Quarterly bulletin
no. 3/2013 (12)
Trade marks
and unfair competition
Introduction
Once again I have the pleasure of presenting a selection of important events in the field of
trademark and unfair competition law. I hope that the topics, which concern both legislative
issues and selected court rulings, provide a lucid, useful summary of the past few months in
this area of the law.
I would particularly like to draw your attention to the continuation of a discussion from
a previous issue on an amendment of the Industry Property Law. The new law should
introduce a series of improvements in response to requests submitted with regard to the
amendment.
Another important event took place in April when the European Commission published the
final result of studies conducted on the protection of trade secrets and business secrets on
the EU internal market. The studies covered the legal and economic structure of trade secret
protection within the EU. The initiative taken on this issue is vital for the development of the
modern economy.
I also recommend our text on a ruling of the Court of Justice of the European Union
concerning the jurisdiction of member state courts in the case of an infringement of
copyright. The Court judged that, even though author’s property rights are in principle
subject to the principle of territoriality, on the basis of Directive 2001/29 they can also be
subject to protection in all member states. By analogy, the principle expressed in that ruling
can also be applied to trademarks.
A number of interesting rulings have come up recently in case law. Of particular interest
are rulings concerning marks which are undoubtedly well-known, such as the trademark
“FISHBONE” submitted by New Yorker SHK Jeans GmbH & Co. KG, whose application was
partially rejected due to the prior actual use of the mark “FISHBONE BEACHWEAR”, and
“KENZO ESTATE”, accused of reaping benefits from the earlier mark “KENZO”.
We also present yet another ruling in a dispute which has been pending in Poland for
many years, between the world-renowned jewelry company Tiffany & Co. of New York and
Tiffany & Broadway with its registered office in Houston, a producer of women’s shoes.
Having this opportunity I would like to whish you a Happy Holiday Season and a Prosperous
New Year.
I hope you enjoy this issue. As always, your comments are welcome and appreciated.
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
Oskar Tułodziecki
Contents
Legislative initiatives
EU – Proposed EC regulations on trade secrets within the EU and the “Licence for
Europe” initiative .....................................................................................................4
Poland – Proposed amendments of the Act on Industrial Property Law ......................4
Case-Law
EU – Copyright in member state jurisdictions: ruling of the Court of Justice
of the European Union .............................................................................................6
EU – Procedure – consideration of evidence submitted – the case of the
“FISHBONE” mark: ruling of the Court of Justice of the European Union ...................6
EU – “CITIGATE” and a family of marks based on the element “CITI”: ruling
of the EU General Court ...........................................................................................7
EU – The trademark “NEO” not for Airbus: ruling of the EU General Court .................8
EU – “GITANA” leather accessories and “Kitana” clothing mislead consumers:
ruling of the EU General Court ..................................................................................8
EU – The designation “KNUT – DER EISBÄR” may be misleading: ruling of the
EU General Court ...................................................................................................10
EU – Likelihood of being misled – the marks “girls1st” and “GO GIRLS”: ruling
of the EU General Court ..........................................................................................10
EU – Renown does not prevent the registration of a dissimilar mark: decision
of the OHIM Board of Appeal ..................................................................................11
EU – “KENZO ESTATE” and the earlier “KENZO” – reaping unjustifiable benefits
from the renown of a mark: decision of the OHIM Board of Appeal ..........................11
EU – “Quo Vadis”: decision of the OHIM Board of Appeal .......................................12
EU – The marks “SEVEN” and “Room Seven” are similar: decision of the OHIM
Board of Appeal .................................................................................................... 13
Poland – “Geo Glob Polska” – inadmissible use of the word “Polska” in a trademark ..13
Poland – The renown of “Tiffany” in Poland: ruling of the Supreme Administrative
Court ....................................................................................................................14
Poland – Whether a court can withdraw from issuing a prohibition on
an infringement – the case of “My Little Pony” versus “My Sweet Pony”:
ruling of the Court of Appeal in Warsaw ................................................................. 15
Other issues
It’s worth protecting industrial designs ....................................................................16
Legislative initiatives
EU – Proposed EC regulations
on trade secrets within the EU
and the “Licence for Europe”
initiative
In April 2013, the European Commission
published the final result of studies
conducted on the protection of trade
secrets and business secrets in the EU
internal market. The studies covered
the legal and economic structure for
protecting trade secrets within the European
Union. Extensive surveys were combined
with a comparative analysis of the legal
solutions used in EU member states and
in Switzerland, the USA and Japan. On
the basis of surveys conducted on the
needs of European businesses and the
strategies of particular industries, the
Commission described the weaknesses
of the system for protecting trade secrets
within the EU and pointed to the need
for harmonization in this area. It also put
forward legislative recommendations and
areas, in which legislative intervention will be
necessary. The aim of the legal regulations
proposed by the Commission is to stimulate
economic growth and to increase the EU’s
competitiveness.
The project originated in the European
Commission recognizing that the
development of the information society has
caused an increase in the importance of
trade secrets, and has revealed the need to
establish uniform standards of protection
for EU states. It was pointed out that
no common regime for protecting trade
secrets exists in EU law, and that there is
no definition of a trade secret common to
all states. Moreover, the prerequisites for
bringing claims in such matters vary among
Trade marks and unfair competition
member states. The European Commission
came to the conclusion that it is necessary
to harmonize regulations in order to support
innovation and economic growth, and to
eliminate obstacles hindering the functioning
of the internal market. The EU should enact
legislation facilitating the development of
companies and the exchange of innovative
knowledge.
of employer and employee. An important
element of the proposed regulations would
be establishing a framework for competition
provisions in domestic legislation on criminal
proceedings, including on the issue of how
serious infringements should be defined and
penalized. One of the final proposals is to
clarify issues relating to the protection of trade
secrets in the context of antimonopoly law.
The numerous recommendations include
defining the concept of a trade secret
included in the TRIPS Agreement such
that it is uniformly interpreted and applied
by member states. The Commission also
pointed to the necessity of defining what
types of conduct constitute an infringement
of a trade secret in order to guarantee
reliance on the law and avoid unnecessary
litigation, and to the necessity of defining
“innocent” consumers of trade information
– persons who act in good faith but often
suffer serious consequences as a result
of an infringement of confidentiality. The
aim of the new regulations would also be to
create a simplified model for “ad hoc” civil
proceedings and to define standards for the
evidence required to initiate a proceeding.
Every member state should also define
what courts are competent to conduct
proceedings, and establish legal means for
protecting business secrets.
Source: www.ec.europa.eu
In addition, the requirements for evidence
and criteria for calculating damages in the
case of an infringement are to be harmonized
and clarified. The European Commission
would like to introduce administrative
means of protection modeled upon the
US International Trade Commission, to
harmonize guidelines on confidentiality and
noncompete undertakings for employees
both during and after an employment
relationship, and to balance the interests
Poland – Proposed
amendments of the Act
on Industrial Property Law
In Bulletin No. 3/2012, we reported on the
beginning of work on a further amendment
of the Act on Industrial Property Law (the
“IPL”), analyzing individual proposals.
