Quarterly bulletin
no. 1/2014 (13)
Trade marks
and unfair competition
Introduction
Welcome to another edition of our bulletin. This time, we are particularly pleased to be able
to offer you an expanded edition, enhanced with material prepared by our colleagues from
the K&L Gates office in Paris. This is a further step in making our bulletin more international
– and even more interesting, providing our readers with a variety of information on trademark
law and unfair competition, going beyond the Polish and European topics discussed to date.
Of particular interest in this issue is the material on EU legislative plans for the protection
of confidential business information (know-how), which has not yet been harmonized at EU
level. A draft directive has been released in this regard, indicating that the unification of the
principles of protecting businesses in the European Union may be in the cards. This bulletin
provides a brief overview of the draft, and we will definitely follow up on the progress of the
legislative process.
We also cover the publication of an EU Regulation on the content of applications submitted
by right holders’ for customs protection of their intellectual property rights. It completes the
regulation of customs protection of these rights, an essential part of which was enacted last
year in Regulation 608/2013. The new customs forms are much more detailed than the
old ones. It will certainly be some time before any summary of the fight against imports of
counterfeit goods under the new rules can be attempted, and in particular, as to whether and
to what extent the changes made have actually improved cooperation between right holders
and customs authorities.
As every quarter, we report on interesting rulings concerning trademarks and unfair
competition (it so happens this time that our authors have chosen to cover wolves, wild and
domestic cats, and tigers!), and we continue our tradition of posting media articles by K&L
Gates lawyers.
We wish you pleasant reading.
Oskar Tułodziecki
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
Contents
Legislative initiatives
EU – Uniform standards of protection for trade secrets: draft directive of the European
Parliament and of the Council ..................................................................................4
EU – New customs application forms .......................................................................5
Case-Law
EU – Weakening of the distinctiveness of a mark with an image of a wolf: ruling of the
Court of Justice of the European Union ....................................................................6
EU – International agreements and EU law: a difficult relationship.
Ruling of the Court of Justice of the European Union on the issue of the actual
use of a trademark ...................................................................................................6
EU – Could consumers be misled? “SUPERGLUE” and “SUPER GLUE”:
ruling of the EU General Court ..................................................................................8
EU – “FOREVER” and “4EVER” are similar marks: ruling of the EU General Court .....8
EU – Registration of a trademark as evidence of public availability of a design:
ruling of the EU General Court ................................................................................10
EU – No similarity between tigers: decision of the Office for Harmonization of the
Internal Market in the case of the trademark “T.G.R. ENERGY DRINK” ....................11
PL – Cash premiums and logistics fees as an act of unfair competition: ruling of
the Supreme Court of Poland ..................................................................................12
PL – The use of foreign words in a trademark: comments contained in a ruling
of the Supreme Administrative Court on an attempt to invalidate the protective
right to the trademark “BIEN DONG” ..................................................................... 12
PL – The correctness of the control of a decision by the Polish Patent Office:
the Supreme Administrative Court in the case of a protective right granted
for the designation “EKOFLORA”.............................................................................13
Other issues
FR – The two leading French online private sellers, Vente-privee.com
and Showroomprive.com ........................................................................................15
It is worth using the ® symbol beside a registered trademark ..................................16
Legislative initiatives
EU – Uniform standards
of protection for trade secrets:
draft directive of the European
Parliament and of the Council
The European Commission has presented
a draft directive of the European Parliament
and of the Council on the protection of
undisclosed know-how and business
information (trade secrets) against their
unlawful acquisition, use and disclosure.
We reported on this European initiative and
on the work of the Commission in Bulletin
3/2013.
The directive should introduce uniform
standards of protection for trade secrets
in all member states, as well as eliminate
currently existing discrepancies between
the legal systems of individual territories.
Above all, the directive will clarify what
a trade secret is. The proposed definition of
”trade secret” is based on the definition of
”undisclosed information” contained in the
TRIPS agreement. The draft also introduces
the notions of ”a trade secret holder”,
”infringing goods”, and ”the infringer”.
The directive defines and specifies when
acquisition, using, or disclosing a trade
secret is considered legal, and when it is
contrary to the law. For example, obtaining
a trade secret as a result of discovering
or creating it independently does not
constitute an infringement of the law.
Similarly, under the directive, obtaining
protected information by actions such
as observation, research, disassembly,
or testing a product or object is legal,
provided that the product or object was
made publicly available or was legally in
the possession of the person who obtained
access to that information.
4 Trade marks and unfair competition
The new law imposes an obligation on
member states to establish the general
and remedial means and procedures
necessary for the pursuit of civil law claims
arising from the illegal acquisition, use,
or disclosure of trade secrets. Those
means should be effective, and should
deter potential infringers, but should not
be unnecessarily complicated, costly, or
protracted. The directive requires member
states to guarantee the availability of
suitable temporary and security measures
which can be taken against an alleged
infringer, such as, e.g. the seizure of
goods where there exists a suspicion that
the goods constitute an infringement of
the law; the prohibition of the production,
importing, exporting or storing of such
goods; or the temporary prohibition of using
or disclosing the trade secret. In essence,
case law regarding domestic provisions
should provide for the ability of a court to
order such actions as, for example: that
goods be withdrawn from the market; that
the infringer issue a declaration on the
infringement of the law; that the goods
be deprived of those features which
cause the infringement of the law; that
documents, materials, substances or
electronic files containing or using a trade
secret be destroyed; as well as other
similar measures, to be performed at the
expense of the infringer. The injured party
should have a guaranteed right to obtain
appropriate compensation in an amount
proportional to the harm suffered. When
determining the amount of compensation,
the directive requires that account be taken
of such criteria as: negative economic
consequences (including lost profits),
unfair profits made by the infringer, and
moral prejudice caused to the trade secrets
holder.
What is particularly noteworthy in the
context of potential amendments of Polish
legislation is a proposal concerning the
period of time after which claims over an
infringement of a trade secret become
time-barred. The proposal introduces
a minimum one-year and maximum twoyear time-barring period, counted from the
date on which the plaintiff became aware or
had reason to become aware of the last fact
giving rise to the action. Currently, pursuant
to the Act on Combating Unfair Competition,
claims over acts of unfair competition
become time-barred after a lapse of three
years.
