It is my pleasure to present the latest edition of our bulletin, which is replete with coverage of interesting events, both in Poland and in the rest of the European Union.
Work continues on a draft directive concerning the protection of classified commercial information. We report on that regulation in this issue, and will keep you informed of progress in future issues. We also report on a communication from the European Commission to the European Parliament, the Council and the European Economic and Social Committee on the enforcement of intellectual property rights. The Commission initiated a process of consultations on priorities in the issue of combating violations of intellectual property. It also set out ten directions for measures it intends to take in this regard. EU authorities are placing ever greater importance on the fight against counterfeit goods. The form that fight takes will also affect how violations are dealt with in practice, and so it is vital to be up to date on the legal framework in which that battle is fought. This is why initiatives such as the one described are good news. We also report on training for appeal prosecutors from throughout
Poland organized by Interpol, which covered the most important issues relating to combating organized crime, including intellectual property crime. The fight against counterfeiting is taking on international proportions, and so cooperation among lawyers from various countries is a positive development.
The aim of our bulletin is to make interesting, important court rulings concerning intellectual property available to our readers in an enjoyable form. This time we pay particular attention to a ruling of the European Court of Justice on the registration of a trademark for commercial sales premises. This could lead to increased interest in protecting the arrangement of stores and outlets in the way discussed in that ruling. The decision is certainly interesting, and for some very controversial. It opens a new chapter in the field of service marks.
I hope you enjoy this issue – and as always, I welcome your comments and reflections, which can only help to enhance the quality of our bulletin.
Oskar Tułodziecki
K&L Gates Jamka sp.k.
Plac Małachowskiego 2
00-066 Warszawa, Polska www.klgates.com
T: +48 22 653 4200 F: +48 22 653 4250

EU – Closer to the directive on the protection of classified commercial information ..... 4
EU – Communication from the Commission to the European Parliament, the Council and the European Economic and Social Committee concerning the enforcement of Intellectual Property Rights. A European Union action plan ................ 4
EU − The jurisdiction for acknowledging a claim of trademark infringement: analysis of a ruling by the Court of Justice of the European Union ............................. 6
EU − The fit-out of sales premises a trademark? Ruling of the Court of Justice of the European Union ............................................................................................. 6
EU − The individual character of an unregistered industrial design: ruling of the Court of Justice of the European Union ............................................................... 7
EU − In a proceeding before the Court, new claims cannot be raised: ruling of the Court of Justice of the European Union ............................................................... 8
EU − The color red sparks a dispute between banks. The secondary distinctiveness of a trademark: ruling of the Court of Justice of the European Union .......................... 9
Poland − A business name can have priority over the registration of a trademark containing a similar element: ruling of the Supreme Administrative Court ................. 10
Poland − Are dietary supplements and vitamin-enhanced beverages really dissimilar? Ruling of the Provincial Administrative Court in Warsaw .......................... 12
Poland − Depreciation of a trademark that is in the procedure of registration: ruling of the Provincial Administrative Court in Poznan ............................................ 13
Poland− “MIKSEŁKO” vs. “MILKSEŁKO ŁACIATE”: ruling of the Supreme
Administrative Court in regard to a decision of the Polish Patent Office .................... 13
Poland − “Illegal trade in goods and crime against intellectual property” – training for prosecutors organized by INTERPOL ..................................................... 15

Work is under way on the form of a directive for protecting classified know-how and classified commercial information (business secrets) against their being illegally obtained, used or disclosed. We reported in Bulletin
1/2014 on a draft initially presented by the
European Commission. The preliminary text of the directive was the subject of discussion by working groups at the Council, and the results have been published by the General
Secretary of the Council as recommendations concerning the acceptance of the directive on its first reading. In a document dated
19 May 2014, the Council presented the general approach it had worked out in recent months concerning the harmonization of this area of the law.
Talks held at the working group level have resulted in changes to the original text of the directive. Member states agreed on the need to state clearly in the draft that domestic law may provide protection against the illegal obtainment, use or disclosure of business secrets, which is stricter than that required at the EU level.
In the most recent version of the text, the list of acts constituting a violation of the law has been simplified, and explanations have been introduced on how business secrets can be obtained legally.
The main changes made in the draft concern an extension of the proposed timebarring period for civil law claims. Initially, this was to have been from one to two years from the moment at which a party learned or should have learned of the last event that provided cause for the pursuit of a claim.
It is now proposed to extend this period to six years.
In accordance with EU legislative procedure, the draft will now be considered by the
European Parliament.
Source: www.eur-lex.europa.eu www.register.consilium.europa.eu
The European Commission initiated a consultation process concerning the priorities in regard to the fight against infringement of Intellectual Property Rights.
The document contains ten points specifying most important actions:
1. The Commission intends to promote the Observatory’s on Infringements of Intellectual Property Rights and national authorities’ efforts to launch and monitor a new generation of targeted communication campaigns.
