Quarterly bulletin
no. 2/2013 (11)
Trade marks
and unfair competition
Introduction
It is my pleasure to present another summary of events chosen from the field of trademark
and unfair competition law. We have gathered together what we feel have been the most
significant legislative changes and rulings of the last several months.
Certainly worthy of interest is a change in European Union law concerning the enforcement
of intellectual property rights by customs authorities. Regulation No. 1383/2003, in force
since 2003, has been rescinded and replaced by the new Regulation No. 608/2013,
which introduces many interesting solutions and provisions. First of all, there has been
an expansion of the scope of protection of rights to utility designs, business names and
semiconductor topographies. Further, a procedure has been introduced for dealing
with goods sent across borders as postal deliveries. The new regulation also provides
a compulsory, simplified procedure for destroying goods which infringe intellectual property
rights (without the need to go to court), and simplifies and speeds up proceedings by creating
a uniform database to make channels of communication among customs authorities more
efficient.
We also recommend our review of rulings by Polish courts and EU authorities, and I would
draw your attention to two Polish rulings in particular. Both concern the trademark Cartier.
That both rulings were issued at almost the same time shows what a challenge it is to protect
a brand. Part of brand management involves ensuring continual protection against activities
by competitors attempting to use or register similar designations. Even a renowned brand,
then, is not given once and for all; as long as it exists, it must be protected.
We also continue to include articles published in the press by members of our department,
this time focusing on the subject of protecting intellectual property rights which come into
conflict with the growth of the internet industry.
I hope you enjoy this issue, and encourage you to send in any comments you may have,
for which my thanks in advance.
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 – New EU regulation on the enforcement of intellectual property rights by
customs authorities ................................................................................................. 4
Case-Law
EU – The combination of the characters “LEVI STRAUSS & CO.” and attempts
to undermine the effectiveness of the mark used in this combination: ruling of the
Court of Justice of the European Union .....................................................................6
EU – Registration of the domain name “FLUEGE.DE” as a trademark: ruling of the
EU General Court .....................................................................................................7
EU – The Polish acronym “FŁT” again the subject of a dispute: ruling of the EU
General Court ..........................................................................................................8
Poland – “CARTIER” cosmetics: remarks contained in a ruling by the Supreme
Administrative Court on the invalidation of a protection right to the trademark
“CHATIER COOL MEN” ............................................................................................9
Poland – Likelihood of confusion between “MOJA HISTORIA” and “MOJE
HISTORIE”: ruling of the Supreme Administrative Court ...........................................10
Poland – Dispute over the mark “PEEK&CLOPPENBURG”: ruling of the Supreme
Administrative Court ...............................................................................................11
Poland – Similarity primarily pertains to common features, and not differences:
ruling of the Supreme Administrative Court .............................................................12
Other issues
Poland – The internet and the law ..........................................................................13
Legislative initiatives
EU – New EU regulation
on the enforcement of intellectual
property rights by customs
authorities
On 29 June, the Official Journal of the
EU published Regulation of the European
Parliament and of the Council No. 608/2013
on the enforcement of intellectual property
rights by customs authorities. This
regulation repeals Council Regulation (EC)
No. 1383/2003 of 22 July 2003 concerning
actions by customs authorities against goods
suspected of infringing certain intellectual
property rights and the measures to be taken
against goods found to be infringing the law.
Work on the revision of the regulation,
aimed at increasing the level of protection
in the EU market from the influx of pirated
and counterfeit goods, had been ongoing
since 2008. Often highlighted was the need
to improve the enforcement of intellectual
property rights at the borders, as well as
to address the administrative and financial
burden of the customs authorities and to
ensure efficiency and compliance with all
relevant legal obligations. The changes
contained in Regulation No. 608/2013 are
therefore primarily intended to strengthen
enforcement of the regulations and to
expand the scope of the intellectual property
rights they cover.
Regulation No. 1383/2003 will expire on
1 January 2014, after which Regulation
No. 608/2013 will come into force.
Extension of the catalog
of rights protected
One of the major changes under Regulation
No. 608/2013 is to expand the catalog of
Trade marks and unfair competition
rights protected to include trade names (in
as far as they are protected under national
law as exclusive intellectual property
rights), topographies of semiconductor
products and utility models, as well as
devices which are primarily designed,
produced or adapted for the purpose of
enabling or facilitating the circumvention of
technological measures.