Under the draft directive, member states
are also to guarantee the protection of
trade secrets during court proceedings
concerning the acquisition, use, or
disclosure of a secret. The directive
requires that provisions be introduced in
order to guarantee the confidentiality of
court employees, experts, and witnesses.
The courts are to be equipped with means
of restricting access to all documents
containing trade secrets submitted by
parties to a case or third parties, as well as
with means of restricting access to hearings
and minutes of hearings, and removing
confidential passages from published court
rulings.
Further work on the directive will be carried
out in the European Parliament and the
Council. If the directive is approved, it will
take 24 months to transpose its provisions
to the domestic law of member states.
Source: www.eur-lex.europa.eu
EU – New customs
application forms
At the beginning of January 2014,
Commission Implementing Regulation
(EC) No. 1352/2013 of 4 December
2013 establishing the forms provided for
in Regulation (EU) No 608/2013 of the
European Parliament and of the Council
concerning customs enforcement of
intellectual property rights came into force.
In Regulation (EC) NO. 608/2013, conditions
and procedures were set out concerning
actions by customs authorities where
goods suspected of infringing intellectual
property rights are or should be subject to
customs supervision or customs inspection.
The implementing regulation establishes
what should be contained in an application
prepared by a right holder concerning the
customs authorities taking action in a case
of goods suspected of infringing intellectual
property rights or in an application
concerning an extension of such protection.
A completed form must contain the
information necessary for the customs
authorities to take further action. Apart
from the data of the right holder and its
authorized representatives in appointed EU
member states, it is also important to specify
what exclusive rights provide the basis for
such action. In comparison with the forms
currently in use, the amount of data required
has been increased for certain entities,
including those engaged in the production
and marketing of original goods.
Source: www.eur-lex.europa.eu
1/2014 5
Case-Law
EU – Weakening of the
distinctiveness of a mark with
an image of a wolf: ruling of the
Court of Justice of the European
Union
In November 2013, the Court of Justice of
the European Union issued a ruling in the
case of the registration by Environmental
Manufacturing LLP of a Community graphic
mark consisting of the image of the head of
a wolf (C-383/12).
The registration of the above designation was
objected to by the company Société Elmar
Wolf, in reference to a series of French and
international trademarks registered for its
benefit which incorporate the image of a wolf.
The OHIM established that those marks
enjoy reputation in three EU member states.
6 Trade marks and unfair competition
At further stages of the proceedings, both the
OHIM and the EU General Court held that the
mark submitted could dilute the distinctive
character of the earlier trademarks. Its use
would cause Environmental Manufacturing
LLP to take unfair advantage of the distinctive
nature or reputation of the earlier trademarks.
In Bulletin 2/2012, we reported on the EU
General Court’s ruling in the matter in May
2012.
The case went to the EU Court of Justice as
a result of a complaint filed by Environmental
Manufacturing LLP. One of the claims raised
by the plaintiff concerned an infringement of
Article 8 par. 5 of Regulation No. 207/2009.
That provision regulates the consequences
of submitting an opposition in a situation
where an earlier mark and a submitted
mark are designated for identifying goods of
different types but the earlier mark enjoys
reputation. As a result of an objection,
the submitted mark is not registered if it is
identical or similar to the earlier mark, where
the unjustified use of that trademark would
result in undue benefits or would be harmful
to the distinctiveness or reputation of the
earlier trademark.
The Court of Justice held that, in the
absence of appropriate evidence in the
proceedings, it cannot be ascertained that
there is harm to the distinctiveness of the
earlier mark or likelihood of such harm as
a consequence of the use of the later mark.
That circumstance requires a demonstrated
change in the market behavior of the average
consumer with regard to a given category of
goods or services, or a demonstration of the
strong likelihood that such change will occur
in the future. The existence of a likelihood
of the occurrence of harm can be deduced
from logical principles. However, such
an analysis cannot be based on ordinary
suppositions. It is necessary to take account
of accepted practice in a given commercial
sector, as well as of all the circumstances
of a given case. In the opinion of the Court
of Justice, the OHIM Board of Appeal failed
to carry out such an analysis, and, for this
reason, the Court of Justice held that the
ruling of the EU General Court was flawed.
For the above reasons, the case was
referred back to the EU General Court for
reconsideration.
Source: www.curia.europa.eu
EU – International agreements
and EU law: a difficult
relationship. Ruling of the Court
of Justice of the European Union
on the issue of the actual use of
a trademark
The proceeding before the Court of Justice in
the case in question (C-445/12 P) concerned
an appeal by Rivella International AG
(“Rivella”) against a ruling by the EU General
Court of 12 July 2012 in the case of Rivella
versus the OHIM – Baskaya di Baskaya Alim
(“Baskaya”). The course of the proceedings
was as follows:
On 25 October 2007, Baskaya applied to
the OHIM for registration of a Community
trademark for certain food products.
Rivella submitted an opposition to that
application, referring to the earlier
registration of an international graphic
trademark and arguing that the two marks
are similar, which could mislead consumers
in the meaning of Article 8 par. 1 letter b)
of Regulation No. 40/94 of 20 December
1993 (currently Article 8 par. 1 letter b) of
Regulation No. 207/2009 of 26 February
2009 on the Community Trade Mark).
During the proceedings, Rivella narrowed
its opposition to the part of the international
registration that concerned Germany, and
presented documents on the use of the mark
in Switzerland. Rivella referred to Article 5
par. 1 of the Convention between Switzerland
and Germany on the reciprocal protection
of patents, designs and trademarks of
13 April 1892 (the “1892 Convention”).
In accordance with that provision, the
legal disadvantages which arise under the
domestic law of the contracting parties
due to the fact that a trademark or other
commercial designation has not been
used within the specified period of time
are precluded if the use takes place in the
territory of the other party.
On 8 February 2010, the Board of Appeal
of the OHIM dismissed the opposition,
arguing that the documents presented only
demonstrated use in Switzerland. Pursuant
to Article 42 par. 2 and 3 of the Regulation
on the Community Trade Mark, the earlier
trademark must actually be used in the
member state in which protection has been
granted.
Rivella appealed to the OHIM against
the decision of the Opposition Division.