This does not concern only campaigns to raise awareness amongst citizens, especially young people on the economic harm caused by commercial scale IP infringements and on the potential health and safety risks associated with
IPR-infringing products but also campaigns to highlight the benefits for consumers from choosing IP respecting products and to facilitate access to such products.
2. The Commission will launch a series of consultation actions with all relevant stakeholders including civil society on applying due diligence throughout supply chains as a means to prevent commercial scale IP infringements. On the basis of the collected information it intends to develop an EU due-diligence scheme for this purpose. It will, in the first instance, seek to encourage the voluntary take-up of the scheme that it will monitor closely to determine if further initiatives are required.
3. The Commission will facilitate the development of further voluntary memoranda of understanding to reduce the profits of commercial scale IP infringements in the online environment, following stakeholder dialogues involving advertising service providers, payment services and shippers.
4. The Commission intends to analyze and report on existing national initiatives seeking to improve IP civil enforcement procedures for SMEs, in particular in respect of low value claims and consider possible action in this field.
5. The Commission will issue a green paper to consult stakeholders on the need for future EU action based on the best practice found in nationally financed schemes assisting SMEs to enforce their
IP rights.
6. The Commission will issue a green paper to consult stakeholders on the impact of chargeback and related schemes to tackle commercial scale
IP infringements. On this basis, it will
4 Trade marks and unfair competition

explore the need and scope for taking concrete action in this field.
7. The Commission will establish a member state expert group on Intellectual
Property enforcement, where member states could share best practice on the work within the EU of all their concerned authorities and be informed on the delivery of this action plan.
8. The Commission will support the observatory in the development of a comprehensive set of sectoral IP enforcement related training programmes for member state authorities in the context of the single market.
9. The Commission intends to develop, promote and publish a guide on best practice for public authorities to avoid purchasing counterfeit products.
10. The Commission shall publish a biennial report on the economic impact of the
EU’s IP policy that could serve as a more effective monitoring tool for the EU’s new
IP enforcement policy as set out in this
Communication.
The above points have been provided for public consultations which are currently taking place.
Source: www.ec.europa.eu
3/2014 5

The Court of Justice ruling in question was handed down on 5 June 2014 in case
C-369/12. The company Coty Germany
(“Coty”), a producer and distributor of perfumes and cosmetic products, is the right holder to a three-dimensional black-and-white Community trademark,
No. 003788767, comprising a bottle, registered for perfume products. Coty sells women’s perfumes of the name “Davidoff
Cool Water Woman” in colored bottles bearing inscriptions that are modeled on that trademark.
The company First Note with its seat in
Belgium is engaged in the wholesale trading of perfumes, including perfumes named
“Blue Safe for Women”. Coty brought a suit against First Note, claiming that the latter’s distribution of the above perfume in bottles that are very similar to those whose form is protected under the Coty trademark constitutes an infringement of that trademark, as well as prohibited comparative advertising and unfair imitation. Coty’s claim was not acknowledged in either the court of first instance or the appeal proceeding.
In the ruling issued in the appeal proceeding, it was ascertained that the German courts have no jurisdiction.
The Court of Justice considered the case upon an application for a pre-trial ruling submitted as part of a dispute between
Coty and First Note over the charge of an infringement of a trademark and of the provisions of the Act on Combating Unfair
Competition, in connection with the sale in
Belgium of counterfeit goods to a German company which resold them in Germany.
After conducting an in-depth analysis, the
Court of Justice took the position that the concept of the “member state in which an infringement took place” in Regulation No.
40/94 concerning the Community trademark should be interpreted such that, in the case of sales and deliveries of counterfeit goods manufactured in one member state and resold by a buyer in another member state, the law does not permit recognition of the jurisdiction for considering a claim of an infringement brought against the initial seller, which did not itself act in the member state of the seat of the court considering the case.
As to the claim of comparative advertising or unfair imitation of a designation protected by a Community trademark prohibited by an act on combating unfair competition of the member state in which the court considering the case has its seat, the law does not allow the jurisdiction of the court in that member state to be recognized because of the place in which the event causing the damage resulting from an infringement of that act took place, since the defendant, as one of the alleged perpetrators, never itself acted in that state. However, in such a case, given the place where the damage arose, it is possible to recognize the competence of the court to consider a claim of liability based on the above domestic law against an entity having its registered office in another member state accused of having committed an act in that state that caused or could cause damage in the area over which the court considering the case has jurisdiction.
The Court of Justice ruled that, under the circumstances of the case in question, the claim can be brought to the German courts to the extent that an act committed in another member state caused or could cause damage in the area over which the court considering the case has jurisdiction.