Scope
of the regulation
The customs authorities are to enforce
intellectual property rights in respect of
goods subject to customs supervision and
control. As before, actions will be taken
in relation to goods declared for release
for free circulation, export or re-entry and
subject to a suspensive procedure or placed
in a bonded warehouse, and brought into
the customs territory of the EU. It should be
noted that for goods entering the EU to be
covered by the regulation, evidence must
exist prior to their detention that the goods
are intended to be introduced into trade in
EU territory. Hitherto, there were questions
about the applicability of the regulation for
goods that are in transit. The answer to the
above is unknown (see the judgment in the
joined cases C-446/09 and C-495/09). The
ruling lists circumstances that may indicate
that the goods have been sent to clients in
the EU (e.g. correspondence or advertising
aimed directly at consumers in the EU).
This amendment, however, has not been
placed directly in the new regulation. The
draft of 2011 also included an extension
of the scope of the Regulation to include:
violations resulting from parallel trade and
goods and made by an authorized person
as original goods but in excess of the
previously agreed amount. The decision of
the Council and the European Parliament on
the above proposals was not considered.
New concepts
The catalog of definitions has been
expanded. In addition to the general
concept of “right holder” used in Regulation
No. 1383/2003, there are the additional
definitions of “applicant” and “holder of the
decision”. Also, the types of applications
have been clarified, defining national and
EU applications separately. Definitions
have also been added, i.e.: destruction,
EU customs territory, release of goods,
small consignments, perishable goods, and
exclusive license. These efforts eliminate
many earlier doubts associated with
understanding and applying the regulation.
Eligibility to file
applications
Until now, a right holder was authorized
to submit an application for action by
the customs authorities. Under the new
regulation, there is a broad catalog of
entities so authorized. A distinction has
also been made between persons entitled
to file a national application and those
entitled to file an EU application, with
a third category of persons authorised to
submit both types of application. These
last are: right holders, intellectual property
collective rights management bodies,
professional defense bodies, groups of
producers of products bearing geographical
designations, representatives of such
groups and businesses entitled to use
a geographical designation, and control
bodies or authorities competent for such
a geographical designation.
Procedure for suspension of release
of goods for which there is a suspicion
of an infringement of intellectual
property rights
The new regulation has also changed the
timeframes concerning the suspension of the
release or detention of goods suspected of an
infringement. Also included is a notification
to the declarant or holder of the goods on the
suspension of the release, or the detention
of the goods. This is to take place before
the date of notification of the decision to the
party entitled by the decision or the decision
holder, or even on the same day so that
the parties can simultaneously submit any
objections they may have.
Simplified procedure –
destruction of goods
The application of the simplified procedure
was optional up to now, and was at the
discretion of individual Member States. This
procedure is, however, compulsory under the
new regulation. The customs authorities will
be able to direct goods detained at the border
on suspicion of violating intellectual property
rights directly for destruction under customs
control, without having to determine whether
an intellectual property right has been
infringed under national law. The essence of
the new simplified procedure lies in the fact
that the customs authorities are now able to
destroy goods infringing intellectual property
rights without the need for a judicial decision
confirming the violation. Destruction is
possible provided that within 10 working days
both the decision holder and the declarant
(in this case tacit consent may apply) provide
their written consent to the destruction.
Consent to the destruction of the goods is an
admission that the goods infringe intellectual
property rights, and with this procedure it is
possible to avoid additional court costs and
liability. The destruction is carried out under
the supervision of the customs authorities with
the decision holder accountable, and before
the destruction takes place further samples
may be collected to be used in the future for
educational purposes. If the holder of the
goods does not consent to the destruction of
the goods, then after obtaining the relevant
information from the customs authorities, the
decision holder may initiate proceedings to
determine whether a violation of intellectual
property rights has actually occurred.
Small consignments
The introduction of a special procedure
for the destruction of goods in small
consignments is a novelty. This is in
response to the growing number of
infringements of intellectual property rights
carried out by post, especially concerning
pharmaceuticals. The customs authorities
inform the declarant or holder of the goods
of their intention to destroy them, and
these parties have 10 days to present their
position, including their consent to the
destruction. If the parties have not raised
an objection within 10 days, the customs
authorities may carry out the destruction
by deeming such consent as implied. In
the absence thereof, after completing the
formalities, the customs authorities release
the goods or put an end to their detention
if they have not received information
from the decision holder on the initiation
of proceedings to determine whether an
intellectual property right has been infringed.
information between customs authorities
have been created. The data and information
to be exchanged have been accurately
identified. The European Commission
will introduce secondary legislation
defining aspects of the essential practical
arrangements concerning information
exchange. Also, the types of decisions of
the customs authorities of Member States
to be immediately communicated to the
Commission have been defined, as has
the legal basis for the functioning of the
central electronic database used for the
registration of applications for action by the
customs authorities and for the retention
and exchange of data between customs
authorities.