That appeal was dismissed by the OHIM
Fourth Board of Appeal in a decision of
10 January 2011. The appellant filed
an action for annulment of the contested
decision to the EU General Court on
17 March 2011.
In Rivella’s opinion, it was not obliged to
provide proof of actual use of the earlier
trademark in Germany because, pursuant to
Article 5 par. 1 of the 1892 Convention, the
use of a trademark in Germany is admitted if
that mark was used in Switzerland.
The EU Court dismissed Rivella’s action,
ruling that, while the registration procedures
for trademarks are set out in the domestic
law of each member state, this is not so
in the case of determining the territory for
which the actual use of the earlier mark must
be demonstrated. That issue is regulated
by the provisions of EU law. In some
situations, domestic law may apply; however,
the Regulation on the Community Trade
Mark provides for the parallel existence
of domestic systems and the Community
system for protecting trademarks.
Rivella appealed to the Court of Justice.
Rivella sought to have set aside the
contested EU General Court judgment
based on the claim that the EU General
Court infringed Article 42 par. 2 and 3 of
the Regulation on the Community Trade
Mark. In Rivella’s assessment, the above
provision does not apply to trademarks that
are the subject of an international registration
causing effects in one member state.
The Court of Justice ruled that “trademarks
registered under international agreements
in force in a member state” in the meaning
of Article 8 par. 2 letter a) subpt. (iii) of
the Regulation on the Community Trade
Mark are covered by the same system as
“trademarks registered in a member state”
(Article 8 par. 2 letter a) subpt. (ii) of that
act). Moreover, Rivella cannot question
the guidelines derived by the General Court
from the ruling of the Court of Justice
of 13 September 2007 in the case of
Il Ponte Finanziaria vs. OHIM in reference
to the concept of the use of a trademark.
In that ruling, the Court of Justice held
that the domestic concept of protection
of a trademark, under which an earlier
trademark enjoys protection under domestic
law even if the use of the mark cannot be
demonstrated, cannot stand in the way of
the registration of a Community trademark.
The Court of Justice ruled that the General
Court did not infringe the law when it ruled
that the concept of the use of a Community
trademark within EU territory had been
exhaustively regulated by EU law itself.
Finally, the principle of the uniform nature
of a trademark allows for exceptions, such
as those foreseen in the Regulation on the
Community Trade Mark. In particular, Article
111 par. 1 of the Regulation allows the
owner of an earlier right which only applies
to a particular locality oppose to the use
of a Community trademark in the territory
for which that right is protected, in so far
as the law of the member state concerned
so permits. As a result, the General Court
correctly stated, in point 36 of the contested
ruling, that the principle of the uniform
nature is not absolutely binding.
The Court of Justice dismissed Rivella’s
appeal in its entirety.
Source: www.curia.europa.eu
1/2014 7
EU – Could consumers be
misled? “SUPERGLUE”
and “SUPER GLUE”: ruling
of the EU General Court
On 17 September 2008, a company operating
under the business name Przedsiębiorstwo
Handlowe Medox Lepiarz Jarosław Lepiarz
Alicja sp. j. filed an application for registration
of the graphic mark shown below as
a Community trademark.
The application was made for goods in
classes 1 and 16 of the Nice classification,
namely for goods including glues for
stationery or household purposes, glues other
than for stationery and household purposes,
and preparations for gluing.
On 2 April 2009, the company Henkel Corp.,
as an intervener in the case, filed an opposition
to the registration of the trademark submitted
(as shown in the illustration above) for all of
the goods listed in the application. Henkel
Corp. based its opposition on the existence of
the word trademark “SUPERGLUE” submitted
and registered on 1 December 1981 in the
Benelux countries. The OHIM Opposition
Division found in favor of the objection for
certain goods from the classes the application
included, ruling that the two designations are
“to a certain extent similar”. The applicant
company, Przedsiębiorstwo Handlowe Medox
Lepiarz Jarosław Lepiarz Alicja sp. j. appealed
against the decision of the Opposition
8 Trade marks and unfair competition
Division, yet the decision was upheld by the
OHIM Fourth Board of Appeal. The Board
of Appeal concluded that the disputed goods
are identical, because of the identical nature
of their packaging and the circumstance that
the description “adhesive substances” that
the earlier trademark refers to various goods
bearing the mark submitted by the applicant
company. It was shown that the dominant
elements of the trademark submitted, other
than the descriptive element, are the words
“super” and “glue”, divided by a black point.
The mark is, thus, highly similar visually to the
earlier mark. The Board of Appeal reached
the conclusion that there was a likelihood of
consumers being misled, despite the limited
distinctiveness of the earlier trademark, due
to the identical nature of the disputed goods
and because of the strong visual and phonetic
similarity of the two marks.
The case was considered by the EU General
Court (T-591/11), and the appeal of
Przedsiębiorstwo Handlowe Medox Lepiarz
Jarosław Lepiarz Alicja sp. j. was dismissed.
The General Court ruled that the Board of
Appeal had correctly ruled on the issue of the
identical nature of the goods involved. The
General Court also dealt with the aspects of
visual, phonetic and conceptual similarity, and
on the likelihood of consumers being misled.
Given the similarity of the dominant element of
the trademark submitted and the word that the
earlier trademark comprises, there is a strong
visual similarity between the conflicting marks.
On the phonetic and conceptual levels,
a similarity between the contested marks also
arises. The EU General Court also confirmed,
as had the Board of Appeal, that in this case
there is also a likelihood of consumers being
misled.
Source: www.curia.europa.eu
EU – “FOREVER” and “4EVER”
are similar marks: ruling
of the EU General Court
On 16 January 2014, the EU General
Court handed down a ruling (T-528/11)
on dismissing a complaint by Aloe Vera
of America, Inc. (“Aloe Vera”) against
a decision by the OHIM Fourth Board of
Appeal on refusing to register a trademark.
In 2006, the applicant submitted the
following graphic Community trademark to
the OHIM for goods from class 32 of the
Nice Classification (aloe vera drinks, aloe
vera gel beverages, aloe vera pulp; mixtures
of aloe vera juice with fruit juices; bottled
spring water):
In 2007, the company Diviril – Distribuidora
de Viveres do Ribatejo, Lda (later Detimos
– Gestão Imobiliária, SA, “Detimos”) filed
an opposition to that registration, based on
an earlier Portuguese graphic trademark
(297697) used to identify goods from within
the same class (juices, lime juice – solely for
export):
During the proceedings, the applicant
demanded, through the agency of the
OHIM, that Detimos present proof of
the actual use of the earlier trademark.