On 16 July 2013, the Council of Ministers
approved the groundwork for a draft
amendment of the Industrial Property Law
submitted by the Minister of the Economy.
The draft proposes the implementation of
an institution known as consent letters,
thanks to which it will be easier to register
a trademark similar to another, earlier mark.
A consent letter is nothing but a declaration
in which the holder of the earlier trademark
grants its consent to the registration of
a similar or identical trademark to another
party.
The new provisions should also make it
possible for entities submitting trademarks,
etc., to be partially exempt from the fee
for a submission to the Patent Office
(up to 80 percent of the value of the
fee). An applicant will have to show that
it is unable to pay the whole amount.
The proposed changes to the IPL also
concern other industrial property rights,
including patents and rights from the
registration of industrial designs.
The new law is to introduce a system of
means of relief which will apply when an
applicant or owner of a mark fails to adhere
to procedural deadlines. The draft introduces
a longer, six-month period (counting from
the date on which the period for performing
a given act lapsed) in which a motion can be
submitted for restoring the time period for
performing the procedural act.
There is a proposal to facilitate electronic
correspondence with the Patent Office.
It will no longer be necessary to use
a certified, qualified electronic signature,
since an ordinary electronic signature will
be deemed as equal to a signature on
paper. This is in response to demands by
applicants expecting a more accessible form
of communication.
Work is also ongoing on draft legislation
amending that regulating the conditions
for access to working in certain professions.
That draft, which also partially concerns
the IPL, is constantly being changed.
Currently, it is proposed to increase the
authorisation of attorneys (adwokaci and
radcy prawni) pertaining to submitting
trademarks to the Polish Patent Office on
behalf of domestic entities and those from
other EU member states, where in the past
only patent attorneys have been able to
do so. The obligation to use the services
of a patent attorney as a professional
authorized representative in industrial
property cases would still apply, however,
to all entities from outside the European
Union.
Source:
www.mg.gov.pl; www.premier.gov.pl
3/2013 Case-Law
EU – Copyright in member
state jurisdictions: ruling
of the Court of Justice
of the European Union
In October 2013, the Court of Justice
addressed the issue of the competent court in
a civil case over an infringement of copyright.
An author living in Toulouse, France, sought
compensation for the distribution of CDs
produced in Austria without his consent by
the company Mediatech. The disks were sold
by the British companies Crusoe and Elegy
on websites also available where the claimant
lives. The author brought a compensation
claim against Mediatech in the civil court
in Toulouse. Mediatech argued that the
French courts had no jurisdiction in the case,
but the court dismissed this. The company
appealed against the ruling, and the court
of appeal in Toulouse held in favor of the
appeal, identifying an Austrian court as
being competent in the matter. The claimant
raised a cassation appeal against that ruling,
claiming an infringement of Directive No.
44/2001 on jurisdiction and the recognition
and enforcement of judgments in civil and
commercial matters. A pretrial question
sent by the cassation court to the Court of
Justice concerns the possibility of seeking
compensation for the infringement of
economic copyright on French territory.
The Court of Justice noted that, in the case of
infringements, the principle is that the courts
of the member state in which the defendant
resides have jurisdiction. Exceptions exist,
however, in the form of special jurisdiction.
In such a situation, the competent court
will also be a court of the state in which an
event which caused or could cause harm
arises. In accordance with the general
Trade marks and unfair competition
principle, then, the competent court would
be the Austrian court. The Court of Justice
acknowledged, however, that the place in
which harm arises may vary, depending
on the nature of the law the infringement
concerns. Moreover, it should be verified
whether the right for which protection is
sought is subject to protection in the state in
which the claim is brought. Finally, it should
also be determined which court is best able
to assess the grounds of the claims raised.
The Court of Justice held that the effects of
an infringement of personal interests through
content published on the Internet is best
judged by the court of the place in which the
injured party’s vital interests are located.
The French court will be competent to
deal with the claim if France protects the
economic rights for which the claimant
seeks protection, and the harm suffered
can materialize within the jurisdiction of
that court. The Court of Justice explained
that, while economic copyright is subject to
the principle of territoriality, on the basis of
Directive 2001/29 it should automatically be
subject to protection in all member states,
and so, may be infringed in any of them.
In other words, protection will be effective
also when the harm manifests in the territory
of France.
It would be different if, on the basis of
a registration, intellectual or industrial
property rights were only protected in the
territory of a single member state. Then,
the claim would have to be brought before
the Austrian court.
The Court of Justice concluded that the
French court is competent to consider the
claim for compensation brought against
a company having its registered office in
another member state where that company
replicated goods and then sent them for
distribution to a company with its registered
office in a third member state by means of
the Internet. The Court of Justice held that
harm could arise in French territory, the right
concerned is protected in that state, and the
French court is able to evaluate the grounds
for the claim. It must be emphasized,
however, that the French court is competent
solely within the scope of the harm caused
in the territory of the member state to which
that court is subject.
Source: www.curia.europa.eu
EU – Procedure –
consideration of evidence
submitted – the case
of the “FISHBONE” mark:
ruling of the Court of Justice
of the European Union
In July, in case C-621/11 P, the Court of
Justice of the European Union dismissed
a complaint by an applicant for which the
OHIM refused to register the word trademark
“FISHBONE” for goods in Classes 18 and
25 of the Nice Classification. The mark
was submitted by New Yorker SHK Jeans
GmbH & Co. KG. The refusal to register
concerned some of the goods, and was
issued as a result of an objection raised by
an entity enjoying a protection right to an
earlier (Greek) domestic mark, “FISHBONE
BEACHWEAR” for goods in Class 25 of the
Nice Classification (Vallis K.-Vallis A. & Co.
OE). Of key importance to the case was
proof of the actual use of the earlier mark.
During the proceedings before the OHIM,
at the OHIM’s request and within the time
period set, the right holder of the earlier,
domestic mark presented evidence of the
use of the mark, consisting of a declaration,
invoices and photographs. The applicant
for the new mark argued that that evidence
was insufficient, and so the holder of the
earlier mark provided additional evidence
(catalogues). The Office found in favor of
the objection in respect of some goods from
Class 18 and all of the goods from Class 25.
The OHIM Board of Appeal, however, ruled
that that decision was incorrect with respect
to goods from Class 18, though correct
with respect to goods from Class 25. The
Board of Appeal held that the new evidence,
including the catalogue from 2001 submitted
by the party raising the objection, had been
correctly admitted, though after the lapse of
the time period set by the OHIM. The case
was then referred to the European Union
General Court, which refused to accept the
position of the company New Yorker.