Source: www.eur-lex.europa.eu
In a recent case, the Court of Justice ruled that a simple drawing of sales premises for goods, without any indication of dimensions or proportions, can be registered as a trademark for services involving provisions related to those goods, but which do not constitute an integral part of admitting them to trade. One of the conditions making it possible to register such a depiction as a trademark is that the depiction makes it possible for the services concerned to be differentiated from those of other businesses.
A second condition is that the registration does not meet any of the grounds for refusal
6 Trade marks and unfair competition

of a registration specified in Directive
2008/95/EC.
On 10 July 2014, in issuing a ruling in the case of Apple Inc. (“Apple”) against the German Patent and Trademark Office
(C-421/13), the European Court of Justice stated how Articles 2 and 3 of Directive
2008/95/EC should be interpreted. Article
2 of the Directive defines what designations can comprise a trademark, while Article 3 provides the grounds for refusing or ascertain the validity of the registration of a trademark.
The history of this dispute is as follows. On
20 November 2010, the U.S. Patent Office registered a three-dimensional trademark showing a colored drawing (mainly steel gray and light brown) of an Apple flagship.
That registration was made for services in
Class 35 in the meaning of the Nice Treaty, that is, various services aimed at convincing consumers to purchase Apple products.
On the basis of the Madrid Treaty, Apple then submitted an application for the territorial expansion of the protection resulting from the international registration of the above trademark. That application was accepted in certain states, while in others, such as Germany, that protection was not granted. On 24 January 2013, the German
Patent and Trademark Office refused to grant protection to the three-dimensional international trademark (IR 1060321) in
Germany because a depiction of premises designated for selling goods is nothing other than a depiction of an essential feature of the business activities of the company but does not indicate the origin of those activities.
Apple filed a complaint against the decision of the German Patent and Trademark
Office with the Federal Patent Office
(Bundespatentgericht), which acknowledged that the case involved fundamental issues of trademark law and referred four pre-trial questions to the Court of Justice in respect of the provisions of Directive 2008/95/EC referred to above.
The Court of Justice mainly considered whether the relevant provisions of Directive
2008/95/EC must be interpreted such that a depiction (in the form of an ordinary drawing without any indication of dimensions or proportions) of how sales premises are fitted out can be registered as a trademark for services involving various provisions aimed at convincing customers to purchase goods of the applicant and whether such a “depiction of materialized services” can be equated with “packaging”.
As indicated at the beginning of this article, the Court of Justice took the position that such a presentation as that in the dispute under discussion, which depicts how sales premises are fitted out by means of a set of lines, contours and shapes, may constitute a trademark, on condition that it makes it possible to distinguish the goods or services of one business from those of other businesses. None of the grounds for refusing registration as specified in Directive
2008/95/EC come into play.
Source: www.curia.europa.eu
In a ruling of 19 June 2014, the Court of
Justice responded to a pre-trial question in case C-345/13, concerning a dispute between Karen Millen Fashions Ltd.
(“Karen”) and Dunnes Stores, Dunnes Stores
(Limerick) Ltd. (“Dunnes”). A motion for the issuance of a ruling under the pre-trial procedure had been submitted to a court of appeal in Ireland. That motion concerned an interpretation of Council Regulation (EC)
No. 6/2002 of 12 December 2001 on
Community designs.
Karen is a company under English law that produces and sells women’s clothing.
Dunnes is a large Irish retail trade group that, among other activities, sells women’s clothing. The subject of the dispute between the companies was that Dunnes copied a clothing design created by Karen. In 2005,
Karen designed and admitted to trade in
Ireland a striped blouse (blue and earth brown) and a black knitwear top. Dunnes introduced copies of those clothes for sale in its Irish shops at the end of 2006.
Karen claimed that there had been an infringement of the rights it enjoyed to unregistered Community designs for its clothes and, on 2 January 2007, brought a suit before the court for a ruling against
Dunnes prohibiting it from using those designs and awarding compensation.
The court ruled in favor of Karen.
Dunnes appealed to the court of appeal.
It did not question that it had copied the clothing designs belonging to Karen and
3/2014 7

admitted that the unregistered Community designs Karen’s claim referred to were new.
Nevertheless, Dunnes questioned Karen’s right to unregistered Community designs for the clothing in question, pointing to their absence of distinctiveness in the meaning of Regulation No. 6/2002 on Community designs. It also claimed that, pursuant to that Regulation, Karen had to actually prove that its clothing was distinctive.
The court of appeal decided to suspend the proceeding and approached the Court of
Justice with the following pre-trial questions:
“1) When assessing the individual character of a design which it is claimed enjoys protection as an unregistered Community design pursuant to Regulation [No.
6/2002], should the overall impression the design makes on an informed user in the meaning of Article 6 of that Regulation be studied in reference to whether it differs from the overall impression made on such a user by: a) any individual design whatsoever previously made publicly available, or b) any combination of known elements of more than one such previous design?