Detimos presented a collection of invoices
in response. In 2010, the Opposition
Division of the OHIM upheld the opposition
and rejected the application for registration
of the Community trademark. Aloe Vera
lodged an appeal against that decision,
which was also dismissed.
The OHIM Fourth Board of Appeal
established that the relevant public for the
products consists of average Portuguese
consumers. It also found that Detimos had
sufficiently proven the use of the earlier
mark in Portugal over the five-year period
considered. The goods in question were
deemed as partly identical and partly
similar. The Board of Appeal found that
the conflicting marks had a low degree
of visual similarity, but were identical
phonetically for some of the relevant
public, who has a certain familiarity with
the English language, and of average
similarity for the rest of the relevant public.
On the conceptual level, the conflicting
trademarks are identical for that part of
the relevant public who know English, and
cannot be compared for the rest of that
group. Summarizing the above, the Board
of Appeal held that there is a likelihood of
consumers being misled, and the Court
agreed with those conclusions.
Aloe Vera argued before the Court that
the invoices presented by Detimos were
not sufficient to prove the actual use of
the earlier trademark. In evaluating this
issue, the Court considered a number of
factors and also referred to existing case law
within this scope. Primarily, the Court drew
attention to the fact that the small number
of invoices provided (27, including 12 from
the period in question) does not affect the
assessment of the actual use of the mark.
The invoices presented confirmation that
the products were sold to various customers
on the Portuguese market and show the
earlier trademark written in an ordinary
font. Therefore, despite the small number
of sales, it must be acknowledged that the
beverages were offered externally, and it
was not simply a case of symbolic sales only
for the purpose of maintaining the mark.
A further claim of Aloe Vera against the
decision of the Board of Appeal concerned
the correctness of the phonetic comparison
between the two marks. In the applicant’s
opinion, this was based only on the
impression made on English-speaking
consumers. In accordance with established
case law, a likelihood of consumers being
misled exists if the relevant public could
believe that given goods or services come
from the same business or from businesses
having commercial ties with each other.
The Court agreed with the Board of Appeal,
which held that the relevant public consisted
of Portuguese consumers exercising an
average level of attention. The authority then
held that the goods being considered are
partly identical and partly similar, which the
applicant did not dispute.
In respect of the visual comparison, the
Board of Appeal stated that there was a low
degree of similarity between the marks,
whereas Aloe Vera maintained that they are
not similar at all to each other on that level.
The Court held that the marks contain the
common letters “e”, “v”, “e”, and “r”, in
the same order, differing in the font used
to present the word element in each mark,
with a delicately stylized form of the letter
“r” in the earlier mark, and the presence of
the digit “4” at the beginning of the earlier
mark and the image of a predatory bird in
the upper part of the trademark applied for
and the presence at the beginning of the
word element of that mark of the letters
“f”, “o” and “r”, leading to the formation,
together with the other letters of the word
element, of the English word “forever”.
The graphic element of the predatory bird
was not acknowledged in this case as being
fantastic in nature. What is more, the Board
of Appeal stated that where a mark contains
a word element the average consumer will
not focus on the graphic element.
With regard to the phonetic comparison,
the Board of Appeal noted that part of the
relevant public who knows English will
pronounce both marks identically, while
that part which does not speak English
will pronounce them somewhat differently:
“CU/A/TRO/E/VER” and “FO/RE/VER”.
In the first case, the marks must be deemed
identical, and in the second only averagely
similar. Aloe Vera argued, however, that an
evaluation of the phonetic similarity should
focus on the issue of how the marks will be
perceived by Portuguese consumers who
read the first mark as “QUATROEVER”.
The Court, however, ruled in favor of the
objection, that many Portuguese consumers
know English well enough to understand
both marks. The Court also held that, when
connected with an English word, the digit
“4” will be normally read in English and
understood as a reference to the preposition
“for”, since this practice is common in text
messaging, internet communication, e-mail,
and on internet forums and blogs.
In respect of the conceptual similarity,
the Board of Appeal found that “…the
conceptual comparison depends on what
consumers are considered: consumers who
1/2014 9
know English will perceive the same idea in
each of the marks: “without end, eternally”
(which would mean that the marks are
conceptually identical), while consumers
who do not speak English will not associate
the two marks with each other on the
conceptual level”.
Danuta Budziewska applied to the EU
General Court for an amendment of the
contested decision and for the decision of
the Cancellation Division of 23 April 2010 to
be overturned.
Source: www.curia.europa.eu
EU – Registration of
a trademark as evidence
of public availability of
a design:ruling of the EU
General Court
An interesting ruling was issued by the EU
General Court on 7 November 2013 in the
case of an action by Danuta Budziewska
against a decision by the OHIM of
23 September 2011 (case R 1137/2010-3),
in the case of a dispute over the invalidation
of a right to a design between the plaintiff
and Puma AG Rudolf Dassler Sport.
The proceeding before the OHIM began
when Danuta Budziewska submitted an
application for registration of a Community
design on the basis of Council Regulation
(EC) No. 6/2002 of 12 December 2001
on Community Designs (hereinafter the
“Regulation on Designs”). The design was
to be registered for products from class
32 (graphic symbols and logos, designs,
ornamentation) in accordance with the
Agreement establishing an international
classification of industrial designs signed in
Locarno on 8 October 1968 (the “Locarno
Agreement”). The Community design
submitted, which shows a jumping cat, was
registered on 2 May 2007.
10 Trade marks and unfair competition
On 26 February 2009, Puma AG Rudolf
Dassler Sport (in later proceedings before
the EU General Court, Puma SE acted as
an intervening party) (“Puma”) moved for
invalidation of the right to that design on
the basis of Article 52 of the Regulation on
Designs. Puma justified its motion by the
design’s absence of novelty and individual
character (Article 25 par. 1 letter b of the
Regulation on Designs) and by the use in
the contested design of a distinguishing
mark belonging to another party (Article 25
par.1 letter e of the Regulation on Designs).
Puma referred to an earlier design disclosed
in a trademark registered in 1970.
The OHIM Cancellation Division found in
favour of Puma’s motion and invalidated
the design by a decision of 23 April 2010.
