice of the EU ................................................................................................. 5
EU – Secondary distinctive capacity of the ‘PAGINE GIALLE’ – ruling of the EU
General Court ......................................................................................................... 7
EU – The designation ‘tesa TACK’ too similar to ‘TACK Ceys’ – ruling of the EU
General Court ..........................................................................................................7
EU – Similarity of goods belonging to different classes – ruling of the EU
General Court ..........................................................................................................8
Poland – When does an advertisement mislead and when does it breach good
custom? – ruling of the Supreme Court .....................................................................9
Poland – The word ‘ciuchcia’ (‘choo-choo’) in the name of a preschool – decision
of the Court of Appeal in Lublin ..............................................................................10
Poland – ‘FRUIT & CARE’ and ‘FRUIT CARE’ are similar marks – ruling of
the Supreme Court of Administration ......................................................................10
Poland – ‘Green Point’ a general information mark – ruling of the Supreme Court
of Administration ................................................................................................... 12
Poland – ‘asmix łaciaty’ and ‘Masmix’ – ruling of the Provincial Court of
Administration in Warsaw .......................................................................................13
Poland – Remarks on an objection to a decision to grant a protection right for the
trade mark ‘Sekret Mnicha’ (‘Monk’s Secret’) – ruling of the Provincial Court of
Administration in Warsaw .......................................................................................14
Poland – An unregistered trade mark cannot be subject to depreciation – ruling of
the Provincial Court of Administration in Rzeszów ...................................................14
Poland – Similarity of association of figurative designations – ruling of the Court for
Community Trade Marks and Industrial Designs .....................................................15
Poland – Dispute over the domain ‘juventa.pl’ – ruling of the Court of Conciliation
for Internet Domains at the Polish Chamber of Information Technology and
Telecommunications ..............................................................................................16
Poland – Blocking registration of a domain and use of a trade mark – a dispute over
the domain ‘autoświat.pl’ – ruling of the Court of Conciliation for Internet Domains
at the Polish Chamber of Information Technology and Telecommunications ............ 16
Other issues
Poland – Logo for Polish Vodka ..............................................................................18
Legislative initiatives
Poland – Work on
amendments to the Act
on Electronic Services
Upon the initiative of the Ministry of
Administration and Digitization works are
taking place on amendments to the Act on
Electronic Services. This act constitutes
a further implementation into the Polish
legal system of Directive 2000/31/EC of the
European Parliament and of the Council
of 8 June 2000 on certain legal aspects of
information society services, in particular
electronic commerce in the internal market –
known as the Electronic Commerce Directive.
The scope of the planned changes is
relatively broad. The statutory definitions
in the act are to be changed. A new legal
regulation is expected concerning the law
which the provision of electronic services
is to be subject to. The draft stipulates
that persons performing the so-called
regulated professions will be required to
provide information on their professional
status. The new act also envisages the duty
to expressly indicate that the transfer of
information is commercial in nature.
However, the most significant changes
relate to modifications of the rules of
exempting internet service providers
from liability. Firstly, the authors of the
amendment plan to introduce a completely
new type of exemption, which would
benefit the operators of internet search
services. Secondly, the rules governing the
exemptions from liability of persons providing
hosting services would be supplemented
by a procedure for the holder whose rights
have been violated to file a type of complaint.
The hosting entity could in some cases
return or reject the complaint, while the
Trade marks and unfair competition
person from whom the disputed content
originated could raise an objection, which
would be considered in a similar manner as
the complaint. The third momentous change
would be the introduction of an exemption
from liability for entities providing internet
links. With regard to the exemptions from
liability, the above-mentioned changes
go far beyond the scope of the exemption
from liability foreseen under the Electronic
Commerce Directive. It is not surprising,
therefore, that the proposed changes have
raised considerable controversy on the part
of organizations dedicated to the observance
of intellectual property rights, one expression
of which has been an open letter to the
Prime Minister. The signatories of the letter
pointed out that the scope of the exemptions
from liability is outlined in a much broader
way than prescribed by European law, and
that this makes it impossible to effectively
combat infringements on the internet.
Debate continues over the direction of
the legislation, and continued during the
Congress of Freedom on the Internet
organized by the Ministry of Administration
and Digitization. Important questions were
also raised at the conference about the
future of intellectual property rights, should
the plans of the Ministry come to fruition.
It should also be noted that the Ministry of
Culture and National Heritage has clearly
distanced itself from these plans, indicating
the severe threat that the draft may hold
for Polish culture. Due to the identity of the
legal instruments, the same risks also apply
to producers and distributors of branded
products. The legislative procedure under
discussion is ongoing at a time when, in the
framework of the European Union, works are
also under way regarding the intended shape
of the “notice and action” procedure, i.e. the
functioning of the method of notification
regarding infringements of the law received
from hosting entities. There is a risk that the
final model adopted by the European Union
will not be the same as the model currently
proposed by the Polish administration.
According to the latest information, the most
controversial provisions of the draft are to be
removed, namely the exemption of search
engine operators from liability.
Source: rcl.gov.pl
Case-Law
EU – Territorial scope of the use
of a trade mark – ruling
of the Court of Justice of the EU
On 27 July 2009, Hagelkruis Beheer BV
applied for the registration of the word
trade mark ‘OMEL’ at the Benelux Office for
Intellectual Property (BOIP). This application
was opposed by Leno Merkel BV, the holder
of the Community word trade mark ‘ONEL’,
which was registered on 2 October 2003.
In its objection the company referred to the
earlier registration of the Community trade
mark.
Hagelkruis raised a charge of Leno’s failure
to use this Community trade mark within
the Community. On this basis, the BOIP
rejected Leno’s objection, arguing that
despite the genuine use of the earlier mark
in the Netherlands, it had not demonstrated
its use in the rest of the Community. Leno
challenged that decision.
The court hearing the case reverted to the
Court to resolve the preliminary question
relating to the concept of “genuine use” as
referred to in Article 15 par. 1 of Regulation
207/2009 – regarding the Community
trade mark. This provision states that if
a Community trade mark is not actually
used by its owner in the Community in
relation to the goods or services for which
it is registered, or if such use has been
suspended during an uninterrupted period
of five years, the rights conferred by the
Community trade mark may be subject to
limitation. The essence of the preliminary
question was whether the actual use of the
trade mark in only one Member Statewould
be sufficient for the mark to be regarded as
genuinely used within the Community.
The Court ruled (C-149/11) that the concept
of “genuine use” is an autonomous concept
of European Union law and, therefore, must
be interpreted in a uniform manner. The
actual use of the trade mark occurs when
it is used in accordance with its essential
function, namely, to determine the origin of
the goods and services covered by the mark
of a given company. We are not dealing with
genuine use if the use of the mark is purely
symbolic, and its purpose is only to maintain
the right of protection for a trade mark.