The case then ended up before the EU
Court of Justice. The main charge was of
an infringement of the rules concerning
the admission of evidence. The company
New Yorker claimed that the materials
demonstrating the actual use of the earlier
mark on which the decision was based
(i.e. the catalogue from 2001) had not been
provided within the time period set by the
OHIM. The Court of Justice emphasized that
the OHIM cannot admit evidence provided
after the deadline set. In principle, however,
the OHIM is not obliged to ignore such
evidence. This means that the issue is at the
discretion of the OHIM. At the same time,
the Court of Justice noted that a particular
provision exists concerning proceedings in
the case of an objection. That provision
provided that, if the OHIM requires evidence
to be presented by the objecting party, and
that evidence is not presented within the
time period appointed, the objection will
not be considered. If, however, within that
time period certain evidence is presented,
the proceeding initiated by the objection
should proceed normally, and evidence
may be evaluated during the course of the
proceeding, during which a party may react
in a normal manner to further claims by
the opposite party. That is why, in the case
being considered, the Court of Justice did
not detect an infringement of the provisions.
Vallis K.-Vallis A. & Co. reacted to the
OHIM’s first request for evidence within the
appointed time, and so the proceeding could
continue. During the proceeding, it was then
possible to admit further evidence on which
a final ruling on the case could be based.
Source: www.curia.europa.eu
EU – “CITIGATE” and
a family of marks based
on the element “CITI”: ruling
of the EU General Court
In 2001, IG Communications Ltd applied for
registration of the word mark “CITIGATE”
for Classes 9, 16, 35 and 42 of the Nice
Classification. Those classes mainly pertain
to services relating to the banking and
finance industry. The registration of the
mark was objected to by Citigroup Inc.
and Citibank NA on the grounds of the
prior registration of trademarks created on
the basis of the element “CITI”, including
“CITICORP”, “CITIGROUP”, “CITIGOLD”
and “CITIBOND”. In 2005, the Objections
Department of the OHIM dismissed the
objection. The case then went to the
OHIM First Board of Appeal, which found
the objection to be fully justified. The EU
General Court upheld the decision of the
Board of Appeal, thereby refusing to grant
the applicant the right to register the mark
“CITIGATE” (case file No. T-301/09).
After conducting an analysis, the Court held
that there is a family of marks based on
the element “CITI”, and that the objecting
parties had provided sufficient evidence (in
the form of brochures, documents and web
pages) that those marks are used in trade.
The “CITIBANK” mark acts as the original
mark from which the rest of the series is
derived, and in which the element “CITI”
plays a distinctive role.
The Court also held that, when analyzed
in the relevant context – in this case,
business in the financial, electronic and
telecommunications sectors – the goods and
services for which the “CITIGATE” mark was
to have been registered can be deemed as
similar. However, in the case of Classes 35
and 36, which distinguish the above goods
from each other, it can be considered, in
connection with their ties to the financial
and banking sector, that here as well there
exists a certain degree of similarity. In this
way, some of the goods and services were
judged by the Court to be identical, and
some similar.
The Court also compared the visual,
phonetic and conceptual similarity of the
marks. It pointed out that, visually, the
very fact of the identity of five out of eight
letters (in most of the earlier registered
marks) plays a decisive role. Conceptually,
the characteristic element “CITI” is
significant. Phonetically, the element “CITI”
is pronounced the same way in each of
the marks. It must also be noted that the
average consumer also pays attention to how
a mark begins. In short, it must be held
3/2013 that the element “CITI” possesses a high
degree of distinctiveness, which means that,
conceptually, the marks are highly similar,
and on the phonetic and visual levels they
show at least an average level of similarity.
In evaluating the cumulative likelihood of
consumers being misled, the Court judged
that such a risk certainly exists.
Further, the EU General Court found that
the marks from the “CITI” family meet the
cumulative prerequisites for being deemed as
renowned marks. The Court also pointed out
that the marks with the element “CITI” were
registered previously, while the Applicant
sought the registration of a mark similar to
one whose renown is recognized within EU
territory. Further, there is an indisputable
risk of the mark being unfairly exploited.
The Court also emphasized that, the greater
the distinctiveness of a mark, the greater the
risk of its renown being exploited. Taking
all of the above circumstances into account,
the application for registration was rejected.
Source: www.curia.europa.eu
EU – The trademark “NEO” not
for Airbus: ruling of the EU
General Court
On 3 July 2013, a ruling was handed
down by the EU General Court (case file
No. T-236/12) in a case concerning the
registration of a Community word trademark,
“NEO”, for goods and services in the
aviation industry. The applicant was the
French company Airbus SAS. In 2010,
that company applied for registration of
a Community word trademark for goods
in Classes 7, 12 and 39 of the Nice
Classification (including aircraft engines,
means of transport and air transport
Trade marks and unfair competition
services).The OHIM made an assessment
of the mark submitted, but only permitted
registration for services from Class 39 of
the Nice Classification. Airbus appealed
against that decision, but the appeal
was not considered, since the OHIM
held that the word designation “NEO” is
not sufficiently distinctive for the goods
concerned, and is only of a descriptive
nature. The word “NEO” means “new”
in many languages functioning in the EU,
e.g., in Greek. The OHIM Board of Appeal
took the position that the average consumer
would perceive the designation as an
indication that the production concerned
is associated with novelty, modernity and
the latest technology. Apart from that, the
designation would only indicate the positive
features of the products on which it was
placed, and would, therefore, fail to fulfill
the basic function of a trademark, that of
identifying origin.
The EU General Court shared the view of
the OHIM, and stated that this type of word
designation should not be appropriated
by any entity. It would be difficult to
justify granting an exclusive right to a term
constituting a description of goods, for
then competitors would not be able to use
a standard, obvious term in trading.
In the opinion of the Court, there should
be no monopoly on characteristics of goods
where those characteristics are immanently
connected with the goods. The EU General
Court also held that the designation
“NEO” is not sufficiently distinctive in
respect of services from Class 39 of the
Nice Classification. As a result, Airbus
did not obtain registration of the Community
word mark “NEO” for certain goods and
services.
Source: www.eur-lex.europa.eu
EU – “GITANA” leather
accessories and “Kitana”
clothing mislead consumers:
ruling of the EU General Court
In 2003, the Swiss company Gitana SA
applied to the OHIM for registration of the
trademark “GITANA”.
The application concerned goods belonging
to Class 18 (leather and imitation leather,
goods produced from those materials not
elsewhere classified, purses, travel bags,
sports bags, sailing bags, umbrellas and
parasols) and Class 25 (clothing, footwear,
headgear, clothing for water sports).