Danuta Budziewska appealed against that
decision. In a decision of 23 September
2011, the OHIM Third Board of Appeal
dismissed the appeal, stating primarily
that the design was devoid of individual
character.
In analyzing the legal status, the EU General
Court referred to Article 4 par. 1 of the
Regulation on Designs, which emphasizes
that a design is protected as a Community
design within the scope in which it is new
and possesses individual character.
Pursuant to Article 6 par. 1 letter b) of the
Regulation on Designs, it is deemed that
a registered design possesses individual
character if the overall impression it
makes on an informed user differs from
the impression made on such a user
by a design that was publicly available
before the date on which the design in
question was submitted for registration, or,
if priority was reserved, before the date of
priority. Article 6 par. 2 of that Regulation
on Designs adds that, when evaluating
individual character, account is taken of
the degree of creative freedom used in
preparing the design.
The appellant argued that even if – as the
Board of Appeal found – the elements to
which Puma referred existed prior to its
submission of the design, those earlier
rights would constitute trademarks, and
not designs made publicly available in
the meaning of Article 6 par. 1 letter b) of
Regulation No. 6/2002. The EU General
Court had no doubt, however, that the
international registration of Puma’s design
in the form of a trademark constitutes
evidence of the public availability of that
design.
The appellant maintained that the contested
design presents a “domestic cat in the
act of landing on its proverbial four feet”,
and not a wild puma in the act of leaping
upwards, as in the case of the Puma
trademarks. The Court held that, from the
point of view of an informed user of logos
who is aware of the reputation of the Puma
design, the overall impression created by
the disputed design does not differ from
that made by the earlier design, for the
overall impression made by both designs
results from the silhouette of an animal from
the cat family, seen in profile and facing
leftwards, in the act of jumping, with its tail
raised, presented in a light color on a dark
background.
specific trademarks come from the
same business or businesses that have
commercial ties with each other. Thus
argued the Cancellation Division of the
OHIM in a decision of 25 November 2013
(No. 6041C), pursuant to which a motion
for invalidation of the trademark T.G.R.
ENERGY DRINK was dismissed (exclusive
right No. 5 689 237).
That motion was submitted by boxer Dariusz
“Tiger” Michalczewski, the right holder
to the earlier Community word-graphic
trademark “Dariusz Tiger Michalczewski”
and to the Polish graphic marks:
In the view of the Court, the difference
between the designs (including the position
of the ears, paws and tails of the animals),
even if perceptible to an informed user of
logos, are not distinct enough to negate the
overall assessment of similarity made by the
Board of Appeal.
The trademarks belonging to Dariusz
Michalczewski (Community trademark
No. 1,219,73 and Polish trademark
R-191973) are registered for class 32
(waters, non-alcoholic drinks, juices).
The case is similar for the goods
submitted by Foodcare sp. z o.o.,
against which Dariusz Michalczewski
submitted an opposition.
Source: www.curia.europa.eu
A likelihood of consumers being misled
exists where public opinion may be
convinced that given goods bearing
In the OHIM’s assessment, a likelihood of
consumers being misled exists when the
impression is created by the marks that
certain goods bearing specific trademarks
come from the same business or,
depending on the case, from businesses
that have economic ties with each other.
Whether a likelihood of consumers being
misled arises depends on an overall
evaluation of several interdependent
factors. According to the OHIM, those
factors include:
a) The similarity of the goods or services.
The Court held that the ruling of the OHIM
Board of Appeal had not been made in
infringement of the law and dismissed the
appeal in its entirety.
EU – No similarity
between tigers:
decision of the Office
for Harmonization
of the Internal Market
in the case of the trademark
“T.G.R. ENERGY DRINK”
being misled by the coexistence of his
earlier trademarks and the contested
trademark (Article 53 par. 1 letter a) read
together with Article 8 par. 3 of Regulation
No. 207/2009 of 26 February 2009 on the
Community Trade Mark (Journal of Laws
78 p. 1)).
b) The similarity of the marks.
The word trademark “T.G.R. ENERGY
DRINK”, which the boxer sought to
have invalidated, was submitted by the
company Foodcare sp. z o.o., with which
Michalczewski collaborated in the years
2003-2010 concerning promotional
activities for “TIGER” energy drinks.
In his motion, Michalczewski referred in
particular to the existence of the earlier
marks and to the likelihood of consumers
The OHIM ruled that there is no similarity
between the above graphic marks, the
mark “Dariusz Tiger Michalczewski”
and the mark “T.G.R. ENERGY
DRINK”. They are not similar visually,
phonetically, or conceptually. On the
conceptual level, there is no similarity
between the English word ”tiger”, which
has no meaning in Polish, the man’s first
and last name of Slavonic origin, and the
1/2014 11
English term ”energy drink”.
c) The distinctiveness of the earlier mark.
In the OHIM’s opinion, the
distinctiveness of the earlier mark is of
an average degree. The fact that the
applicant, whose first and last name
and nickname are used in the marks, is
a famous boxer does not provide a basis
for arguing that the marks concerned
are highly distinctive due to use or
reputation.
d) The distinguishing and dominant
elements of the conflicting trademarks.
In the OHIM’s opinion, a comparison
of the marks must be made on the
basis of the overall impression they
make. The OHIM held that the
contested trademark does not contain
any elements that could be deemed as
clearly dominant (drawing attention to
themselves more than other elements).
e) The relevant public.
In the OHIM’s assessment, the relevant
public for the products bearing the
marks is all consumers.
In the view of the OHIM, it is highly unlikely
that an average consumer who does not
remember the marks precisely would
find any relationship at all between them.
Therefore, there is no risk of confusion
between the earlier registered marks and
the objected mark. Dariusz Michalczewski’s
motion for invalidation of the mark submitted
by Foodcare sp. z o.o. was dismissed in its
entirety.
Source: www.oami.europa.eu
12 Trade marks and unfair competition
PL – Cash premiums
and logistics fees
as an act of unfair
competition: ruling
of the Supreme Court
On 8 November 2013, the Supreme Court
dismissed a cassation appeal in a case
between the Lodz clothing company Redan
S.A. and the hypermarket chain Auchan
Polska Sp. z o.o. over a return of premiums
and logistics fees infringing Article 15 par.
1 pt. 4 of the Act on Combating Unfair
Competition (case file No. I CSK 46/13).