In the Court’s assessment of the actual use
of the mark in the Community, in accordance
with Article 15 par. 1 of Regulation 207/2009
this must be interpreted in isolation from the
territories of the Member States. The Court
stated that while it is true that a Community
trade mark enjoys wider territorial protection
than a national mark, by definition it should
be used in an area larger than one Member
State. However, there may be a situation in
which the relevant market for the goods or
services covered by a mark becomes strictly
limited to the area of a single Member State,
or to an even smaller area. In such a case,
the use of a Community trade mark, even in
such a small area, may constitute genuine
use in the Community within the meaning of
the said provision.
The Court pointed out that the court
adjudicating the matter will assess whether
there was an actual use of the mark in the
Community, and in making this assessment
should take into consideration all the facts,
i.e. “the characteristics of the market
concerned, the nature of the goods or
services protected by the trade mark, the
scope of territorial and quantitative use of the
trade mark and the frequency and regularity
of use”.
Source: curia.europa.eu
EU – The use of a trade mark
in a Community design –
ruling of the Court of Justice
of the EU
Ongoing since 2008, a dispute over the
invalidation of a Community design
between José Manuel Baena Grupo SA
and H. Neuman and A. Galdeano del Sel
was decided by the Court of Justice of the
EU, which, in a judgment of 18 October
2012 ruled that the EU General Court
rightly overturned an earlier decision of the
OHIM, pursuant to which the Community
design was to be invalidated (C-101/11 and
C-102/11).
The conflict concerned a Community
industrial design depicting a fanciful figure in
a sitting position. The figure was registered
for Baena Grupo for activities such as
decorating t-shirts, caps, stickers and printed
material, including for advertising.
H. Neuman and A. Galdeano del Sel applied
for the invalidation of this design. In their
view, the provisions of Regulation 6/2002
on Community designs provide grounds
for the invalidation. In accordance with the
provisions of this Regulation, a design may
be invalidated including when it is not new
or has no individual character. The design is
considered to have individual character if the
overall impression it makes on the informed
user differs from the overall impression on
the user made by a prior design. In addition,
grounds for the invalidation may be the fact
4/2012 that the design contained other distinctive
markings (e.g. a trade mark). If the rightholder to such mark under Community or
national law prohibits such use, the design
should be invalidated. H. Neuman and
A. Galdeano del Sel believed that such
a mark used in a subsequent design was
a Community figurative mark No. 1312651.
The OHIM upheld the initial application
for a declaration of invalidity. It accepted
that the disputed design had been used
in an earlier trade mark. Subsequently,
the Board of Appeal of the OHIM found that
the invalidation was justified. According
to the Board of Appeal, the design did not
have an individual character, because an
informed user (youths and children buying
T-shirts, caps and stickers and users of
printed material) did not have an overall
impression other than that produced by the
earlier trade mark, which also is a publicly
available design within the meaning of this
provision.
Baena Grupo disagreed with this
assessment. It appealed to the General
Court of the EU, arguing that the differences
between the mark and the design cause
each silhouette to create a different
impression on an informed user.
As a result of the complaint brought by
Baena Grupo, the Court repealed the
decision of the OHIM Board of Appeal.
The court justified the repeal of the decision
by the necessity of making a comparison
of the overall impression produced by the
Trade marks and unfair competition
contested design on an informed user with
that of the earlier mark.
The EU General Court stated that the
overall impression of both silhouettes is
to a large extent contingent on their facial
expressions. This is a basic feature that is
retained in the memory. In the case of the
earlier mark, the informed user can observe
the figure with its body tilted forward and
its face showing irritability or nervousness.
The disputed Baena Grupo mark does not
create an impression based on any positive
or negative emotions at all. In the Court’s
opinion, children pay particular attention to
this difference. The design should therefore
not be invalidated.
In its appeal against the EU General Court
ruling, H. Neuman and A. Galdeano del
Sel asked the Court of Justice of the EU to
overturn the ruling and invalidate the Baena
Grupo design, whereas the OHIM, appearing
on the same side of the dispute, applied for
a new judgment on the merits of the case.
The OHIM accused the Court of going
beyond the scope of control of the legality of
the contested decision, which the Court may
only carry out in the event of manifest errors
in the assessment of the validity of a design.
The OHIM also raised the argument that
the Court had substituted the reasoning of
the Board of Appeal with its own reasoning,
and hence made a reassessment of the
facts. This argument, however, failed to
convince the Court to overturn the judgment
under appeal. The Court of Justice held
that the General Court cannot be bound by
an erroneous assessment of the facts by the
OHIM Board of Appeal. The General Court
has the right to examine the assessment
carried out by the Board of Appeal of the
similarity between the earlier trade mark and
the contested design, even more so as the
assessment was questioned by the other
party to the dispute – Baena Grupo.
H. Neuman and A. Galdeano del Sel
rejected the verdict, claiming that it
violated the law within the scope of making
a comparison between the mark and the
design. The Court based its reasoning on
an informed user retaining in his or her
memory the overall impression of the two
figures. H. Neuman and A. Galdeano del Sel
believed that the assessment of the Court
should be the result of a direct comparison
of both figures. The Court of Justice rejected
this argument as unfounded, indicating that
an informed user displays average attention
and does not always have the opportunity
to make a direct comparison between
the design and the trade mark. Sometimes
making such a comparison is simply
unfeasible. Therefore, one cannot assume
that in Regulation 6/2002 the EU legislature
requires authorities applying the law to limit
their assessment of potentially conflicting
marks only to a direct comparison between
them.
In addition, H. Neuman and A. Galdeano
del Sel alleged that it was erroneous for the
Court to conclude that the facial expressions
of the two figures determine the overall
impression. However, this issue exceeded
the scope of the legal control of the ruling
and could not be examined by the Court of
Justice.
The Court therefore ruled that the judgment
of the EU General Court was correct.
Source: curia.europa.eu
EU – Secondary distinctive
capacity of the ‘PAGINE GIALLE’
– ruling of the EU General
Court
On 1 April 1996, Seat Pagine Gialle SpA
submitted an application for registration of
the Community trade mark ‘PAGINE GIALLE’.
By a decision of 15 July 1999 the company
obtained the registration of the above word
trade mark for Classes 16 and 35 of the Nice
Classification (CTM 000161380).
On 27 November 2007, the company
Phonebook of the World filed an application
for the invalidation of the Community trade
mark ‘PAGINE GIALLE’, referring to an
infringement of Article 7(1)c) and 7(1)d)
of Regulation 40/94 (currently Article 7(1)
d) of Regulation 207/2009), under which
there should be no registration of “trade
marks which consist exclusively of signs
or indications which have become part of
everyday language or are commonly used in
bona fide and established trade practices.”
The applicant also relied on the widespread
use of the term ‘pagine gialle’, which
translated from Italian means ‘yellow pages’,
and is also used to describe the applicant’s
phone book.
By a decision of 23 April 2010, the
Cancellation Division dismissed the
application for invalidity. The Cancellation
Division found that this trade mark has
acquired distinctive character within the
meaning of Article 7(3) of Regulation
207/2009, under which the refusal to
register “does not apply if the trade mark
has acquired a distinctive character in
relation to the goods or services for which the
registration is sought.”