The costs of actions taken
The Regulation provides that a decision
holder reimburses the customs authorities
for the costs they incurred in carrying out
their activities. The decision holder can then
apply for compensation from the infringer
and, where applicable, from its agents.
All the changes are intended to the
greatest extent possible to prevent imports
of counterfeit and pirated goods, without
limiting the free movement of goods within
the EU.
Source: www.eur-lex.europa.eu
Quicker information exchange
In order to simplify and significantly expedite
procedures, channels of exchanging
2/2013 Case-Law
EU – The combination of the
characters “LEVI STRAUSS & CO.”
and attempts to undermine the
effectiveness of the mark used
in this combination: ruling
of the Court of Justice
of the European Union
In April, the Court had some doubts about
the concept of genuine use of a trademark.
The preliminary ruling referred to the Court
concerned the situation in which a mark
is used exclusively through a complex
trademark, or exclusively in conjunction with
another trademark (C-12/12).
The concept of genuine use of a trademark
is important for the duration of the rights
arising from its registration. If the mark is not
genuinely used, it may lose the protection
resulting from registration. The concept
of genuine use of trademarks is therefore
crucial for their protection. This basic
principle was expressed, inter alia, in recital
9 of Council Regulation (EC) No. 40/94 on
the Community trademark (repeated as
recital 10 of Regulation No. 207/2009):
“there is no justification for protecting
Community trademarks, or protecting against
them, any trademarks which were registered
before them, except where the trademarks
are actually used”.
The preliminary ruling was requested by
the court adjudicating in a dispute over
the trademarks of Levi Strauss & Co.
and designations used by the company
Colloseum. Levi Strauss & Co. registered
a word-figurative mark in Germany showing
a pocket with a red rectangle placed on
the left vertical side of the pocket with the
inscription “LEVI’S”.
Trade marks and unfair competition
The company is, in addition, entitled
to a colored red-and-blue Community
trademark – this mark is a fabric insert
without an inscription protruding from
the pocket seam on the left side (CTM
2292373). When registering the mark,
the company stipulated that it disclaimed
any exclusivity with respect to the shape
and color of the pocket itself. It should be
emphasized that, despite the fact that the
trademark may, at first glance, not seem to
be distinctive, the OHIM found that the mark
had acquired distinctiveness as a result of
becoming distinctive through use.
Both marks were registered, amongst other,
for trousers.
The company Colloseum began to market
jeans in which the back pocket had red
rectangle inserts sewn in on the right side.
Levi Strauss & Co. sought to prohibit this
practice of Colloseum in connection with
the registration of the above trademarks.
Colloseum’s defence was that the red-blue
Community CTM 2292373 trademark had
not been sufficiently used. Levi Strauss
used the sign of a red tag without the
inscription (CTM 2292373) solely in the
form of the above-mentioned trademark
registered in Germany, i.e., with the word
“LEVI’S” on the seam. The court of first
instance agreed with Levi Strauss & Co.
and prohibited Colloseum’s use of the red
insert. As a result of the appeal to the
Court of Justice, a preliminary ruling was
requested regarding the exact meaning of
the concept of genuine use of the mark in
such a situation.
Analyzing the concept of genuine use, the
Court referred to the judgment of 7 July 2005
in case C-353/03 (Nestlé). In that case, the
Court emphasized that the ability of a mark
to be distinctive may result from the use of
that mark as part of a registered trademark
or use in conjunction with a registered
trademark. What is key is whether, as
a result of such use, the mark which is to
be recorded independently performs the
basic function of a trademark, namely, that
the relevant group of consumers perceive
goods bearing that element as originating
from a particular company. In the Levi
Strauss & Co. case, the Court emphasized
that one cannot apply certain criteria to
understanding the concept of use when
assessing the prerequisites for registration,
and different criteria when assessing whether
a registered mark should continue to enjoy
protection. In conclusion, the Court noted
that, since the use of a designation as an
element of a mark or in conjunction with
another mark is sufficient for the mark
to acquire distinctiveness, the same use
is sufficient to continue protection after
registration.
Therefore, in order for the requirement of the
genuine use of a mark which has acquired
distinctiveness through use as an element of
another mark to be fulfilled, that use should
be acknowledged solely through that other
composite trademark. This requirement is
also fulfilled where the mark is only used in
conjunction with another mark. Such use in
conjunction with another trademark must,
however, indicate that the goods originate
from a particular business.