Auchan had concluded an agreement
with Redan containing provisions on cash
premiums and logistics fees. In the case
where the amount of sales of textiles offered
by the claimant to Auchan exceeded
the amount specified in the agreement,
the claimant was obliged to grant aftersales discounts. The amount above
which premiums were to be awarded
was established at a turnover of 10,000
zlotys, which, in the opinion of the court,
was a symbolic amount for the purpose of
circumventing the provisions prohibiting
additional fees. What is more, the
defendant imposed logistics fees on Redan
for distributing its products to individual
hypermarkets. The clothing company was
responsible for delivering all of the goods
ordered to Auchan’s central warehouse,
yet also had to cover the costs of further
distribution of the goods to shops; this, in the
opinion of the Court, constitutes an internal
matter of the commercial chain.
The Supreme Court formulated the
hypothesis that “it is an act of unfair
competition to hinder other business’ access
to the market, in particular by collecting
fees other than a commercial margin for
accepting goods for sale. Yet whether
a given discount constitutes an inadmissible
fee which can be deemed an act of unfair
competition depends on the circumstances
of a specific case”. In every case, an
individual assessment of the events should
be made, because deeming any benefits as
undue can only result from their nature and
from the purpose of the agreement in which
they are established.
The Supreme Court acknowledged the
claims of the claimant, thereby upholding
what had been determined in all previous
instances and awarded the claimant the
amount it sought, almost one-million zlotys
together with interest, for inadmissible
premiums and logistics fees.
Source: www.rp.pl, Legal Information System
LEX No. 1399866
PL – The use of foreign
words in a trademark:
comments contained
in a ruling of the Supreme
Administrative Court
on an attempt
to invalidate the protective
right to the trademark
“BIEN DONG”
On 11 December 2013, the Supreme
Administrative Court (SAC) issued a legally
binding ruling in case II CSK 1406/12,
dismissing a cassation appeal which raised
fundamental issues concerning an attempt
to invalidate the word-graphic trademark
“BIEN DONG”, R-204010.
The plaintiff was of the opinion that the
contested trademark is a descriptive
designation because, when translated from
Vietnamese into Polish, it means “South
China Sea”. That name is the official name
of a geographic region used in Vietnam and,
as such, should remain in free circulation.
The party entitled to the mark did not
agree with that argument, claiming that the
expression “BIEN DONG” is a term that
is totally abstract for the average Polish
consumer of services from classes 36, 39,
and 43 of the Nice classification, including
the travel services for which the mark was
registered.
In the opinion of the Polish Patent Office
(PPO), the first authority to consider the
case, the contested mark “BIEN DONG”
is a fantasy designation in relation to the
services it identifies. The combination
of two words that are unknown in Polish
gives rise to an impression that is of
a fantastical nature phonetically, visually,
and conceptually. The PPO emphasized
that what is important is how the mark is
perceived by the average market participant,
who will not see the mark as a Vietnamese
place name meaning South China Sea.
Further, the party questioning the registration
did not provide any evidence that the
average consumer would understand the
meaning of the words appearing in the
contested designation.
The PPO further referred to a ruling by the
Court of Justice of 9 March 2006 in case
C-421/04, in which the Court held that
“Article 3(1)(b) and (c) of First Council
Directive 89/104/EEC of 21 December 1988
to approximate the laws of the Member
States relating to trademarks does not
preclude the registration in a Member State,
as a national trademark of a term borrowed
from the language of another Member State
in which it is devoid of distinctive character
or descriptive of the goods or services in
respect of which registration is sought, unless
the relevant parties in the Member State in
which registration is sought are capable of
identifying the meaning of the term”.
The case came up on the notice board of
the Provincial Administrative Court (PAC) in
Warsaw, which in a ruling of 13 May 2011
(case file No. VI SA/Wa 396/11), dismissed
the complaint, not concurring with the
arguments of the plaintiff that consumers of
the services are solely persons of Vietnamese
origin. For the average consumer on
the Polish market, “BIEN DONG” is not
descriptive in nature.
The plaintiff then lodged a cassation appeal,
which in the opinion of the SAC, was not
worthy of consideration, since the charges
it contained were groundless. It should
be emphasized that the burden of proving
the grounds for invalidation rests with the
plaintiff as the initiator of the objection.
The plaintiff in this case did not present
any evidence during the administrative
proceeding showing that the services
bearing the trademark “BIEN DONG” are
only used by market participants who are
of Vietnamese origin. Further, the plaintiff
did not produce any evidence to show
that the average consumer perceiving the
mark would understand the meaning of the
Vietnamese words as South China Sea.
The SAC shared the stance of the both PAC
and the PPO that the average consumer
of a registered domestic trademark on
the Polish market is a Polish consumer.
Therefore, it cannot be expected that
the average consumer could perceive
the contested mark as a Vietnamese
place name. It is difficult to imagine that
consumers of the services are only persons
of Vietnamese origin. In the opinion of the
SAC, the combination of two words “BIEN”
and “DONG”, unknown in Polish, means that
we are dealing with an expression which is
fantastical in nature, phonetically (specific
pronunciation), conceptually (no meaning
in Polish), and visually (containing marks
typical of oriental languages). The disputed
trademark, therefore, has both abstract
distinctiveness and specific distinctiveness.
It is not descriptive of the wide range of
services for which it was registered.
Source: www.oami.europa.eu
PL – The correctness of the
control of a decision by the
Polish Patent Office: the Supreme
Administrative Court in the case
of a protective right granted
for the designation “EKOFLORA”
On 3 December 2013, the Supreme
Administrative Court (SAC) issued a ruling
(case file No. GSK 1157/12) overturning
a contested ruling of the Provincial
Administrative Court (PAC), and referred
the case back for reconsideration.
The proceeding before the PAC concerned
a complaint by the company E. sp. z o.o.
with its registered office in S. against
a decision of the Polish Patent Office (PPO)
on refusing to grant a protective right to
a trademark.
1/2014 13
On 2 June 2009, the company E. sp. z o.o.
submitted the word trademark “EKOFLORA”
for registration. The mark is designated for
goods in class 31, covering in particular such
products as flower bulbs, natural flowers,
dried flowers for decoration, seeds, seeds
for animal feed, fresh garden herbs, bushes,
saplings, and hay.