On 9 June 2010, Phonebook of the World
subsequently filed a notice of appeal against
the decision of the Cancellation Division.
The Second Board of Appeal of the OHIM,
in a decision of 4 August 2011, upheld
the contested decision, highlighting the
fact that the mark had acquired distinctive
character through use in Italy, under Article
7(3) of Regulation 207/2009. Moreover,
according to the OHIM, the applicant had
failed to demonstrate that consumers in
the European Union possess common
knowledge of the Italian language, which is
necessary to distinguish the phrase ‘pagine
gialle’. Moreover, it was not demonstrated
that this term is understood by consumers
as a literal translation of the Spanish word
‘páginas amarillas’, the Portuguese ‘paginas
amarelas’, the English ‘yellow pages’, or the
French ‘pages jaunes’.
The case was eventually referred to the
General Court of the EU. In its ruling of
20 November 2012 (T-589/11), the Court
found that there was no irregularity in the
reasoning of the Board of Appeal, which
in its stance had expressed the view that
consumers in the European Union who
do not know Italian (a language that is not
widely known) do not understand the literal
meaning of the expression ‘pagine gialle’
and treat it only as a fanciful expression
with a distinctive character. Consequently,
the application was dismissed.
Source: curia.europa.eu
EU – The designation ‘tesa
TACK’ too similar to ‘TACK Ceys’
– ruling of the EU General Court
In a ruling of 13 November 2012 (T-555/11),
the General Court of the European Union
ruled that a decision of the OHIM refusing
to grant the German company Tesa SE
protection rights to the designation ‘tesa
TACK’ was correct. The case involved the
mark ‘tesa TACK’, for registration of which
Tesa applied to the OHIM.
The mark was submitted as a designation
of goods such as self-adhesive products
for office and home use. The company
La Superquimica SA lodged an objection
to the registration, referring to a mark
previously registered by the OHIM in Spain:
The OHIM held that the objection was
justified, and that the risk of the mark
‘Tesa TACK’ being confused with that of
the Spanish opponent stood in the way of
its being registered. The Office examined
that risk in terms of the relevant public:
prudent, reasonably well-informed Spanish
consumers, and professionals having a high
level of attention. It also held that the goods
which the two marks refer to are identical,
while the marks themselves share a certain
similarity in appearance and in how they are
pronounced, caused mainly by the use in
each of them of the word ‘tack’.
Tesa appealed against the decision to the EU
Court. In Tesa’s opinion, the OHIM placed
undue emphasis on the meaning of the
word ‘tack’ in the marks being compared.
That word, in Tesa’s opinion, is descriptive.
Tesa referred to statistical data showing
4/2012 that English is the most commonly known
foreign language in the European Union.
On that basis, Tesa tried to convince the
Court that the relevant group of consumers
understands the meaning of the word ‘tack’,
which weakens the distinctive nature of that
element.
According to Tesa, the OHIM decision
omitted the fact that the word ‘tack’ is placed
differently in the two marks. It also drew
attention to graphic differences between
the marks, especially with regard to their
colour schemes and details such as the
arrow in the earlier mark and the element of
a surface coming unstuck in the ‘Tesa TACK’
mark.
Those arguments failed to convince the
EU General Court, which ruled that the
OHIM decision was correct. The OHIM
made a correct comparison of the two
marks, and rightly held that the average
consumer perceives the mark ‘TACK Ceys’
in such a way as to mainly remember the
word ‘tack’, which is distinctive because of
its red colour and font size. The word is not
of a descriptive nature, as Tesa attempted
to claim. In Spain, familiarity with the
English language is less common than in
other European Union countries (only 27 per
cent of Spaniards are able to communicate
in English), and so consumers would not
perceive the word element ‘tack’ in terms
of its meaning. The two marks are visually
and phonetically similar enough for it to
be held that there is a risk of their being
associated with each other, entailing the
risk of consumers being misled. For those
reasons, the Court upheld the position of the
OHIM that the mark ‘Tesa TACK’ should not
be granted protection.
Source: curia.europa.eu
Trade marks and unfair competition
EU – Similarity of goods
belonging to different classes
– ruling of the EU General Court
In a ruling of 21 November 2012, the
European Union General Court dismissed an
appeal by the Polish company Atlas sp. z o.o.
against a refusal to register the Community
word mark ‘Artis’. During the proceeding
before the OHIM, an objection in the matter
was lodged by the holder of an earlier French
word mark of the same name. The OHIM
refused to register Atlas’s mark because of
the risk of consumers being misled. Because
the marks are identical, the discussion
focused on the following issues: whether
a similarity exists between the goods the two
marks refer to, whether the goods are offered
to the same group of consumers, and whether
they are offered through the same distribution
channels.
The earlier French mark is registered in
Classes 1 and 19 of the Nice Classification,
including for glues and adhesive materials,
synthetic resins, and non-metallic building
materials. The mark for which Atlas sought
registration refers mainly to paints and
lacquers, primers, protective layers for walls
and other materials, and moisture insulation
materials in Classes 2 and 17.
The ruling is interesting because the case
involves no direct overlap whatsoever
between the scope of goods covered by the
earlier French mark and the goods for which
Atlas sought registration. What is more, the
goods belong to different classes of goods
under the Nice Classification. Despite this,
the Court ruled that the extreme similarity of
the marks results in a risk of confusion, and
therefore refused to register the Atlas mark.
Before the Court made a detailed
comparison of the type and function of
the goods the contested marks refer to,
however, it drew attention to other important
aspects of the case. Firstly, it held that
Atlas had not sufficiently demonstrated
that its goods and those covered by the
earlier mark are offered through separate
channels of distribution, which would mean
there was no risk of confusion, and that the
mark could be registered. The Court also
pointed out that, in legal argumentation,
a designation is not identical with the goods
to which it refers. Legally, with regard to the
similarity of disputed marks, only arguments
on the goods, their customers and the
distribution channels in which they are
offered carry weight.
With regard to the main problem of the
ruling at issue, the Court of First instance
noted that the fact that the goods being
compared belong to different classes of
goods does not rule out their being similar.
Separate classes of goods do not eliminate
the necessity of making a detailed analysis
of the types of goods in terms of their
possible similarity. Further, given that the
contested marks are identical, account
must be taken of the possible existence of
confusion on the part of consumers, even
with regard to goods whose similarity is
insignificant. The Court of First Instance
held that the goods covered by the
contested marks belong to the general
category of building finishing materials, and
are therefore similar. What is more, the
Court did not share the view of Atlas that
the goods bearing the disputed marks are
addressed to different groups of consumers;
it held that, in both cases, those consumers
may be either professionals or amateurs
involved in renovations. The result of that
conclusion was the refusal to register the
mark ‘Artis’ for the benefit of the company
Atlas.
Source: curia.europa.eu
Poland – When does an
advertisement mislead and when
does it breach good custom?