2) Is the court competent in Community design cases obliged to treat an unregistered Community design as valid for the purposes of Article 85 par. 2 of
Regulation [No. 6/2002] if the owner only shows what constitutes the individual character of that design, or is the owner obliged to prove that the design possesses individual character in accordance with
Article 6 of that Regulation?”
The Court of Justice noted that the court, in sending its first question, sought to determine whether Article 6 of Regulation
No. 6/2002 should be interpreted so as to acknowledge that, in order for a design to be deemed to have individual character, the overall impression the design makes on an informed user should differ from the overall impression made on such a user by an earlier design, either autonomously or as a combination of elements of several designs that had previously been made available to the public.
After analyzing the provisions of Regulation
No. 6/2002 and the TRIPS Agreement, the
Court of Justice shared the stance taken by
Karen. That position acknowledges in order for a given design to be deemed to possess individual character: “the overall impression made by the design on an informed user should differ from the overall impression made on such a user by one or several earlier designs, each considered separately as a whole, but not as a combination of different elements from previous designs ”.
Such an interpretation finds confirmation in existing Court of Justice rulings on whether a design has individual character.
The Court of Justice established that, in its second question, the court sought a determination of whether the court competent in Community design cases should acknowledge the validity of an unregistered Community design for the purposes of Article 85 par. 2 of Regulation
No. 6/2002 in a situation where an owner only shows what the individual character of the design consists of, or whether the owner of the design must prove that the design has individual character in accordance with
Article 6 of that Regulation.
In summarizing its analysis of the relevant provisions of the Regulation, the Court of
Justice reached the following conclusion in this case: “for a court competent in
Community design cases to acknowledge the validity of an unregistered Community design for the purposes of Article 85 par. 2 of the
Regulation, it is sufficient for the owner to show only when the design was first made publicly available and what elements attest to the individual character of that design” .
Source: www.curia.europa.eu
On 12 June 2014, the Court of Justice issued a ruling in case C-285/13 P, dismissing an appeal against a ruling by the
EU General Court concerning a complaint against a decision of the OHIM Fourth
Board of Appeal. The proceeding before the OHIM began on 30 October 2003 after
Café do Brasil Sp A submitted a motion for the registration of a graphic Community trademark:
That mark was registered for, among other goods, products from Class 30 of the Nice
Classification, in particular: “coffee, tea, cocoa, flour, grain products, bread, cakes
8 Trade marks and unfair competition

and sweets, edible ices, molasses; yeast, baking powder, spices”. The trademark was registered and published. On 3 February
2005, Bimbo SA lodged an objection to the registration of the mark in the above class, pointing to the existence of an earlier trademark and the identical nature of the goods and services for which the mark was registered, and the resulting likelihood of consumers being misled. Bimbo SA justified its objection by the fact that it possessed the Spanish word trademark “BIMBO”, which it obtained on 4 October 1955 for
“grain products, milling, baking, cakes and starch”, in respect of which that mark is widely known in Spain, and by the previous unregistered mark “BIMBO”, widely known in Spain in respect of the same goods..
On 14 March 2011, the Objections
Department upheld the objection against some products, namely: flour, grain products, bread, cakes and sweets, edible ices; yeast and baking powder in Class
30 of the Nice Classification, and Café do Brasil SpA complained against that decision. The OHIM Fourth Board of Appeal ruled in favor of the complaint in part, confirming that the trademark would not be granted in the scope of “grain products, bread and cakes”. Bimbo SA had not shown that it had extended its right to the registered trademark, and so the objection was considered solely in reference to an unregistered trademark. That mark was widely known in Spain solely in respect of packaged, sliced bread, and so there would be no likelihood of consumers being misled with regard to products such as flour, sweets, edible ices, yeast or baking powder. Bimbo
SA filed a complaint to the EU General
Court, seeking that the contested decision be amended or overturned in its entirety;
Bimbo referred to Articles 64, 75 and 76 of
Regulation (EC) No. 207/2009 and Article
8(1)(b) of that regulation. The EU General
Court dismissed the complaint in its entirety.
Bimbo SA lodged an appeal with the
Court of Justice, accusing the EU General
Court of an infringement of Principle 19 of
Commission Regulation (EC) No. 2868/95 of 13 December 1995 executing Council
Regulation (EC) No. 40/94 on the
Community trademark of 13 December 1995 and an infringement of Article 8 par. 1, 2, 4 and 5 of Regulation (EC) No. 207/2009. The
Court of Justice found that the application for the registration of the Community trademark “CAFFE KIMBO” was submitted on 30 October 2003, and so the provisions of Regulation 40/94 applied. The Court of
Justice held that Bimbo SA had not raised a claim of an infringement of Principle 19 of Regulation No. 2868/95 before the EU
General Court, and that Bimbo SA had shown the existence and validity of the earlier Spanish mark “BIMBO”, registered in 1955, in accordance with that provision.