The PPO refused to grant a protective right
to the word designation “EKOFLORA” on
the grounds that the designation submitted
is not sufficiently distinctive, since it merely
constitutes a verbal, direct indication of
the goods it is used to describe. The PPO
applied Article 129 par. 1 pt. 2 and Article
129 par. 2 of the Industrial Property Law
(the absence of sufficient distinctiveness).
In a motion for reconsideration of the
case, the company E. sp. z o.o. submitted
materials to the PPO confirming that the
designation had sufficient distinctiveness.
These included invoices, advertising
materials, and financial reports. In this way,
the company showed that it had actually
and consistently used the designation
submitted. E. sp. z o.o. also argued that its
motion was justified because the company
has been active on the domestic flower
market for years. It was established in
1994 and has been identifying its products
with the designation “EKOFLORA” ever
since that time. It also has retail outlets
that actively sell goods bearing the mark
“EKOFLORA”. In the motion, maintaining
the stance that the designation submitted
has initial distinctiveness, E. sp. z o.o. also
showed that there are grounds for accepting
that the designation, being in use for years,
has acquired secondary distinctiveness.
The company presented evidence, which in
its opinion, confirmed this position.
14 Trade marks and unfair competition
In the decision about which E. sp. z o.o.
complained to the PAC, the PPO made
no reference at all to the documents
submitted, nor to the claims in the motion
that the designation submitted met the
prerequisites specified in Article 130 second
sentence of the Industrial Property Law
(acquisition of distinctiveness as a result of
use). In verifying that decision, the PAC did
not evaluate whether the omission of that
evidence and those claims of E. sp. z o.o.
could have been important to the result of
the case, but it did go beyond what had
been established by the PPO, making its own
determinations as to whether it was possible
for the designation “EKOFLORA” to have
acquired distinctiveness.
Furthermore, the PPO had pointed to the
inadmissibility of registering marks using
the designation “eko” resulting from Council
Regulation (EC) No. 834/2007 of 28 June
2007 on organic production and labelling of
organic products and repealing Regulation
(EEC) No. 2092/91 (the “Regulation on
Organic Production”). Pursuant to Article
23 par. 1 read together with Article 23 par. 2
of that regulation, the terms “bio” and “eco”
may only be applied to products created
using organic methods, unless they are not
used in relation to agricultural products in
food or animal feed, or are clearly in no way
related to organic production.
In accepting that the PPO was correct in
holding that the Regulation on Organic
Production applies in the case, the PAC did
not justify why it did so. It did not assess
whether the products of the company E. sp.
z o.o. are actually covered by the Regulation
on Organic Production. This is important to
the case. Pursuant to Article 131 par. 1 pt. 3
of the Industrial Property Law, the possibility
of consumers being misled constitutes
a negative prerequisite for granting protective
rights to a designation.
The case will be considered again by the
PAC.
Source: www.orzeczenia.nsa.gov.pl
Other issues
FR – The two leading French online private sellers, Vente-privee.com1 and Showroomprive.com2,
opened fire against each other with regards to protection of their respective trademarks.
Alexandra Bernard, Claude-Etienne Armingaud
The earlier is the owner of the French and Community semi-figurative trademark „vente-privee.com”, underlined with a pink line drawn in diagonal,
enriched by two pink butterflies.
The latter is the owner of the French trademark „showroomprive.com” and expected the registration of a community semi-figurative
trademark „showroomprive.com” enhanced with some stylized and coloured elements.
However, on August 1, 2012, the Office for the Harmonisation of the Internal Market (herein, “OHIM”) refused such application for
„SHOWROOMPRIVE.COM” on the ground that the trademark was not distinctive enough and, much to the contrary, was descriptive for
the targeted goods and services.
At the same time, on September 5, 2012, Showroomprive.com assigned before the Paris first instance Court, its competitor, Vente-privee.com,
in order to invalidate the „vente-privee.com” trademark for lack of distinctiveness. This trademark had been registered since October 14, 2004
without any complains from ShowroomPrive.com or any other third party.
The first instance Court welcomed Showroomprive.com’s request and decided that „the terms ‘venteprivee.com’ was, at the time of the application
date, descriptive of the company’s business activity for every consumer wishing to buy online discounted products; and thus such use was
necessary to designate its private sales activity.” In addition, the Paris Court highlighted that the trademark had not acquired any „distinctiveness
through its use, thus enabling the term to take ownership of generic names, when such names must remain available for all the economic actors
from a given sector.”
Meanwhile, on December 6t, 2013, in another law suit, Vente-privee.com assigned the owner of similar domain names (namely vente-priveee.com,
ventprivee.com, venteprives.com) on the basis of its cybersquatting activities. The French first instance Court highlighted that the semi-figurative
„vente-privée.com” trademark had to be considered as a well-known trademark. Indeed, in this case, the Court decided that the „vente-privée.
com” trademark had a strong reputation due to the fact that a significant part of the relevant public made a connection between the trademark and
its associated goods and services.
In conclusion, the decision concerning the semi-figurative trademark should not affect the word trademark „SHOWROOMPRIVE.COM” registered
in 2007 by the OHIM. Nevertheless, we can legally wonder about the consequences in case of further contestation regarding a word mark and
a close watch should be kept on any follow up evolutions.
1) French for “private sales”
2) French for “private showroom”
1/2014 15
It is worth using the ® symbol
beside a registered trademark3
Michał Ziółkowski
One of the entitlements resulting from a protective right to a trademark is the possibility of using a symbol attesting to the registration of the
mark in trade. The symbol ® derives from the English word “registered”, and is universally recognized in international commerce.
A right, not an obligation
The use of the ® symbol is not compulsory. It is an entitlement resulting from Article 151 of the Industrial Property Law Act of 30 June 2000
(hereinafter the “IPL”), pursuant to which an entitled party may indicate that its trademark has been registered by placing the letter “R”
inscribed in a circle in the vicinity of the mark. In practice, the ® symbol is found in the upper right corner of a trademark, and is usually
written in a smaller font than the mark itself.
Consumer and competitor awareness
The symbol is used as both information and a guarantee. A purchaser of goods identified with a trademark of a business and with the ®
symbol is aware that the producer of the goods has obtained particular protection on the basis of the provisions of the IPL, and that the goods
bearing that symbol have a hallmark of legality. The use of the ® symbol by a trademark may mean that products bearing the symbol are
perceived by consumers as being of high quality. An aware consumer is willing to pay more for a product that he or she believes to derive
from a legal source and from a producer whose position on the market is well established.