After publication of the application in
December 2004, the OHIM received an
objection from Rosenruist Gestão e serviços,
Lda, representing Teddy SpA – the right
holder to the trademark “Kitana”. The
earlier mark “Kitana” was registered as a
Community trademark in Class 25, as an
international trademark in Classes 18 and
25, and as a domestic mark in Italy, also for
Classes 18 and 25.
Gitana SA moved that Rosenruist present
evidence that the earlier trademark was
actually used. The OHIM required such
evidence to be provided, but only for
the international and domestic marks.
After Rosenruist had provided a number
of documents, the OHIM Objections
Department acknowledged the objection
in part, refusing to register the trademark
“GITANA” for almost all types of goods
covered by the application in Classes 18
and 25 (except for “leather and imitation
leather”). The OHIM held that the mark
cannot be registered because of the
likelihood of confusion with the earlier
Community mark “Kitana”.
favor of Gitana SA’s appeal within the scope
of certain goods from Class 18 (purses, travel
bags, sports bags, sailing bags, umbrellas
and parasols) and refused the registration
in respect of other goods from Class 18
(goods produced from leather and imitation
leather not elsewhere classified) and Class
25 (clothing, shoes, headgear, clothing for
water sports) because those goods were not
identical or similar to goods identified by the
earlier Community mark “Kitana” (for which
registration had already been obtained only
in Class 25). The OHIM did not evaluate the
mark applied for with the international and
domestic (Italian) “Kitana” marks, since their
actual use had not been demonstrated.
The applicant, Gitana SA, did not agree with
this resolution, and appealed against the
decision. In its opinion, the OHIM should
have also required Rosenruist to produce
evidence of the actual use of the Community
mark. It also moved for suspension of the
proceeding because of another parallel
proceeding for invalidation of the Community
mark “Kitana”. The proceeding was
suspended in accordance with Gitana SA’s
motion.
The OHIM held that it could not request
evidence of actual use of the earlier
Community trademark “Kitana”. Such
a procedural step would have been possible
if the earlier Community mark “Kitana”
had been registered for at least five years
on the date of publication of the motion for
registration of the mark “GITANA”, but that
five-year period, as referred to in Article
42(2) of Directive 207/2009, had not lapsed
on the date of publication of Gitana SA’s
application.
In 2010, a legally binding decision was
issued on invalidating the Community
mark “Kitana” for goods in Class 18.
The registration of that mark in Class
25 remained in effect. These new
circumstances affected the further course
of the proceeding over the registration of the
trademark “GITANA”. At the beginning of
2011, a proceeding was initiated in order to
consider the appeal of Gitana SA, for which
the registration of the mark had previously
been refused in reference to almost all of
the goods covered by the application.
In August 2011, the OHIM partially found in
The OHIM judged that there is a visual
and phonetic similarity between the mark
applied for and the Community mark
“Kitana”, but the goods for which Gitana
SA unsuccessfully attempted to register its
trademark are similar to goods for which the
mark “Kitana” enjoys protection.
The applicant – Gitana SA – requested that
the court overturn the decision within the
scope in which registration of the mark
had been refused. The EU General Court
confirmed that the OHIM had conducted the
proceeding correctly, and had not committed
any errors justifying holding in favor of Gitana
SA’s appeal. In particular, the OHIM had
correctly analyzed the similarity of the goods
protected by the registration of the mark
“Kitana” to those covered by the application
by the company Gitana SA.
The Court acknowledged that there is
a visual and phonetic similarity between the
marks “GITANA” and “Kitana”. It should
therefore be determined whether the goods
identified by the marks are also similar.
The Court divided the types of goods
submitted by Gitana SA into two groups.
It explained that the trademark “GITANA”
was registered for goods from Class 18 such
as purses, travel bags, sports bags, sailing
bags, umbrellas and parasols (group 1)
because, in this case, while the marks may
be similar, the goods are not (the scope
of protection of the mark “Kitana” extends
mainly to clothing, headgear, gloves, belts
and shoes).
Nevertheless, the Court pointed out that
the same conclusion cannot be drawn in
respect of goods from the second group,
namely, products produced from leather and
imitation leather. Those goods are similar
to goods such as clothing, headgear, gloves,
belts or shoes, mainly because they are often
sold in the same points of sale as products
made from leather or imitation leather
(accessories such as wallets, bags, etc.).
They are consumer clothing accessories and
are often purchased together with clothing.
A customer could make a close connection
between those products, and may have the
impression that they originate from the same
company. Consequently, the similarity of the
goods is highly significant.
The marks are similar enough to each
other that the occurrence of a similarity
3/2013 between certain goods disqualifies the
registration of the mark “Gitana” in that
part pertaining to goods made from leather
or imitation leather. Therefore, in a ruling of
16 September 2013 (T-569/11), Gitana SA’s
complaint was dismissed.
Source: www.curia.europa.eu
EU – The designation “KNUT –
DER EISBÄR” may be misleading:
ruling of the EU General Court
In a ruling issued on 16 September 2013
(T-250/10), the EU General Court held that,
given the possibility of consumers being
misled, the OHIM had correctly ruled that
the designation “KNUT – DER EISBÄR”
cannot be registered as a Community
trademark. The Berlin Zoo had opposed
the registration with the trademark “KNUD”
previously registered in Germany, including
for goods such as books, games, toys
and dolls.
Knud was a polar bear born in the zoo in
Berlin in 2006, the first such animal to be
born there in more than thirty years. After
his birth, he was placed in an incubator and
raised by zoo employees. He soon became
a mascot, and at the same time the symbol
of the German government’s campaign
against climate change. Unfortunately, the
bear did not live long. His life was more like
that of a celebrity than a polar bear. Little
wonder, then, that an entity would take
a commercial interest in registering the name
of the popular bear for its own purposes.
An objection to the registration of the
designation “KNUT - DER EISBÄR” was
raised by the Berlin Zoo (Zoologischer Garten
Berlin AG) on the basis of an earlier German
10 Trade marks and unfair competition
trademark, “KNUD”, registered in 2007.
The British entity KNUT IP Management Ltd.
attempted to register the disputed mark for
such goods as paper goods, clothing and
sporting goods.
The EU General Court confirmed in its
ruling that there does exist a likelihood of
consumers in German-speaking countries
being misled. In the Court’s opinion, the
public would have grounds for thinking that
goods and services bearing the contested
designations derive from the same company,
or from companies having ties with each
other.
In the case, it was correctly established
that the spelling of the name Knud displays
influence from the Danish language (ending
with the letter “d”). That spelling, especially
for German consumers living near the
Danish border, is widely accepted, as is the
German spelling in which the word ends with
the letter “t”. This means that there is an
obvious link between the marks in question.
Both the “t” and “d” spellings refer to the
same content; that is, to the name Knut/
Knud.
In the opinion of the General Court, both
the goods and services covered by both
designations are partially identical, and
partially similar. The key circumstance in
the dispute is how the public would perceive
such elements of the marks as “knud” and
“knut”.