Bimbo SA had until that time relied solely on the unregistered earlier mark “BIMBO”, widely known in Spain. The Court of Justice can only assess the provisions referred to before the EU General Court. In respect of the second claim, the Court of Justice ruled that an assessment of the similarity of the products involved lies solely within the remit of the EU General Court, and not the Court of Justice, because the Court of Justice only considers legal issues. The Court of Justice also ruled against the other claims, because they had not been raised by Bimbo SA in the proceeding before the EU General Court.
The Court of Justice dismissed Bimbo SA’s appeal in its entirety.
Source: www.curia.europa.eu
When considering whether a trademark that does not possess distinctiveness has acquired what is known as secondary distinctiveness as a result of use, EU law stands in contrast to the domestic law interpretation that a certain universal percentage threshold of recognition of a given designation among consumers is a prerequisite for the acquisition of that quality. In turn, when evaluating whether a trademark has acquired secondary distinctiveness, it is necessary to check whether this occurred before the date of registration of the mark. The absence of primary distinctiveness and of the acquisition of that quality through use up to the moment a registration application is submitted constitutes a condition for invalidating the trademark. Thus held the Court of Justice on 19 June 2014 in a ruling (C-217/13 and C-218/13) in the case of Oberbank AG, Banco Santander
SA and Santander Consumer Bank AG vs.
Deutsche Sparkassen und Giroverband e.V. (DSGV), the result of three pre-trial questions submitted to the Court of Justice by the German Federal Patent Office
(Bundespatentgericht).
On 11 July 2007, the DSGV obtained a registration of a trademark in the form of the color red, without contours (red HKS
13) for Class 36 in the meaning of the Nice
Treaty. On 15 January 2008, Oberbank
3/2014 9

submitted a motion for the invalidation of the right to that trademark, claiming a lack of distinctiveness. In a decision of 16 June
2009, the German Patent and Trademark
Office dismissed the motion for invalidation, stating that even though the contested mark is not in essence distinctive it had acquired that quality as a result of use. Banco
Santander and Santander Consumer Bank also submitted motions for invalidation, raising arguments similar to those of
Oberbank, and these were also dismissed.
All of the objecting parties then went to court with a complaint requesting that the decision of the German Patent and Trademark Office be overturned and that the right to the trademark analyzed be invalidated.
The pre-trial questions presented to the
Court of Justice concerned the conditions for acknowledging that a given mark has acquired what is known as secondary distinctiveness through use. The court sought in particular to establish what level of renown among the interested group of consumers is required for it to be acknowledged that secondary distinctiveness exists and also sought to resolve doubts as to what moment is proper for an evaluation of secondary distinctiveness—the moment at which a mark is submitted or the date on which it is registered.
In analyzing the above issues, the Court of Justice referred to the provisions of
Directive 89/104, replaced by Directive
2008/95. The Court of Justice pointed out that, in accordance with previous case law, an assessment of the distinctiveness of a given mark must be made in reference to the goods or services the mark identifies and to the presumed manner of perception of the trademark by the interested group of consumers (see, among other rulings:
C-363/99 in the Koninklijke KPN Nederland case and C-353/03 in the Nestle case).
As to the issue of how to determine whether a mark has acquired secondary distinctiveness, the Court of Justice showed that the authority competent to register should always make a concrete analysis of a given case. Criteria for help in making such an assessment include: the trademark’s market share, intensity, geographic range, length of use and degree of recognition. It was emphasized that if a “significant part” of the consumer group is able to recognize given goods as deriving from a specific company using the trademark, then the mark has certainly acquired distinctiveness. At the same time, the Court of Justice expressed the view that the circumstance of a significant degree of recognition cannot be determined “solely on the basis of general, abstract data such as a specific percentage” (the court, in its pretrial questions, proposed 70% recognition among the group surveyed as a threshold).
The Court of Justice also took the stance that the right holder to a trademark may effectively defend itself against a justified charge of a lack of primary distinctiveness only by showing that distinctiveness had been acquired through use before the data on which an application for registration was submitted. It should be emphasized that, pursuant to Article 3 par. 3 of Directive
2008/95, member states are authorized to extend the application of the construction of distinctiveness acquired through use also to the period after the date of submission of an application for registration or even to after the date of the registration itself.
With regard to the last of the pre-trial questions, the Court of Justice expressly ruled that the burden of proof of the acquisition of secondary distinctiveness before the date of submission of an application for registration lies with the right holder to the trademark. Consequently, if a right holder does not effectively produce such evidence, and the mark does not possess primary distinctiveness, the trademark must be held to be invalid.
Source: www.curia.europa.eu
On 3 April 2014, the Supreme
Administrative Court (SAC) considered a cassation appeal submitted by Piotr
Chlebowski (case file No. II GSK 244/13) against a ruling by the Provincial
Administrative Court (PAC) in Warsaw.