The use of the ® symbol in commerce is also preventive in nature. First of all, it constitutes a kind of warning to other businesses. Every
market participant is aware that a trademark bearing the symbol is protected by law. By referring to the register of trademarks, anyone can
easily obtain information on when the mark became protected and who has the right to the mark.
Under a ruling by the Court of Appeal in Krakow on 18 March 2008 (case file No. I ACa 149/08), the purpose of using the ® symbol is to
announce that the trademark bearing the symbol enjoys protection. No extraordinary rights are associated with the symbol to strengthen the
market position of the goods identified by the trademark. The symbol contains no information on the product itself, but constitutes a signal to
any entities that would like to infringe the protective rights to the trademark that, in the case of such an infringement, the entitled party will be
able to bring certain claims against the infringing party.
Abuse penalized
The use of the ® symbol is prohibited on designations for which the Polish Patent Office (PPO) has not granted a protective right. This
concerns designations which (i) were submitted to the PPO but for which no protective right was granted, (ii) were submitted to the PPO and
the application proceeding is pending, (iii) are no longer protected due to the invalidation or expiry of the protective right, or (iv) are used in
trade as a trademark, but where the entity using the mark did not apply for protection.
The unlawful use of the ® symbol is a misdemeanor that can only be committed willfully with a direct or eventual intention. Pursuant to
Article 308 IPL, an entity that markets goods bearing a trademark together with the symbol where this is intended to cause the mistaken
supposition that the entity enjoys protection is subject to a fine. It is irrelevant whether the perpetrator succeeded in misleading buyers into
believing that the goods concerned are protected.
3) This article appeared in the daily newspaper Rzeczpospolita on 5 March 2014 under the title: “It’s worth using the ® symbol”
16 Trade marks and unfair competition
The aim of the protection resulting from Article 308 IPL is the guarantee of a transparent market. A customer to which goods are addressed must
not be misled with regard to the existence of actual protection of the trademark.
The ® symbol in EU commerce
The issue of the use of the ® symbol has not been regulated in EU trademark law by either directives or regulations, but has been left to be
determined by each member state. Because of the free movement of goods within the EU, this subject was considered by the EU Court of Justice
(case file No. C-238/89 Pall Corp. vs. P.J. Dahlhausen & Co.). The result of that ruling was the establishment of the view that the ® symbol may be
used beside a trademark on goods found in commercial trading within the EU if the trademark is protected in at least one member state. Since the
free movement of goods only concerns trade among EU member states, the issue of imports of goods from outside the EU remains to be considered.
Other symbols
In countries in which industrial property law permits the protection of unregistered trademarks (including the USA), the symbol TM is also widely
used. It is an abbreviation of the term “trade mark”. The symbol SM is also used in commerce, and is an abbreviation of the term “service mark”,
where the mark refers to services. In Great Britain, it is permissible to use the symbol RTM instead of ®.
Obtaining a protective right to a trademark and using the ® symbol can be helpful in developing a brand and avoiding it becoming degenerated.
The use of the ® symbol is not an obligation, but an entitlement of the entity, which has obtained formal protection for a certain distinctive
designation. That use is prohibited for entities that cannot demonstrate that they enjoy legal protection.
1/2014 17
Information on the activities of the K&L Gates Warsaw
intellectual property team
K&L Gates’ intellectual property team consists of seven lawyers (including a patent and
trademark attorney) who provide services to Polish and foreign clients on all aspects of
their businesses.
We advise on protecting intellectual property rights, including in litigation, customs
protection proceedings, and penal proceedings concerning piracy and other exclusive
rights infringements. We prepare applications and submissions to the Polish Patent Office
and the Office for Harmonization in the Internal Market (OHIM) on registering trade marks,
and we represent clients in dispute proceedings. We also focus on various issues relating
to unfair competitions and conflicts between designations.
We have extensive experience in preparing agreements concerning copyright and media
concluded between business entities, including licensing, publication, distribution and
dubbing agreements, as well as agreements concerning film and television production.
We deal with the regulations covering new technologies, personal data protection and
issues relating to the protection of business secrets and advertising law.
Our intellectual property experience is wide and varied. We represent clients before both the
civil and criminal courts, as well as before public authorities and the administrative courts.
For further information please, contact:
Oskar Tułodziecki
Oskar.Tulodziecki@klgates.com
Marta Wysokińska
Marta.Wysokinska@klgates.com
Agata Lewartowska-Błaszczyk
Agata.Lewartowska-Blaszczyk@klgates.com
Michał Ziółkowski
Michal.Ziolkowski@klgates.com
Dorota Koseła
Dorota.Kosela@klgates.com
Alexandra Bernard
Alexandra.Bernard@klgates.com
Ewelina Madej
Ewelina.Madej@klgates.com
Claude-Etienne Armingaud
Claude.Armingaud@klgates.com
Ewa Rusak
Ewa.Rusak@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”.
Anchorage Austin Beijing
Berlin Boston Brisbane Brussels Charleston Charlotte Chicago Dallas Doha Dubai Fort Worth Frankfurt
Harrisburg Hong Kong Houston London Los Angeles Melbourne Miami Milan Moscow Newark New York Orange County Palo Alto Paris
Perth Pittsburgh Portland Raleigh Research Triangle Park San Diego San Francisco São Paulo Seattle Seoul Shanghai Singapore
Spokane Sydney Taipei Tokyo Warsaw Washington, D.C. Wilmington
K&L Gates practices out of 48 fully integrated offices located in the United States, Asia, Australia, Europe, the
Middle East and South America and represents leading global corporations, growth and middle-market companies,
capital markets participants and entrepreneurs in every major industry group as well as public sector entities,
educational institutions, philanthropic organizations and individuals. For more information about K&L Gates or its
locations, practices and registrations, visit www.klgates.com.
This publication is for information purposes only and should not be used in order to make binding decisions. The topics raised herein are the result of a subjective
selection made by the authors of the bulletin, and do not constitute an exhaustive discussion of all issues. The information contained herein only concerns selected
aspects of the law. The content of the bulletin cannot be treated as legal advice.
©2013 K&L Gates LLP. All Rights Reserved.