The Court held that, given the identity
and similarity of the goods, the degree of
similarity of the contested designations is
sufficient to hold that there exists a likelihood
of consumers being misled due to the
conception connection existing in Germanspeaking areas.
For those reasons, it was held that the
designation “KNUT – DER EISBÄR” cannot
be registered.
Source: www.curia.europa.eu
www.faz.net; www.bbc.co.uk
EU – Likelihood of being
misled – the marks “girls1st”
and “GO GIRLS”: ruling
of the EU General Court
On 24 May 2010, SCA Hygiene Products
AB applied for registration of the word
trademark “girls 1st” for goods and services
from Classes 3, 5, 16, 38, 41 and 44 of
the Nice Classification, including skin care
products, hygiene products, paper goods,
telecommunications services, entertainment
services and information technology services
related to medical care.
On 7 October 2010, an objection was raised
to that registration by the company Arbora
& Ausonia SLU. That party based its position
on earlier rights to the Spanish word mark
“GO GIRLS”, registered on 21 November
2008, and on the Portuguese word mark
“GO GIRLS”, registered on 14 October 2008,
both for goods and services from Classes 5,
16, 35, 38 and 41 of the Nice Classification,
including for hygiene products, paper
goods, telecommunications services and
entertainment services.
On 19 September 2011, the Objections
Department of the OHIM issued a decision
in which the above objection was partially
acknowledged. SCA Hygiene Products AB
appealed against the Objections Department
decision. In a decision of 1 July 2013, the
OHIM Fourth Board of Appeal acknowledged
that the appeal was admissible, but only
partially justified. It held that there is
a likelihood of consumers being misled,
but only in respect of identical goods, as
is the case with paper goods. In the other
categories, the disputed marks concern
similar goods and services, and are similar
visually (because of the element “girls”) and
phonetically, but are dissimilar conceptually.
The Board of Appeal emphasized that the
marks should be considered primarily in
the context of identical goods. The risk of
confusion should be analyzed as a whole,
in reference to the correct perception of
a mark by consumers and taking account
of all accompanying circumstances. In the
opinion of the Board of Appeal, the average
consumer will not believe that the disputed
marks derive from a single business or
companies having economic ties with each
other. Therefore, a risk of confusion would
only arise in the case of identical goods, and
not those which are similar to each other
only to a certain degree.
office in Madrid, which applied in 2010 for
registration of a graphic trademark. Yan
Chen sought to reserve the mark for various
types of textiles, clothing, footwear and
notions.
The registration was objected to by Adidas
International Marketing B.V with its
registered office in Amsterdam (“Adidas”).
In support of its formal objection, Adidas
argued that a very similar graphic symbol is
registered as a Community trade mark. That
mark, in Adidas’ opinion, enjoys renown in
the European Union.
As a consequence of the above, the Board
of Appeal took the position that the company
Arbora & Ausonia SLU can only partially
effectively object to the registration of the
trademark “girls 1st”.
Source: www.oami.europa.eu
EU – Renown does not prevent
the registration of a dissimilar
mark: decision of the OHIM
Board of Appeal
In July 2013, the OHIM Fourth Board
of Appeal issued a decision in a case
brought by Yan Chen with its registered
Their visual similarity is attested to by the
presence of three parallel bars arranged from
shortest to longest. Adidas pointed out that,
when turned on its side, the Yan Chen mark
is even more similar to the Adidas mark.
Consumers will be misled especially when
the Yan Chen mark is placed on goods at
another angle.
That argumentation did not convince the
Board of Appeal, which pointed to the
visual differences between the marks, such
as the corners of the triangle pointing in
different directions and the three white
interior triangles in the Yan Chen mark.
In a proceeding before the OHIM, marks
are compared in the form in which they
were submitted, and so there is no basis for
analyzing what the result will be if the Yan
Chen sign is viewed from a different angle.
According to the OHIM, the similarity
between the marks is very weak, and given
this lack of similarity, the objection by Adidas
cannot effectively prevent the registration
of the Yan Chen mark, regardless of the
distinctiveness, and even of the renown,
of the earlier mark.
Source: www.oami.europa.eu
The OHIM Objections Department found
that Adidas’ objection was groundless.
A comparison of the two marks does not lead
to the conclusion that they are so similar
that their simultaneous use in trade would
potentially lead to the average consumer
being misled. Further, in its objection,
Adidas failed to provide sufficient evidence of
the renown of its mark.
Adidas filed an appeal, arguing that there
is a strong similarity between the marks.
EU – “KENZO ESTATE” and
the earlier “KENZO” – reaping
unjustifiable benefits from the
renown of a mark: decision of the
OHIM Board of Appeal
Kenzo Tsujimoto applied for registration of an
international trademark, “KENZO ESTATE”.
The application covered many goods from
a number of classes not connected, however,
with the fashion or perfume industries.
3/2013 11
The services listed in the application relate
to the wine industry, but the goods to
everyday food commodities. In response to
the application, an objection was raised by
Kenzo Société Anonyme, entitled from an
earlier registration of the trademark “KENZO”
registered for goods relating to fashion.
Evidence of the use and renown of the earlier
mark was presented by the objecting party.
It included documents previously provided in
other proceedings between the same parties.
During the proceeding, that evidence
was not admitted, and the objection was
dismissed. The holder of the “KENZO” mark
then filed an appeal, as a result of which
the OHIM Second Board of Appeal issued
a ruling (case R 1363/2012-2) which can be
summarized as follows;
First of all, it was determined that the earlier
mark “KENZO” and the mark “KENZO
ESTATE” are similar, since consumers first
pay attention to the beginning of a mark,
and only afterwards to the end. It was also
emphasized that the word “estate” has
no distinctive nature for goods associated
with the wine industry. The Board of
Appeal pointed out that, in the proceeding
concerning the objection, evidence of
renown was provided in a form of a very
exact reference to evidence presented
in another proceeding. This was done
precisely within the time period set by
the OHIM. That is why the Board of
Appeal held that evidence of renown had
been presented. The evidence of use is
strictly related to the evidence of renown.
The OHIM emphasized that renown can be
indicated by, for example, a certain level of
sales. In the justification to the decision, it
argued that it is not possible to ignore about
600 pages of invoices and other salesrelated documents. The OHIM, therefore,
12 Trade marks and unfair competition
determined that the renown among users
of luxury goods had been appropriately
demonstrated.
What is more, the Board of Appeal also
emphasized that a further prerequisite for
ruling in favor of the objection had been
met, namely, that the new mark “KENZO
ESTATE” unjustly benefits from the renown
of the “KENZO” mark. It is probable that
a consumer will make a connection between
the “KENZO ESTATE” and “KENZO” marks,
which means that, for no justifiable reason,
the new mark will take advantage of the
renown of the “KENZO” mark, benefiting
from its power of attraction without any
compensation whatever for the party entitled
to that mark for its contribution in developing
it. The OHIM referred in this context to
a ruling of 18 June 2009, C-487/07 ‘L’Oréal’.