– ruling of the Supreme Court
On 25 May 2012, the Supreme Court handed
down a final ruling in an advertising dispute
between the Polish Chamber of Insurance
and Finance Intermediaries and the joint
stock company L. Towarzystwo Ubezpieceń
(‘LTU’) (I CSK 498/11). The claimant – the
Chamber of Intermediaries – accused the
insurance company of having published
advertisements in the press, internet
and television which were contrary to
the principles of fair competition. Those
advertisements showed actors in various
situations expressing sadness, accompanied
by the caption “All over Poland, insurance
agents are suffering – more than 300,000
drivers have left them for LL – no
agents, no commission”. Regarding the
advertisements, the court of first instance
agreed in principle with the claimant, and
issued a ruling in which it ordered LTU
to cease publication of such advertising
messages. The court of first instance held
that the advertisements are contrary to good
custom, although they are not misleading.
The court further obligated LTU to apologise
to the claimant, and to pay 100,000 zlotys
(though not the 1 million sought) for the
benefit of the Royal Castle in Warsaw. The
claim was dismissed in relation to another
advertisement – a commercial showing a
group of smiling people with the caption:
“Unlike drivers, agents are happy over the
increase in civil liability prices in April, so
maybe before you insure your car with an
agent, you should check the prices at LL
– 300,000 drivers are already paying less”.
In this case, the court did not find that the
advertisement was misleading or contrary to
good custom. The court of second instance
upheld the ruling of the court of first instance
in its entirety, and so the claimant and the
respondent each initiated a cassation appeal.
The Supreme Court, however, dismissed
both appeals, for the following reasons.
The claimant’s charge over an infringement
of material law, i.e. Article 16 par. 1 pt. 2
ACUC (the provision prohibiting misleading
advertising) was rejected by the Supreme
Court, for the court did not find that that
provision had been wrongly interpreted.
As the court emphasized in its justification,
the court of first instance correctly
understood that legal standard when it
pointed out that that provision prohibits
advertisements which are misleading
to customers, that is, which may evoke
a mental image regarding the goods or
services which is not in accordance with
the facts and which could influence the
customer’s decision to choose the product
advertised. In accordance with the facts
of the case accepted by the court of first
instance, the advertisements which are the
subject of the dispute are not misleading.
They only constitute a comparison between
the model of selling insurance through
an agent and that of selling insurance
directly. The court of first instance correctly
observed that the advertisements in question
encourage customers to make a price
comparison, and such encouragement is
permissible in principle. The Supreme
Court emphasized that, in assessing whether
the advertisements were misleading, both
the court of first instance and the court of
second instance had correctly applied the
correct model of a consumer accepted in
European and Polish case law, that is, that
of a consumer who is well-informed and
attentive. It is not easy to mislead such
a consumer.
The respondent charged that the court
of second instance infringed a number of
provisions of material law, placing particular
emphasis on Article 16 par. 1 pt. 1 ACUC,
that is, the provision prohibiting, inter alia,
the use of advertising which is contrary to
good custom. The Supreme Court agreed
with the courts of first and second instance
that the advertisements showing insurance
agents in a negative light are contrary
to good custom. The Supreme Court
emphasized that an honest advertisement
should be of a positive nature. This
means that the content of a permissible
advertisement should encourage the
purchase of the goods being advertised,
but should not discourage the purchase of
competitors’ goods. The Supreme Court
found that the advertisements the claim
concerned disparaged the professional
group of insurance agents. It emphasized in
the justification that, although exaggeration
and humour are generally acceptable in
advertising, the advertisements forbidden
by the court of first instance crossed the
acceptable limits.
The Supreme Court also pointed out that
there is no basis for holding that, where
a provision specifying a particular type of
an act of unfair competition is applied, as
for example the use of advertising which
is contrary to good custom, there is no
requirement to show that that act threatens
or infringes the interests of a competitor.
4/2012 Any conduct which falls within a given type
of an act of unfair competition must also
meet the premises set out in the general
clause of Article 3 ACUC.
Another interesting issue raised in this
case is the relation between resolutions
of the Advertising Ethics Commission on
the compliance of advertisements with the
Advertising Ethics Code and the exclusion
of fault of an advertiser. The Supreme
Court emphasized that the common
courts are not bound by resolutions of
the Advertising Ethics Commission. The
courts may independently assess whether
an advertisement does or does not comply
with the law. What is more, the courts
may also evaluate whether an infringement
of the provisions was deliberate or not.
The adoption of such resolutions by the
Advertising Ethics Commission does not rule
out an advertiser’s fault. LTU was righty
found guilty of an infringement to a certain
degree, and so there was a basis for ordering
payment of an appropriate sum of money to
a social cause pursuant to Article 18 par. 1
pt. 1 ACUC.
Source: sn.pl/orzecznictwo
Poland – The word ‘ciuchcia’
(‘choo-choo’) in the name of a
preschool – decision of the Court
of Appeal in Lublin
A case of a conflict over the designations
‘pomarańczowa ciuchcia’ (‘orange choochoo’) and ‘Wesoła ciuchcia’ (‘Happy
choo-choo’) was heard before the Court of
Appeal in Lublin. The owners of a network
of Warsaw preschools called ‘pomarańczowa
ciuchcia’ applied to the Regional Court
in Siedlce for an injunction against the
10 Trade marks and unfair competition
owner of the ‘Wesoła ciuchcia’ preschool
in Mińsk Mazowiecki, demanding that the
court prohibit her from using the word
‘ciuchcia’ in her business. The partnership
running the ‘pomarańczowa ciuchcia’
preschools registered the word trade mark
‘pomarańczowa ciuchia’ and the wordfigurative trade mark ‘pomarańczowa
ciuchcia przedszkola’.
by such factors as the designation of the
entity responsible for running the preschools,
the scope of educational services provided,
the staff, and the manner in which those
services are financed.
In its application for an injunction, the
partnership showed that the use of the word
‘ciuchcia’, which comprises a significant
part of the trade mark, causes a danger of
consumers being misled. In the opinion
of the owners of ‘pomarańczowa ciuchcia’,
the use of the designation ‘Wesoła ciuchcia’
infringes on the protection rights they enjoy.
On 16 October 2012, the Supreme Court of
Administration (SCA) dismissed a cassation
appeal by Przedsiębiorstwo ProdukcyjnoHandlowe ‘EVELINE COSMETICS’ Kasprzycki
P.H. (‘Eveline Cosmetics’) against a ruling
by the Provincial Court of Administration in
Warsaw of February 2011. The contested
ruling concerned an appeal by the company
against a decision by the Polish Patent Office
refusing to grant a protection right to the
word-figurative mark ‘FRUIT & CARE’.
The Regional Court in Siedlce did not grant
an injunction in the case. In the Court’s
opinion, there is no basis for prohibiting
another business from using the word
‘ciuchcia’ in the name of the outlet it runs.
The registered trade marks ‘pomarańczowa
ciuchcia’ and ‘pomarańczowa ciuchia
przedszkola’ do not give the trade mark
holder a monopoly on the word ‘ciuchia’,
which is devoid of distinctive capacity.