The contested ruling concerned a decision of the Polish Patent Office (PPO) in
September 2011 on the invalidation of the protective right to a trademark. The SAC overturned the contested ruling and referred the case back to the PAC for reconsideration.
In a decision made in March 2008, the
PPO granted a protective right to Wroclaw
University of Technology for the following word-graphic trademark (R-204692).
The mark was designated for goods and services in classes 9, 16, 18, 25, 35, 41 and 42.
10 Trade marks and unfair competition

In September 2011, the PPO dismissed an objection to that registration submitted by
Piotr Chlebowski, ruling that the request for invalidation of the protection right to the “E-INFORMATICA” trademark was groundless. Piotr Chlebowski lodged a complaint against that decision with the
PAC in Warsaw, which that court dismissed.
Piotr Chlebowski then brought a cassation appeal against the PAC ruling, moving that it be overturned in its entirety and that the case be referred back to that court for reconsideration. The plaintiff claimed that the ruling of the court of first instance infringed a number of provisions of material law. The PAC had stated that an economic entity that is a natural person has no business name on the basis of a provision that has not existed for almost twelve years. Further, by failing to apply Article
434 of the Civil Code (“CC”), it held that an economic entity that is a natural person has no business name. Further still, by an interpretation of Article 551 CC, which was erroneous in the view of the plaintiff, and by the improper application of that article, the court accepted that a designation identifying a business is the same as the business name of that economic entity, and that Chlebowski is not entitled to have it protected. Piotr
Chlebowski also accused the PAC of having improperly applied Article 131 par. 1 pt. 1 of Industrial Property Law when it accepted that, as a result of a protective right being granted to the trademark “E-INFORMATICA”, there had been no infringement of his personal right resulting from Article 23
CC (and Article 24, 4310 CC) protecting the business name “INFORMATICA” as a distinctive, visible element of his business name. The plaintiff charged that the court of first instance had also incorrectly applied the above article by accepting that, as a result of a protective right being granted to the contested trademark, there had been no infringement of his material right to the designation identifying his business.
The plaintiff also stated there had been an infringement of procedural provisions.
The SAC agreed with the arguments raised by Piotr Chlebowski, acknowledging that, in considering the contested decision of the PPO, the court of first instance had not observed that the PPO had utterly failed to make an exhaustive study and evaluation of the evidence during the proceeding, and that this could have had a significant impact on the outcome of the case. The court had also wrongly accepted the decision of the PPO, even though that body had not established the factual circumstances necessary for the application of the legal basis for invalidation.
The PPO can refuse to put faith in specific evidence, but only after a comprehensive review of that evidence, and by explaining the reasons for such an evaluation in the justification to its decision.
Further, the SAC emphasized that: “the name of a company (business name) belongs to the category of personal and material rights subject to legal protection, and that those rights may be infringed by the use of a trademark, because both designations (the business name and the trademark) identify a business” . The PAC had incorrectly referred to a provision of the now non-existent provision of the
Commercial Code and, on that basis, held that Piotr Chlebowski does not enjoy the right to a business name. The current Civil
Code acknowledges the right to a business name in the case of an entrepreneur that is a natural person. In the case at hand, there is a conflict between the plaintiff’s right to a business name and the right of the right holder to the contested registered trademark.
The PPO did not assess whether as a result of this conflict there exists a risk of consumers being misled as to the identity of the producer. The SAC has stated a number of times in its rulings that a business name serves to distinguish and identify a company in legal and economic circulation and also provides information on the traits and value of the activities being referenced. An unauthorized disturbance of those functions of the business name of a company infringes the right to that name.
Nevertheless, the SAC noted that the exclusive right to a business name is not total, for it is limited by the scope of the activities actually conducted using the business name, and only within that scope can there be a conflict between identical or similar business name and a trademark.
An essential element in such an evaluation is the danger of customers being misled as to the identity of a company. It is sufficient to establish that there is potential for such confusion where it is inevitable that both companies will conduct identical or similar activities.
The SAC also found that, in the case of a conflict between the business name of a company and a registered trademark
3/2014 11

having “worse priority”, the right arising earlier prevails. In the case at hand, therefore, priority must be granted to the protective right of Piotr Chlebowski to the business name of his company.
Source: www.orzeczenia.nsa.gov.pl, www.bazy.uprp.pl
On 11 March 2014, the Provincial
Administrative Court in Warsaw (case file No. VI Sa/Wa 2351/13) overturned a decision of the Polish Patent Office on the invalidation of the trademark “kids Vitalsss
MULTIWITAMINA DLA DZIECI supplement diety cola” registered for the benefit of
Optimum Mark sp. z o.o.
Legal protection for the above mark was granted for goods such as vitamins and mineral supplements, effervescent tablets with vitamins and minerals (i.e. in Class 5 of the Nice Classification), non-alcoholic beverages enriched with vitamins and minerals and preparations for making beverages (Class 32).