For the above reasons, the OHIM held that
the mark “KENZO ESTASTE” cannot be
registered for services relating to the wine
industry, since these may be associated with
luxury. It added, however, that registration is
possible for ordinary food commodities such
as olive or grapeseed oil.
Source: www.oami.europa.eu
EU – “Quo Vadis”:
decision of the OHIM
Board of Appeal
On 10 February 2010, Francisco Gómez
Hernández applied for registration of
a Community trademark, “QUO VADIS”, for
goods and services from Classes 29, 33 and
35 of the Nice Classification.
An objection to this application was raised by
EDITIONS QUO VADIS SAS, which is entitled
under previous word trademarks, “QUO
VADIS”, registered for goods and services
from Classes 9, 38 and 42 of the Nice
Classification.
It is worth noting that the purpose of Article
8 par. 5 of the Directive is not to prevent
the registration of every trademark which
is similar or identical to a trademark which
enjoys renown. The aim of the provision
is to make it possible for the right holder
to an earlier, renowned mark to object
to the registration of marks which are or
could be detrimental to its mark’s renown
or distinctiveness, or which would result in
undue benefits being derived. Therefore,
the holder of an earlier trademark is not
obliged to demonstrate an actual, lasting
infringement of its mark, but only to present
prima facie evidence of a future risk of such
harm being incurred.
In a decision of the OHIM Objections
Department on 15 June 2012, it was
established that the disputed designations
are identical. However, the party filing
the objection did not demonstrate in what
way the use of the contested mark by the
applicant would result in that party reaping
undue benefits. That decision was appealed
by the applicant.
In this case, there is very little likelihood
that the relevant consumer group would be
able to connect the disputed mark with the
earlier mark, regardless of the renown of the
latter. Moreover, it should be emphasized
that, even if the disputed goods and
services apply to society in general, their
target group of consumers is completely
different. It results, therefore, that the
disputed goods and services differ not only
in terms of the likelihood of consumers
being misled, but also in having completely
different target consumer groups. In the
light of the above, no harm arises.
Summing up, the party which raised
the objection did not present evidence
confirming the risk of harm being caused
to the distinctiveness of the previously
registered trademarks, nor from the evidence
presented did it result that the use of the
contested mark would be harmful to the
renown of the earlier mark. As regards the
risk of the applicant reaping undue benefits
from the distinctiveness or renown of the
earlier trademarks, in this case, given the
lack of connection between the goods and
services concerned, no such danger exists.
In view of the above, the decision of the
Board of Appeal was annulled.
Source: www.oami.europa.eu
EU – The marks “SEVEN”
and “Room Seven” are similar:
decision of the OHIM Board
of Appeal
On 16 July 2013, the OHIM Fourth Board
of Appeal rejected an appeal by Room Seven
BV, maintaining the effectiveness of an
objection submitted previously by the Italian
company Seven SpA against the registration
of a Community word trademark, “Room
Seven” for the benefit of the Dutch company
(case file No. R 955/2012-4).
The objection to the registration of
a designation for certain goods from Class 18
of the Nice Classification (leather or leathersimilar goods) for the benefit of the Dutch
company was based on the Italian company
holding prior designations in the form of
three Community trademarks: the word
mark “SEVEN” and two graphic marks:
renown of the Italian producer is paramount.
In analyzing the structure of the mark itself,
the OHIM noted that the term “SEVEN”
comes from the English language, and is not
identical with the number “7” for the average
Italian consumer. As to the conceptual
issue, the mark does not indicate the sizes
of the goods offered, or the target group of
customers, i.e., children of the age of seven.
Further, the company Seven SpA itself is
high recognized in Italy as a producer of
leather goods.
The marks were deemed similar visually and
orally because of their common element
“SEVEN”. The compared marks do not
contain elements of a distinctive or dominant
nature, and the use of a number within them
plays no conceptual role.
The Dutch company appealed against that
decision, arguing that the previously existing
designations are only weakly distinctive.
In the opinion of Room Seven BV, the
use in the fashion industry of numerical
designations is very common, e.g., for
identifying sizes, and numerals often appear
in the names of companies active on that
market. The company’s arguments were
also based on the conceptual assumption
that the term “Seven” refers to a specific age
group of children for which its products are
designated, which indicates its description
nature. In this way, the designation “Room
Seven” has a specific message to convey,
and an aware consumer will recognize
products deriving from the Dutch producer
without any difficulty. The OHIM Fourth
Board of Appeal considered the appeal.
It held that the goods compared are in
principle identical, and that the long-term
Although it was acknowledged that the
marks are similar to an average degree,
an association between the trademarks
“Room Seven” and “SEVEN” cannot be
ruled out were they to be used to identify
identical products. Another factor of
particular importance in this case is the high
recognizability of the designation “SEVEN”,
both on the Italian and global markets.
Source: www.curia.europa.eu
Poland – “Geo Glob Polska”
– inadmissible use of the word
“Polska” in a trademark
This case concerned an interesting problem
of the possibility of registering a trademark
containing the word “Polska” (“Poland”).
In 2009, the company Geo Glob Polska
sp. z o.o. approached the Polish Patent
Office with an application to register the
trademark “Geo Glob Polska”. The Patent
Office refused to do so, stating that the
applicant had not presented the consent
of the competent authority for the use of
the word “Polska” in the trademark. In
this context, reference was made to Article
131 par. 2 pt. 2 Industrial Property Law,
pursuant to which protection rights are
not granted to designations containing the
name or abbreviation of the Repubic of
Poland or a symbol thereof (crest, colors
3/2013 13
or anthem), the name or crest of a Polish
province, city or town, insignia of the armed
forces, a paramilitary organization or security
forces, a reproduction of a Polish order,
medal or honorary badge, military badge or
other official or commonly used distinction
or badge, in particular of government or
local government administration or social
organization acting in the vital public interest
where such organization acts throughout the
country or a significant part thereof, if the
applicant cannot show its authorization, in
particular a permit from a relevant state body
or the consent of the organization to the use
of the designation in trading.
The applicant took the position that that
provision should be interpreted narrowly,
and not broadly. The word “Polska” is, it is
true, an element of the official name of the
Polish state (Rzeczpospolita Polska), but it is
neither that name itself nor an abbreviation
thereof. Further, the applicant emphasized
its membership in an international group
of companies and the international nature
of its business. What is interesting is
that during the proceeding the applicant
attempted to obtain the relevant consent, but
the result of its efforts was the conclusion
that such consent is unobtainable in the
current state of the law, for there are neither
provisions regulating the competence of state
authorities in this regard nor appropriate
procedures for obtaining consent. The
applicant, therefore, supplemented its
position with the argument that such
consent is impossible to obtain due to a legal
loophole.