The Court of Appeal in Lublin agreed with
that evaluation (I ACz 1156/12), and rejected
the argument of the applicant that there
was a risk of consumers being misled. This
results, firstly, from the fact that the outlets
of the two preschools are run in two different
locations (‘pomarańczowa ciuchia’ in Warsaw
and ‘Wesoła ciuchcia’ in Mińsk Mazowiecki).
Secondly, the risk of confusion is mitigated
Source: Rzeczpospolita, 18 December 2012
No. 295/2012; uprp.gov.pl
Poland – ‘FRUIT & CARE’ and
‘FRUIT CARE’ are similar marks
– ruling of the Supreme Court of
Administration
In March 2007, Eveline Cosmetics submitted
an application to the Polish Patent Office
for a protection right to the word-figurative
trade mark ‘FRUIT & CARE’. That mark was
to be designated for goods from Class 3 of
the Nice Classification (cosmetics), namely
eyebrow pencils, eyeliners, lipsticks and lip
balms, glosses and nail polish. The PPO
informed the applicant in writing in April
2008 that it had checked the patentability of
the mark and found that the mark submitted
is similar to the word-figurative mark ‘FRUIT
CARE’ registered for goods in the same class
– hair care products, with priority as from
29 June 2001, for the benefit of Fabryki
Kosmetyków Venita sp. z o.o.
Consequently, in a decision in November
2008, the PPO refused to grant the applicant
a protection right to the word-figurative
trade mark ‘FRUIT & CARE’. The main
reason for the decision was the existence
of a real possibility of the mark applied for
being associated with the earlier mark. Both
marks contain the same words, which are
the dominant elements. In the view of the
Office, the finding that the marks are similar
is due to the overall impression that they
make on buyers, who as a rule perceive and
retain only a general impression of a mark.
In the case of the marks at issue, for the
average consumer the differences between
them are unnoticeable, all the more so since
such a consumer does not often have the
opportunity of comparing them at the same
time. Even if a buyer perceives differences
between the marks, there is still a strong
likelihood that he or she will consider one
another variety of a mark from the same
producer. That argument is all the more
justified in that nowadays more and more
manufacturers are producing a whole line of
cosmetics. The Office also emphasized that
both marks are designated for cosmetics,
and have the same market.
Eveline Cosmetics applied to the PPO
for reconsideration of the case. In the
company’s opinion, producers use the
same name and image to identify products
having the same purpose, and not to identify
various product lines of the same producer.
The applicant further pointed out that both
marks contain the words ‘FRUIT’ and ‘CARE’
– creating the phrases ‘fruit care’ and ‘fruit
and care’. The colloquial use of the phrase
‘fruit care’ for cosmetics is obvious and
widespread. The visual presentation of the
marks, however ‘FRUIT CARE’ and ‘FRUIT
& CARE’ is distinctive in each case, for
each contains an element of fantasy and
constitutes a unique composition in terms
of the graphic layout of the inscription and
the font used. The PPO again refused to
grant registration. Eveline Cosmetics then
filed an appeal to the PCA, moving that the
decision be overturned. In the appellant’s
opinion, the marks are different, and the
Office wrongly focused only on their verbal
aspects. In justifying its position, the
appellant further claimed that the Nice
Classification is an ordering system, and the
fact that two different products belong to the
same class does not necessarily mean that
they are similar. On 18 February 2011, the
PCA dismissed the appeal.
Eveline Cosmetics therefore lodged
an appeal with the SCA, charging that the
PCA had infringed procedural provisions
important to the outcome of the case,
including: the absence of the PPO decision
being invalidated for having been addressed
to an entity which was not a party to the
proceedings (the PPO mistakenly addressed
the decision to a natural person rather than
to the company), the failure to acknowledge
the justifiable claims in the appeal against
the PPO decision, and the acceptance of
a factual status which did not correspond
to the actual facts of the case. According
to the appellant, this led to a situation in
which the PCA ruled, without conducting
a detailed analysis of all levels of perception
of the marks at issue, that the marks are
similar. Within the scope of material law,
the appellant accused the court of wrongly
interpreting the provisions when it stated
that an assessment of the similarity of marks
need not be an overall assessment and
may be limited to a comparison of only their
verbal elements.
The SCA ruled that the trade mark consisting
of the words ‘FRUIT’ and ‘CARE’ “placed
beside each other, between two horizontal
lines, written in capital letters in italics,
without any colour scheme reserved,
connected with the punctuation mark ‘&’ and
without any additional graphic elements” is
similar to the mark composed of the same
words ‘FRUIT’ and ‘CARE’ “placed on two
lines, written in capital letters in a straight
font, without any colour scheme reserved and
without any additional graphic elements”.
The SCA emphasized that the marks were
evaluated overall, taking particular account of
their dominant element, the two words.
In this connection, the findings of the
semantic and phonetic analyses of both words
in that form in Polish is of little importance,
and the absence thereof should not be held
against the Court of First Instance.
The SCA also held that in its ruling the PCA
had presented the main reasons why the
PPO issued the decision it did. The Court
of First Instance stated that it shared the
view of the authority with regard to the three
most important issues, i.e. the similar type
of goods, the similarity of the marks due to
the identity of the dominant verbal elements
appearing in each case, and the risk of the
later mark being associated with the earlier
one. As a result, the charge that the PCA
had failed to exercise proper control over the
PPO decision was deemed groundless.
4/2012 11
The SCA also concurred with the opinion
of the PPO and the Court of First Instance
that in this case it was necessary to consider
whether there existed a risk of consumers
being misled, and in particular a risk of
the mark applied for being associated with
the earlier mark. The SCA held that “given
the similar type of goods, the identical
dominant elements of both marks, the same
distribution system and same customers, the
risk of confusion, and in particular that of the
two marks being associated with each other,
was correctly established”.
In addition, the Court considered the charge
of an infringement of procedural law as
claimed by Eveline Cosmetics. It found,
however, that that charge was groundless,
because the party to the proceeding could
be and was the owner of the business,
and the PPO decision concerned his legal
interest, was addressed and delivered to his
attorney, and the party to the proceeding
was improperly specified only as a result of
an error by the authority.
Source: orzeczenia.nsa.gov.pl; uprp.gov.pl
Poland – ‘Green Point’
a general information mark
– ruling of the Supreme Court
of Administration
In November of 2012, the SCA dismissed
a cassation appeal submitted by Rekopol
Organizacja Odzysku S.A. (‘Rekopol’)
and Der Grüne Punkt – Duales System
Deutschland against a ruling by the
Provincial Court of Administration in Warsaw
on a decision by the Polish Patent Office
in the case of the expiry of a right from the
registration of the international figurative
mark ‘Der Grüne Punkt’ (‘Green Point’).
12 Trade marks and unfair competition
use of the mark in a “real” way, and stated
that this was not the case. Both the trade
mark holder and the licensee appealed to the
PCA, maintaining their positions with regard
to material law.
In 2005, Zakład Gospodarki Komunalnej
Organizacja Odzysku Biosystem S.A.