An objection to the registration of the above mark was raised by the right holder to the international trademark “VITALIS”, designated for goods from Classes 3, 5 and
21. That entity demanded the invalidation of the mark “kids Vitalsss MULTIWITASMINA
DLA DZIECI supplement diety cola”. In order for the objection to be considered, three prerequisites had to be met: the similarity
(or identity) of the designations compared, the similarity (or identity) of the goods or services bearing them and the existence of a risk of consumers being misled as to the origin of goods.
The right holder to the contested mark “kids
Vitalsss MULTIWITAMINA DLA DZIECI suplement diety cola” claimed that the objection was groundless. It questioned the similarity of the goods for which the trademarks under comparison are designated. In its opinion, there can only be a discussion on the similarity of goods in respect of goods belonging to Class 5 of the
Nice Classification, since both marks were submitted for registration in that class. Only one of the two marks compared—the mark
“kids Vitalsss MULTIWITAMINA DLA DZIECI suplement diety cola”—was registered in Class 32 (for non-alcoholic beverages enriched with vitamins and minerals and preparations for making beverages). The protection granted to the earlier mark
“VITALIS” does not cover drinks (or other goods from Class 32), and so, in the opinion of Optimum Mark sp. z o.o., the protective right to the mark “VITALIS” cannot pose an obstacle to the registration of the mark
“kids Vitalsss MULTIWITAMINA DLA DZIECI suplement diety cola” in Class 32. Optimum
Mark sp. z o.o. argued that beverages
(Class 32) are not similar to goods in Class
5 for which the trademark “VITALIS” is designated (including for dietetic substances and nutritional supplements containing in particular vitamins and oligo elements, in the form of sachets, powder or capsules, including multi-vitamin products in the form of effervescent tablets, chewable tablets and capsules).
The PPO dismissed the objection. It found that goods in Class 5 are not similar to nonalcoholic beverages enriched with vitamins and minerals and preparations for making beverages from Class 32. Such goods belong to various groups of goods having a different character and designation, which are distinguished by buyers. Beverages are packed in bottles or cans, while supplements and dietetic substances appear in the form of sachets, powder or capsules. These latter serve to maintain good health, while non-alcoholic beverages enriched with vitamins and minerals serve to satisfy thirst.
The addition of vitamins and minerals to such beverages, in the PPO’s opinion, does not alter that assessment. The PPO found that, in respect of those goods, there is no similarity that could cause a risk of consumers being misled. The PPO also admitted, though, that the marks are similar to each other.
In response to the PPO’s decision, which was unfavorable to the right holder to the mark
“VITALIS”, that entity submitted a complaint to the PAC. That court found that the evaluation made by the PPO concerning the similarity of the goods involved raises doubts.
The PPO prematurely ruled out the similarity of the goods. In assessing similarity, account must be taken of such elements as the nature of the goods, their designation, their manner of use and whether the goods
12 Trade marks and unfair competition

compete with each other or supplement each other. In the analysis made by the PPO, such a penetrating evaluation was lacking.
The PAC in Warsaw overturned the contested decision and charged the PPO with the costs of the proceeding.
Source: www.orzeczenia.nsa.gov.pl
On 4 June 2014, a ruling was handed down by the PAC in a case in which an entity had submitted a motion for a written interpretation of the provisions of tax law concerning personal income tax within the scope of obtaining revenue. The applicant intended to become a limited partner in a limited partnership with its registered office in Poland. The company planned to acquire a trademark in the course of the process of registration with the PPO from another entity and to use that mark in the business activities it has been conducting for a period of more than one year. After the acquisition of the mark, the PPO will probably grant a protective right to the mark for the benefit of the company. The applicant asked the Director of the Tax
Office the following questions: (i) at which moment will the company be entitled to disclose the protective right to the mark under fixed assets and intangible assets in its books if, at the moment it is acquired, the mark is in the course of the registration procedure at the PPO, and (ii) what will the initial value of the protective right to the mark be, which will provide the basis for depreciation write-downs made by the company, recorded as costs of obtaining revenue for the applicant. Individual interpretations of the provisions of tax law are intended to unambiguously provide an applicant with the legal and tax effects and consequences of its activities within defined factual circumstances presented in a relevant application in light of the binding provisions of tax law. As a result of an individual interpretation of the provisions of tax law being granted, an applicant should obtain an unconditional, unambiguous position of the minister responsible for public finance matters with regard to the obligations resulting from actions taken or which are to be taken in the future in the factual status presented.