Referring to the above legal basis, and
holding that the word “Polska” constitutes an
abbreviation of the official name of the state,
the Patent Office dismissed the application
for registration of the trademark. This ruling
14 Trade marks and unfair competition
became the object of a grievance – first to
the Provincial Administrative Court, and
later to the Supreme Administrative Court.
The appellant also drew attention to the fact
that a number of trademarks containing the
word “Polska” exist. Both courts shared the
position and legal assessment of the Polish
Patent Office, dismissing the appeal and
confirming that the word “Polska” constitutes
an abbreviation of the name of the state.
The administrative courts also emphasized
that “Polska” is a word identifying the
country in international contacts and
competitions, including sports competitions.
It was also pointed out that the appellant
should not invoke a previous ruling by
the Patent Office which was incorrect.
The Supreme Administrative Court added
that nothing stands in the way of using the
word “Polska” in the business name of
a company, because then we are dealing
with a designation of the geographical
location of a company’s activities, or
a distinction between companies belonging
to a single capital group.
Source: www.orzeczenia.nsa.gov.pl
Poland – The renown of “Tiffany”
in Poland: ruling of the Supreme
Administrative Court
In July of this year, another ruling was
handed down in a dispute pending in
Poland for many years between the globally
renowned jewelry company Tiffany & Co.
of New York and Tiffany & Broadway with
its registered office in Houston, which is
a producer of women’s footwear.
In case II GSK 467/12, the Supreme
Administrative Court dismissed a cassation
appeal brought by Tiffany & Co. in a dispute
concerning the invalidation of a protection
right for a trademark registered by the Polish
Patent Office (R-153645) for the benefit of
Tiffany & Broadway.
In April 2004, the PPO issued a decision on
granting a protection right to the above wordgraphic trademark submitted by Tiffany &
Broadway. In view of an appeal against that
decision by Tiffany & Co., the protection right
was invalidated in June 2008. The Patent
Office held that the company Tiffany & Co.,
which brought the objection in due form,
had shown that “TIFFANY” is a universally
known mark, and that it enjoys both fame
and renown exceeding beyond the borders
of the United States. The authority thereby
held that, despite the absence of Tiffany
& Co. on the Polish market, its trademark
should also be deemed renowned in Poland.
Consequently, the use of the designation
“TIFFANY” by a competing company could
lead to the “dilution” of the renown of the
“TIFFANY” mark due to the similarity of the
disputed designations. The case, which
has gone on for years, originally went to the
PAC, then to the SAC, after which it was
referred back to the PAC. That court held
that the contested decision had been issued
contrary to procedural provisions, which
had a significant effect on the outcome of
the case. According to the PAC, not all of
the factual circumstances relating to the
renown of the trademark were evaluated.
In the view of the PAC, an assessment of
whether a mark is renowned or not should
be based on a series of requirements, such
as: “significant familiarity of the mark,
participation of the trademark on the market,
the intensity and geographical scope of
the use, the intensity of the association
of goods with the mark, the amounts
invested in advertising and promoting the
mark”. The PAC noted that possessing
worldwide renown is not the same as
possessing domestic renown in Poland, and
thereby came to the conclusion that “an
assessment of how the criteria of renown
are implemented is of a territorial nature”.
Further, the court held that, contrary to the
opinion expressed by the PPO, the absence
of Tiffany & Co. on the Polish market may not
be decisive, but is significant to determining
the renown of the trademark of that company
in Poland, for that circumstance affects the
Polish consumers’ familiarity with products of
that entity.
In the opinion of the court, only a clarification
of whether renown had been demonstrated
would open the way towards considering and
assessing whether Tiffany & Broadway had
infringed the rules of social co-existence by
applying for registration of the word-graphic
mark with the word element “TIFFANY”.
Tiffany & Co. brought an appeal against that
ruling. Upon consideration, the Supreme
Administrative court held that the flaws
in the decision contested by Tiffany &
Broadway justified it being eliminated from
legal circulation. The flaws in the decision
involved a failure by the PPO to clarify
circumstances important to the case with
regard to the renown of the “TIFFANY” mark
in the territory of Poland as at the date of the
application for registration of the disputed
mark. As a result of the decision issued by
the SAC, the case will again be heard by the
PPO, which will have to reconsider the issue
of the renown of the disputed mark.
Source: www.orzeczenia.nsa.gov.pl
Poland – Whether a court
can withdraw from issuing
a prohibition on an infringement
– the case of “My Little Pony”
versus “My Sweet Pony”:
ruling of the Court of Appeal
in Warsaw
Recently, the Court of Appeal in Warsaw
considered a dispute between the American
company Hasbro Inc. and the Polish
company Simba Toys Polska sp. z o.o.,
which belongs to a German concern, in
the case of the use of similar designations
for toys in the form of a pony (case file No.
I ACa 1233/12).
in the production and sale of similar toys
did not act in favor of the Polish defendant
company. The Regional Court in Warsaw
issued a ruling stated that the designation
used by the defendant may mislead
consumers. Nevertheless, the Court did not
prohibit the Polish company from continuing
to infringe the claimant’s Community
trademark. It pointed to Hasbro’s lack of
reaction to Simba Toys Poland’s long use of
the designation as the main reason for not
imposing that sanction. The Court referred
to Art. 102 of Regulation of the European
Council No. 207/2009 of 26 February 2009,
which regulates such standards.
The Court of Appeal changed that ruling,
prohibiting Simba Toys Polska from using the
disputed designation. The judge justified his
decision by the lack of an important interest
on the part of the Polish company, which
should comply with the prohibition imposed
because ponies do not constitute its main
product. The Court of Appeal agreed with
the position of the defendant only within
the scope of not granting Hasbro protection
on the basis of copyright, concluding that
it does not consider that an idea or overall
vision constitutes a work.
Source: www.rp.pl
Simba Toys Polska’s use of the designation
“My Sweet Pony” had been previously held
by the Regional Court in Warsaw as similar
to the globally popular designation “My Little
Pony” used by Hasbro on the Polish market
since 1983. The OHIM registered that
renowned trademark in 2006. The fact that
the companies, which have been involved in
the dispute for over ten years, are engaged
3/2013 15
Other issues
It’s worth protecting industrial designs1
Michał Ziółkowski
Products with interesting designs sell much better than those having a run-of-the-mill silhouette, which fail to catch the attention of
potential customers. Designers, therefore, strive to attain a form for a product which, while not interfering with functionality, improves
how it is perceived aesthetically by consumers. This approach leads to more attractive products, and to considerable economic benefits.