(‘BIOSYSTEM’) approached the PPO with
an application on the expiry of a right from
the registration of the international figurative
trade mark ‘Green Point’, showing two
contrasting arrows, one black and the other
white, inscribed in a circle. The mark was
designated for goods in classes from 1 to
42 of the Nice Classification, with certain
exceptions. BIOSYSTEM argued that the
mark had degenerated through its common
use in trading. The company showed that
the designation had come to have meaning
only as providing general information
indicating products whose packaging can be
recycled. Therefore, the company derived
its legal interest from the right to use such
a general information designation. Rekopol
and its German licensor demonstrated that
BIOSYSTEM has no legal interest, and the
sign has not lost its distinctiveness. In April
2008, the PCA overturned the first decision
of the PPO in the case, rejecting the motion
for expiry of the right. The applicant then
submitted a further motion to the PPO. This
time, it additionally raised the charge that the
mark was out of use, and that consumers
could be misled. In July 2010, the PPO
confirmed the expiry of the right from the
international registration of the mark ‘Green
Point’, ruling in favour of the legal interest
of BIOSYSTEM and that the contested mark
no longer serves a distinguishing function.
The Patent Office also raised the issue of the
The PCA, however, dismissed both appeals.
It showed that the basis for issuing the
contested decision was Article 169 par. 1 pt.
1 and par. 2 IPL. Those provisions state that:
“a protection right for a trade mark expires as
a result of not using the registered trade mark
in a real way for the goods covered by the
registration within an uninterrupted period
of 5 years, unless there exist serious reasons
for that lack of use”. The Court agreed with
the PPO’s assessment that the applicant,
engaged in competitive activity in relation to
the trade mark holder, has a legal interest in
the matter, which is a necessary condition for
submitting such a motion.
The PCA then addressed the issue of
the “real use” of the mark, relying, in the
absence of any direct definition of that
concept, on case law and the legal literature.
It found that a mark must be used in a way
which corresponds to its basic function of
identifying goods and services such that
a consumer could associate those goods and
services with their designation. The Court
also held that not every form of use of
a mark set out in Article 154 IPL is sufficient
to maintain the protection right to a mark.
The obligation to demonstrate proper use
of a mark rests with the holder of the mark.
In the case at hand, the German company
should show the PPO that the ‘Green Point’
mark was used in Poland in a real way,
with regard to identifying both goods and
services. The PCA ruled that the dispute at
issue therefore leads to a determination of
whether placing the figurative mark on goods
of various brands fulfills that assumption.
Further on in its analysis, the PCA held
that the ‘Green Point’ mark does not meet
the prerequisite for being deemed a trade
mark under Article 120 par. 1 IPL, because
of its lack of distinctiveness. Neither the
trade mark holder nor the Polish licensee
were producers or distributors of the goods
bearing the contested mark, nor had they
ever marketed such goods in Poland. The
mark was, therefore, not used in accordance
with its function, that is, in order to identify
goods or services deriving from a specific
supplier of goods or services. The PPO
rightly held that the evidence presented on
the circumstance of the wide use of the mark
by other entities is insignificant in this case.
Both the trade mark holder and the licensee
submitted cassation appeals against the
PCA ruling. Rekopol referred to all of the
charges against the PPO decision which the
Court of First Instance failed to consider,
concentrating on the lack of recognition of
the evidence on the circumstance of the
use of the mark. According to the German
company, BIOSYSTEM – a direct competitor
– was striving to block businesses from using
and creating licenses for its own designation.
The German company also claimed that
the designation is used as a services mark,
and so it should not be evaluated in terms
of its being placed on products in order to
distinguish them.
The SCA held that the appeals were
unjustified. It determined that BIOSYSTEM
has a legal interest, and could submit
a motion on the expiry of the protection right
to the trade mark at issue. In addition, the
Court noted that “the legal interest must
be direct, specific and real” and that “the
entity which demonstrates the likelihood
that respecting another party’s exclusive
right will make it impossible to conduct
economic activity on equal terms with the
authorized entity, while at the same time
demonstrating that the registered mark is not
properly functioning, and in particular does
not act as a trade mark, has a legal interest
in initiating a proceeding on the expiry of the
mark”. The authorized party did not itself
use the mark in Polish territory – this was
done only by the licensee, which granted
further licenses to producers of various
goods. What is more, it did not itself perform
the agreements on assigning the obligation
to recover waste from businesses which
purchased such a license, but entrusted
this to other companies acting in the same
industry. Therefore, the method in which the
contested mark was used did not at all fulfill
the function ascribed to trade marks.
The ‘Green Point’ mark has been used
in trading for more than 20 years, and
has been reserved in Poland since 1997.
Consumers know it very well, because it is
placed on tens of thousands of packages of
various goods. The view, then, is commonly
accepted that packaging bearing that mark
can be reused or recycled. Promoting that
message is important enough for producers
of goods that they are interested in the
possibility of placing the mark on packages
of their goods, and that right can only be
granted to them by Rekopol, acting as one of
many organizations which recover packaging
waste. In the SCA’s view, “restricting access
to a designation which has a different
function than that of a trade mark in the
meaning of Article 120 IPL constitutes a
restriction of freedom of economic activity
beyond the conditions set out in the
provisions of law”.
Source: orzeczenia.nsa.gov.pl;
rzeczpospolita.pl; uprp.gov.pl; rekopol.pl
Poland – ‘asmix łaciaty’
and ‘Masmix’ – ruling of the
Provincial Court of Administration
in Warsaw
The PSA in Warsaw recently overturned
an erroneous decision by the Polish Patent
Office on the partial invalidation of the
protection right to the mark ‘asmix łaciaty’
(VI SA/Wa 1395/12).
The invalidation of the protection right to
the mark was made in result of an objection
to the registration of the mark raised by the
entity holding the marks ‘Masmix’. In the
objection, it was argued that the mark
‘asmix łaciaty’ feeds on the renown of the
previously promoted ‘Masmix’ marks, while
the designations themselves are very similar,
and the goods they identify identical.
In its own defence, the holder of the
contested mark ‘asmix łaciaty’ referred to
evidence on the renown of the designation
‘łaciate’ (‘spotted’), from which the main
element of the disputed mark derives. It also
argued that the designation ‘asmix’ arose as
a combination of the designation ‘as’, which
it had previously registered, and the popular
element ‘mix’, used to identify products
which are a mixture of edible fats. In the
view of the authorized party, there exists
a risk of confusion between the two marks,
including the risk of an association with the
earlier ‘Masmix’ mark.
As the Court emphasized, the Patent
Office incorrectly determined the factual
4/2012 13
status. In its decision on invalidation, it
stressed that the mark was registered for
goods in Classes 5, 29, 30 and 32. At the
same time, in reality, the protection right
covered only goods from Class 29. There
was also an error with regard to the goods
themselves – the Patent Office invalidated
the protection right with regard to chocolate
butter and cocoa butter, among others, when
those goods were not covered at all by the
protection right. The Office also completely
neglected the arguments of the holder of the
‘asmix łaciaty’ mark concerning the way in
which the mark arose. The decision of the
Patent Office was therefore overturned.