In the opinion of the tax authority, the company will not be entitled to disclose the protective right to the mark under fixed and intangible assets if, at the moment the mark is acquired by the company, it is in the course of a registration procedure at the PPO. The fact of acquiring an unregistered trademark is significant (as a factual act) when determining the initial value of a trademark for the needs of its depreciation after a protective right has been obtained. Fixed and intangible assets are subject to depreciation. The catalogue of fixed assets is an open catalogue, while the catalogue of intangible assets is closed.
Fixed assets acquired or created are subject to depreciation, but only intangible assets acquired depreciate, including protective rights to domestic trademarks obtained by means of a constitutive decision to grant a protective right to a trademark. The authority, therefore, did not address the second question.
The applicant appealed to the PAC.
In considering the complaint against an interpretation of tax law provided, the administrative court inspected the substantive correctness of the interpretation made and the correctness of the interpretation proceeding conducted in the case. The court overturned the contested individual interpretation, ruling in favor of the plaintiff. In the PAC’s view, the position of the tax authority presented in the contested interpretation, that the company will not acquire a protective right subject to depreciation, is a flawed interpretation.
The fact that at the moment of the sale of the trademark to the company that mark will not yet have been granted a protective right does not mean that the company cannot acquire that right as a result of the issuance of a constitutive decision by the
PPO on the registration of the trademark.
Source: www.orzeczenia.nsa.gov.pl
An interesting ruling was issued by the
SAC on 10 April 2014 (II GSK 255/13).
This case involved a clash between marks serving to identify fats comprising a mixture of butter and vegetable fats.
In 1996, the word mark MIKSEŁKO was registered. This is a fantasy composition suggesting that the goods it identifies are a mixture of fats with the addition of butter. In 2008, a competitor of the owner of the first sign successfully registered the
3/2014 13

mark MILKSEŁKO ŁACIATE. That mark is a word-graphic mark consisting of two elements. The second is very well known as an independent mark used to identify milk and a line of goods produced from cow’s milk. The first element, by using the
English word ‘milk’, emphasizes that the products are derived from milk, while the first element as a whole suggests that butter is contained in products bearing the mark.
The Polish Patent Office decided to invalidate the mark MILKSEŁKO ŁACIATE.
First, it determined that the goods for which both signs were registered are virtually identical. More importantly, however, it found that the similarity of the earlier mark to the first element of the later mark is so strong that the risk of consumers being misled cannot be ruled out. In the
PPO’s view, the first element of the mark is dominant and is, therefore, compared with the earlier mark. The PPO also pointed out that, in the case of a conflict between an earlier word mark and a later wordgraphic mark, the graphic elements are not considered when assessing the similarity of the marks in dispute.
That decision was overturned by the
Provincial Administrative Court in Warsaw.
In its ruling, the PAC found that the PPO had not duly demonstrated why it had deemed that the “MIKSEŁKO” element of the invalidated mark dominated over the whole. Further, the court pointed out that the additional element “ŁACIATE”, which is an autonomous trademark, eliminated the risk of confusion.
The ruling by the PAC became the subject of a cassation appeal to the SAC. That court fully shared the legal assessment made by the PPO. In addition, it drew attention to the reprehensibility of adding one’s own trademark to marks similar to those registered by a competitor. One the one hand, this may really eliminate confusion, but on the other (which in the
SAC’s view was the prevailing factor), such a practice is harmful in that it may eliminate a previously registered mark from the market, causing it to be appropriated dishonestly through the addition of another mark whose distinctiveness is not contested. As consequence of the above, the ruling of the PAC was overturned, and the decision of the PPO became final.
Source: www.orzeczenia.nsa.gov.pl
14 Trade marks and unfair competition

In September of this year, a special threeday training program was held for appeal prosecutors from throughout Poland, organized by the Legal Bureau of Interpol and the National School of Judiciary and
Public Prosecution. The objective of the training was to draw the attention of representatives of prosecutor’s offices to the most important issues relating to combating organized crime, including intellectual property crime. Discussions were held on issues relating to the development of international cooperation and common strategies within this scope.
The binding provisions of international and domestic law were analyzed, and attention was paid to practices of prosecutors in other jurisdictions pertaining to the formulation of charges for specific types of crimes. The issue was raised for the need of public and private sectors to cooperate with each other in order to effectively eliminate counterfeit goods from trade.
Speakers during the training included representatives of the Ministry of Justice of the Republic of Italy, Interpol, Europol,
Eurojust, and the private sector.
Source: www.interpol.int
3/2014 15

For further information please, contact:
Oskar Tułodziecki
Oskar.Tulodziecki@klgates.com
Agata Lewartowska-Błaszczyk
Agata.Lewartowska-Blaszczyk@klgates.com
Dorota Koseła
Dorota.Kosela@klgates.com
Ewa Rusak
Ewa.Rusak@klgates.com
Marta Wysokińska
Marta.Wysokinska@klgates.com
Michał Ziółkowski
Michal.Ziolkowski@klgates.com
Ewelina Madej
Ewelina.Madej@klgates.com
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