The appearance of a new product which achieves market success always causes an interest in competing. But for that interest not to
degenerate into literal copying, a designer should utilize effective legal instruments to protect against that type of activity.
What can constitute a protected design
A design is a new form of a product which is individual in nature. In principle, industrial designs may be any form of large products such
as buildings, vehicles, yachts, or also smaller objects such as telephones, watches and accessories. An industrial design may be threedimensional (e.g., a car wheel) or two-dimensional (e.g., a website). What can be registered as an industrial design is the form of a product
(e.g., a new jewelry design), part of a product (e.g., a cap), product packaging (e.g., the shape of a bottle), the texture of a material, a product
logo, or a product adornment.
It should be stated that an industrial design may obtain protection for a wide variety of product forms from many different areas. Protection
may also be granted to objects considered a work of fine art or applied art. However, in practice this usually concerns objects which exist or
could exist in thousands or millions of copies, and not refined creative works such as paintings or sculpture whose nature is individual, and is
subject to special protection.
Along with technological progress, the requirements for industrial products have increased. Now a product is expected to have not only
features which render it useful, but also aesthetic value. The appearance of an object has become an increasingly important factor in
determining consumer choices. In this way, the form of a product often increases its economic value without increasing production costs.
Industrial design also plays an important role in situations in which, due to competition, it is necessary to launch a product having new quality
features on the market.
Depending on the legal system in place in a given country, the creator of an industrial design may obtain protection for the form of its
product on the basis of detailed legislation concerning designs, or on the basis of copyright or other acts of law. In the Polish legal system,
there is a possibility of cumulative legal protection of industrial designs. Moreover, some designs may be protected as trademarks. In the
field of intellectual property law, one and the same good may be protected by different provisions, since in a number of cases that good
possesses properties enabling it to be put to different uses. In the Act on the Industrial Property Law (IPL), protection of designs is based on
assumptions characteristic of the patent law system, linking the creation of an right effective erga omnes with the fulfillment of certain formal
requirements and the registration of the good protected.
Necessity to register a design with the PPO
An industrial design is granted a right from registration, which right the creator or creators of the design enjoy. A registration right may belong
to an employer or principal if the creator of the design is in an employment relationship or performs a specific contract. Further, a registration
right is disposable, and is subject to inheritance. A right holder may grant a third party authorization to utilize the industrial design by way
of a license. The issuance of a decision on granting a registration right for an industrial design takes place after the Polish Patent Office has
checked the correctness of the application for that design. The Patent Office cannot, however, conduct an assessment of the merits of a given
design, and a party seeking to obtain a registration right need only meet the formal requirements. In establishing the scope of a registration
1) This article was published under the same title in the daily newspaper Rzeczpospolita on 8 November 2013.
The author – Michał Ziółkowski – is an IP attorney cooperating with K&L Gates.
16 Trade marks and unfair competition
right, the basic source of information is the description and drawings of the design provided. The granting of protection under the formal
registration procedure assumes that the applicant has made its own assessment of the subject of the application and of the possibility of it
being protected. It often turns out that the assessment made by an applicant was incorrect, which may lead to conflicts with other, previous
right holders, as well as to the invalidation of the exclusive right to a given design.
An exclusive right to an industrial design cannot last indefinitely – a registration right is granted for 25 years. Yet, that period of protection
is divided into five-year periods, from which it results that the minimum protection period is five years. A registration right for an industrial
design occurs is granted conditionally upon the fee for the first protection period being paid. If payment is not made within the required time
period, the Patent Office announces that the decision on granting the registration right has expired. The period of protection resulting from
the registration begins on the date on which the application to the Patent Office is made.
In the EU, protection is also possible without registration
Polish legislation only governs issues concerning industrial designs for which a registration right has been granted. In the IPL, there are
no provisions concerning the protection of unregistered industrial designs. EU legislation regulates the issue of both registered Community
designs and unregistered Community designs. This means that the pursuit of rights resulting from unregistered Community designs is
possible in the Polish legal system as well. Protection of unregistered Community designs has been available in the European Union
since 6 March 2002. That protection, however, is significantly limited in comparison with the protection afforded to registered designs.
Unregistered designs are automatically protected by law only for a period of three years from the date of their first availability. There is no
need to meet any formalized registration requirements. An unregistered Community design should meet the criteria of being novel and of
an individual character. Such a design may be deemed novel if no identical design has been previously made publicly available. In order to
claim the existence of novelty, a design should be compared with previously existing designs having a similar external form. In the case of
unregistered designs, such an assessment should be made according to the state of the art as at the date the design is disclosed. Designs
which differ only in minor details are treated as identical.
The protection afforded to an unregistered Community design is much narrower than that for a registered design. By obtaining a registration
right to a Community design, the right holder acquires an exclusive right to use the design, and to prohibit its use by third parties without the
right holder’s consent. Such use includes, in particular: manufacturing, offering, trading, importing, exporting or using the product in which
the design is used or applied, as well as storing such a product for those purposes. In contrast, the right holder of an unregistered Community
design has the right to prohibit the above activities solely in the case where the contested use results from copying the protected design.
Further, if it turns out that a design considered a copy of an unregistered design is the result of the independent creative work of a person
who can justifiably be considered as not having been aware of the design disclosed by the right holder, that design will not be deemed to be
a copy.
The three-year informal protection of an unregistered design may be totally sufficient in certain cases or certain sectors of the economy, such
as in the toy or clothing industries, in particular for designs of products having a short market life. The design must be disclosed within the
EU. If this takes place outside the EU, no right to the design arises. A design should be disclosed to persons specialized in a given industry
acting in the EU. From the moment a design is disclosed, the three-year period of protection provided for unregistered designs begins.
The burden of proof of demonstrating disclosure of the design lies on the right holder. It may also be difficult for third parties to establish
the end of the three-year protection period after which the design enters the public domain.
Another interesting and important issue is that, if a creator or legal successor thereof discloses a design, this does not negate the
characteristic of novelty if the disclosure is made within the 12 months preceding the registration of the design. During that period, both
the protection of the unregistered design and what is known at “relief in novelty” exist. Throughout that period, the novelty of the protected,
unregistered design is not destroyed, and it is still possible to obtain a registration right to that design.
3/2013 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
Agata Lewartowska-Błaszczyk
Agata.Lewartowska-Blaszczyk@klgates.com
Ewelina Madej
Ewelina.Madej@klgates.com
Ewa Rusak
Ewa.Rusak@klgates.com
Marta Wysokińska
Marta.Wysokinska@klgates.com
Michał Ziółkowski
Michal.Ziolkowski@klgates.com
If you are interested in obtaining an electronic version of the bulletin, please send your request
to: Emilia.Pisarek@klgates.com with the subject line: “TM Bulletin”.
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aspects of the law. The content of the bulletin cannot be treated as legal advice.
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