Source: orzeczenia.nsa.gov.pl
Poland – Remarks on an
objection to a decision to grant a
protection right for the trade mark
‘Sekret Mnicha’ (‘Monk’s Secret’)
– ruling of the Provincial Court of
Administration in Warsaw
On 6 November 2012, the PCA in Warsaw
issued ruling VI SA/Wa 1444/12, in which
it dealt with fundamental issues concerning
an objection to a decision on granting
a protection right to the trade mark ‘Sekret
Mnicha’.
An objection aimed at the invalidation of
a protection right to a trade mark may
be brought by anyone, as opposed to the
submission of a motion for invalidation.
The person submitting the objection need
not show a legal interest in the invalidation
of the protection right to the trade mark,
whereas a person submitting a motion having
the same aim must demonstrate such a legal
interest. The six-month statutory term for
14 Trade marks and unfair competition
raising an objection is not a procedural
term, which can be restored, but is a term
of material law resulting from the Industrial
Property Law Act, and is not subject to
reduction, extension or restoration.
In Article 246 par. 1 IPL, the legislator
rigorously set forth the time frame for
submitting an objection, as well as additional
requirements for submission ensuring that
an objection must be motivated. The basis
for an objection is circumstances which
justify the invalidation of the protection
right concerned. In the opinion of the
Court, for a motion by an entity demanding
the invalidation of a protection right to
a trade mark to meet the requirements of
an objection, it should contain the rationale
for the demand, and the objection and
that rationale should be submitted to the
PPO within 6 months following the date of
publication of information on the granting
of the protection right in the PPO Bulletin.
Only when all of those conditions have been
met can an objection be raised by anyone,
and not solely by a person who shows a legal
interest in demanding the invalidation of the
protection right.
In this case, the objection was raised within
the required time period, but it did not
contain the required justification established
as the basis for an objection, namely, the
circumstances justifying the invalidation
of the protection right. In the opinion of
the Court, it is difficult to consider the
mere legal basis of the objection as such
circumstances. The justification to the
objection did not present any circumstances
as referred to in Article 246 par. 2 IPL.
As stems from the justification, even the
party submitting the objection acknowledged
that the justification was insufficient, stating
that it would send the detailed content
thereof at a later point in time. This took
place, however, after the lapse of the time
period specified in Article 246 par. 1 IPL.
The charges of an infringement of the
procedural provisions set out in the objection
to the PCA were not justified, and therefore
the PCA dismissed the appeal. In its ruling,
the PCA also held that the PPO was not
obliged to gather evidence at its own initiative
showing the justifiability of the positions of
the parties in the administrative proceedings
pending under the dispute procedure. The
evidentiary initiative in the proceedings rests
on the parties to the proceedings, while
the public authority is only responsible for
evaluating the evidence submitted. In the
view of the Court, the PPO correctly assessed
the evidence in the case.
Source: orzeczenia.nsa.gov.pl
Poland – An unregistered
trade mark cannot be subject
to depreciation – ruling of the
Provincial Court of Administration
in Rzeszów
Under a ruling by the PCA in Rzeszów of
27 September 2012 (I SA/Rz 639/12),
a trade mark may be subject to depreciation
only if it is registered by the Patent Office.
The Director of the Tax Chamber refused
to acknowledge depreciation write-downs
concerning the trade mark of the company
PPHU ‘A’ sp. z o.o. That company began
making depreciation write-downs before
the mark was registered by the Patent
Office. The company appealed to the PCA
against the decision of the Tax Chamber
Director, claiming an infringement by the tax
authority of Article 16b par. 1 pt. 6 of the Act
on Income Tax from Legal Persons in the
wording from 2006. That provision stated
that “rights (…) to trade marks” are subject
to depreciation. The company held that this
refers to the right to use a mark which it had
acquired by way of an in-kind contribution.
It emphasized that it had effectively acquired
such a right, and the issue of the registration
of the mark by the Patent Office was of no
consequence.
Poland – Similarity of association
of figurative designations – ruling
of the Court for Community Trade
Marks and Industrial Designs
The appellant justified its position with the
argument that the mark for which it had
been making depreciation write-downs was
capable of being exploited economically.
The company also pointed out that, in the
case of works, no formalities whatsoever are
required to obtain protection. A trade mark
may constitute a work, and so the above
provision should also apply when interpreting
tax law.
The claimant in the case is a leading
Austrian company which has existed since
1871 and is involved in the production
of farming and forestry machines. The
claimant has been present on the Polish
market since 1999, and holds a number
of trade marks, including the Community
word mark ‘PÖTTINGER’, registration
number CTM 4887055, and the Community
figurative mark, registration number CTM
4888483, in the form of a four-leaf clover.
Those marks were submitted and enjoy
protection for goods in Classes 7 and 12 of
the Nice Classification, mainly for all types of
agricultural equipment and vehicles.
The Court did not agree with the company’s
arguments, and dismissed the appeal. In its
justification to the ruling, it emphasized that
the right to a trade mark in the meaning of
the provisions of tax law means a protection
right to a trade mark, and a protection right
arises only upon the registration of the mark
by the Patent Office. Before that point
– between the submission of a mark and
its registration – no protection right exists.
The PCA did agree that a trade mark can
exist and be used irrespective of whether
it has been registered, but held that the
provision of the tax act refers to a “right to
a trade mark” and not the “factual state
of the existence of a trade mark”. For this
reason, an unregistered mark for which no
protection right has yet been granted is not
subject to depreciation.
Source: orzeczenia.nsa.gov.pl
On 20 August 2012, the Regional Court in
Warsaw, hearing a case pertaining to the
protection of Community trade marks, issued
ruling XXII GWzt 18/12.
The respondent’s business activity also
involves the production and sale of farming
and forestry machines identified by the
designations shown below, which use the
same fantastic graphic element consisting of
three cubes arranged diagonally.
In the opinion of the claimant, the figurative
marks used by the respondent are
deceptively similar to the claimant’s trade
marks; the use of the clover motif may
mislead consumers of goods bearing the
trade marks of the claimant and respondent,
which are unrelated to each other.
In principle, the Court agreed with the
claimant’s demands, including that of
prohibiting the respondent from using the
graphic concerned in trading. The Court
pointed out that there had been a disruption
of the basic function of the trade mark of the
claimant, that of guaranteeing consumers
the possibility of determining the origin
of goods bearing the mark in question.
The claimant’s mark, somewhat altered but
maintaining the same concept, had been
incorporated into the respondent’s mark
which, although significantly different from
that of the claimant, nevertheless evokes
an association with it.
In view of the fact that, in addition, the goods
identified by the marks are identical, there
is a likelihood of consumers being misled.
A considerable part of the relevant public
may be induced to mistakenly purchase
goods of the respondent, thinking that they
are goods of the claimant, or thinking that
the goods derive from companies which
are economically related. In the opinion of
the Court, a risk of confusion exists, and
therefore there is also an infringement of the
registration rights.
The Court also ruled in favour of the
claimant’s assertion that, in infringing the
exclusivity resulting from registration of the
Community trade mark, the respondent
committed an act of unfair competition
involving the use of misleading designations
for goods.
Source: warszawa.so.gov.pl
4/2012 15
Poland – Dispute over the domain
‘juventa.pl’ – ruling of the Court
of Conciliation for Internet
Domains at the Polish Chamber
of Information Technology and
Telecommunications
On the website of the Court of Conciliation
for Internet Domains at the Polish
Chamber of Information Technology and
Telecommunications, a recent ruling issued
on 1 March 2012 has been published.
The dispute ruled on concerned the use by
the respondent of the domain ‘juventa.pl’.
The company Program Juventa sp. z o.o.
has been active in the pharmacy business
for many years, operating under a business
name containing the element ‘juventa’.
Since 2007, the claimant has enjoyed
a protection right to the word-figurative trade
mark ‘Juventa’. The Court agreed with the
claimant’s assertions, and ruled that, in
registering the domain name ‘juventa.pl’,
the respondent infringed the rights of the
claimant. The respondent, which is not
the holder of any trade marks, acquired
the registration of the domain ‘juventa.pl’,
and in using it obtained a factual monopoly
on the use of the domain on the internet,
thereby infringing the exclusive rights of
the claimant, i.e. the protection right to the
word-figurative trade marks having numbers
R-198540, R-199245 and R-199251,
shown below. The Court emphasized
that, with regard to internet domains, the
subject of evaluation is the similarity of the
domain name to the verbal element of the
protected designation. In the case at hand,
the unlawfulness of the respondent’s action
could not be ruled out since the respondent
16 Trade marks and unfair competition
holds no protection rights to any trade
marks whatsoever containing the contested
word. Moreover, the Court found that the
respondent had acted in bad faith, for the
respondent once held a managerial position
at the claimant, and therefore must have
known about the claimant’s registration of
the trade marks. That bad faith means that,
even if the respondent does not actually use
the domain, there is an infringement of the
claimant’s rights.
In the opinion of the Court, the respondent’s
action should be deemed an act of unfair
competition, namely, obstructing other
companies from obtaining access to the
market. The respondent prevented the
claimant from using the domain juventa.
pl when in its activities the claimant was
legally using registered word-figurative
marks identifying the claimant itself and
the products it offers. Such “blocking”
registrations should not be allowed.
The Court also held that there had been
an infringement of the claimant’s personal
rights consisting of an internet domain which
identifies and individualizes a given entity in
trading.
Source: piit.org.pl
Poland – Blocking registration of
a domain and use of a trade mark
– a dispute over the domain
‘autoświat.pl’ – ruling of the
Court of Conciliation for Internet
Domains at the Polish Chamber
of Information Technology and
Telecommunications
Recently, on the website of the Court of
Conciliation for Internet Domains at the
Polish Chamber of Information Technology
and Telecommunications, a ruling was
published concerning a claim by the
publisher of the weekly magazine Auto
Świat, the company Ringier Axel Springer
Polska. The ruling ended a dispute with
the subscriber of the domain ‘autoświat.pl’.
The Court ruled in favour of the publisher,
holding that the actions of the respondent
constituted an infringement of the protection
rights to trade marks.
At the moment the ruling was issued, the
domain ‘autoświat.pl’ did not lead to any
website. Previously, however, it had been
connected with a website which merely
provided information that the domain was
‘parked’ at the holder of the domain. The
Court held that the domain subscriber
had infringed the protection rights to trade
marks belonging to the claimant. In the
justification, the Court emphasized that the
use of a trade mark in trading can occur in
various forms, and that one of those ways
is to publish the mark on a website domain.
Case law was referred to in this regard. For
the use of a mark on an internet domain to
be deemed the use of the mark in trading,
the issue of whether the domain actually
leads to any website is irrelevant. The Court
emphasized that, in respect of disputes
over internet domains, even the passive
use of a mark should be deemed the use
of the mark in trading. The provisions of
law, however, prohibit the unlawful use of
trade marks in trading, and therefore, the
registration of the domain ‘autoświat.pl’
infringes the rights of the publisher of the
weekly magazine Auto Świat resulting from
the registration of the trade marks.
The Court also referred to the Uniform
Domain Name Dispute Resolution Policy
of ICANN (the corporation responsible for
determining the structure of the system for
creating internet domains and supervising
the global DNS server system) which applies,
inter alia, to highest-level domains (such
as ‘.com’). As the Court pointed out, in
accordance with those rules, the ‘passive
retention’ of a domain should be deemed as
an act in bad faith.
Source: piit.org.pl
4/2012 17
Other issues
Poland – Logo for Polish Vodka
In the last issue of the bulletin we reported
that, on 13 January 2013, an act of law
entered into force amending the Act on
the Production of Spirit Drinks and on the
Registration and Protection of Geographic
Designations of Spirit Drinks. That act
introduces a new definition of a product,
under which it is permissible to use the
geographic mark ‘Polska Wódka/Polish
Vodka’. Both the natural ingredients of
spirits bearing that appellation and the entire
production process must be located within
Polish territory. The detailed requirements
for the ingredients are defined in the Act.
The Polish Vodka Association (PVA), which
gathers together persons, companies and
institutions wishing to protect the tradition
and value of the Polish spirits industry,
decided to use that situation to promote
domestic vodka abroad. On the basis of the
Act adopted and its own statutory goals, the
PVA developed a programme entitled ‘Polish
Vodka’ and took steps aimed at promoting
the qualities of products which meet the
criteria for being identified as ‘Polish Vodka’.
A series of word-figurative designations was
developed for that geographic identity.
18 Trade marks and unfair competition
Those designations may be placed on
products which meet the statutory criteria,
in order to promote their quality and as
a guarantee that those criteria have been
met. The body authorized to grant the right
to use the marks is the PVA. The right to
use the PVA marks may be granted to any
producer which signs up to the PVA’s ‘Polish
Vodka’ programme and whose product meets
the criteria set out in the Act (the details are
set out in the relevant regulations). Before
granting a right to use its marks, the PVA
has the right to inspect the ingredients and
production process used. A right to use the
‘Polish Vodka’ designation can be rescinded
if the producer no longer meets the criteria
of the amended Act. The first brands
submitted for the ‘Polish Vodka’ programme
are Wyborowa, Pan Tadeusz and Luksusowa.
Source: rzeczpospolita.pl; pva.org.pl; PVA
press materials
For further information please, contact:
Oskar Tułodziecki
Oskar.Tulodziecki@klgates.com
Agata Lewartowska-Błaszczyk
Agata.Lewartowska-Blaszczyk@klgates.com
Ewelina Madej
Ewelina.Madej@klgates.com
Ewa Rusak
Ewa.Rusak@klgates.com
Marta Wysokińska
Marta.Wysokinska@klgates.com
Michał Ziółkowski
Michal.Ziolkowski@klgates.com
If you are interested in obtaining an electronic version of the bulletin, please send your request
to: Emilia.Pisarek@klgates.com with the subject line: “TM Bulletin”.
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