Source: www.curia.europa.eu
EU – Registration of the
domain name “FLUEGE.DE” as
a trademark: ruling of the EU
General Court
On 7 May 2013, the European Union General
Court issued a ruling (T-244/12) on a refusal
to register the designation “fluege.de” as a
Community trademark.
That word mark was submitted in 2011 by
the company Unister GmbH. The registration
became the subject of a dispute with
regard to services belonging to Classes 35
(advertising, management and administration
of trade activities, office work), 39 (transport,
packing and storage of goods, organization of
travel) and 43 (services for the supply of food
and beverages, temporary accommodation).
The OHIM dismissed the submission for the
contested services, arguing that the mark
constitutes only a description of the services
and is devoid of distinctiveness. The Office
also pointed out that descriptive elements
cannot become reserved for a single business
by being registered.
Unister GmbH appealed against that
decision to the OHIM Board of Appeal,
moving that it be invalidated. It questioned
the view that the submitted mark is only of
a descriptive nature, arguing that the word
“fluege” is a verbal construction unknown
in the German language, which contains
only the word “flüge” (flights). In the opinion
of Unister GmbH, the average consumer
will perceive this unusual inscription as an
indication of the origin of the commercial
services it identifies.
The OHIM upheld the position expressed
in the earlier decision, arguing that
a determination of whether a mark is
merely descriptive should be made, firstly,
in reference to how it is perceived by the
relevant target group, and secondly, only
in relation to the goods or services in
question. In identifying the relevant group
of consumers, the OHIM stated that the
disputed services are addressed to both
average consumers and professionals. In
making the assessment, first it is necessary
to consider average German-speaking
consumers in the European Union. That
group is used to a specific way of writing
website addresses, in which accented letters
such as “ü”, “ö” and “ä” are written as “ue”,
“oe” and “ae”. Consumers aware of this
practice will not perceive the word “fluege”
as differing from this linguistic convention,
and will automatically accept that “fluege” is
an orthographic variant of the word “flüge”.
The EU Court held that the above conclusions
of the Board of Appeal are correct, and
rejected the argument of the appellant.
Unister GmbH further argued in the
complaint that, even if the relevant group
of consumers perceives the trademark
submitted as a domain name referring to
a website offering flights, the contested
services have no, or certainly very little
connection with such an offer. The Court,
however, agreed with the OHIM Board of
Appeal that the broad range of categories of
services submitted by Unister GmbH in its
application allows one to accept that all of
those services (e.g. transport, advertising,
organization of travel) may refer to airline
flights and passengers. The mark submitted
is therefore of a descriptive nature in relation
to all types of the contested services.
Unister GmbH claimed that, given the use
of a first-degree domain, “de”, the relevant
group of consumers will display a higher level
of attention with regard to the word “fluege”.
It also put forward the argument that a
trademark consisting of a domain name
should also be subject to protection where
it contains a word which is a description,
because every internet user knows that, even
under a domain name created on the basis of
a description, the portal to be found is run by
a single commercial supplier.
The Court rejected Unister GmbH’s
arguments, and pointed out that a domain
name itself only identifies a website, not
the commercial origin of goods or services.
The existence of a website at the domain
“fluege.de” does not automatically mean
that that website can be registered as
a Community trademark. For this to be
possible, the requirements set out in
Regulation No. 207/2009 must be met.
The Court judged that the OHIM Board
of Appeal had not erred in ruling that
the trademark submitted is automatically
perceived by the relevant group of
consumers as referring to a web address
pertaining to air travel.
2/2013 At the stage of the proceeding before the
Court, the appellant also argued that the
trademark submitted enjoyed distinctiveness
as a consequence of its use. The Court held
that the procedure did not allow it to make
a ruling within that scope, since that issue
was not part of the dispute before the OHIM.
figurative Community trademark registered
for “roller bearings (spherical, cylindrical,
barrel and needle)”, i.e. the mark:
For the above reasons, the EU Court
dismissed the appeal by Unister GmbH.
Source: www.curia.europa.eu
EU – The Polish acronym “FŁT”
again the subject of a dispute:
ruling of the EU General Court
In quarterly bulletin No. 1/2013, we wrote
about an unsuccessful attempt by Fabryka
Lożusk Tocznych – Kraśnik S.A. to register
the trademark “FŁT”. Recently, in a ruling
of 14 May 2013 (T-19/12), the EU General
Court decided that another mark submitted
by the same company cannot be registered.
In 2007, the company from Kraśnik applied
to the OHIM for registration of the following
figurative designation:
The mark was to be registered for goods
from Class 7 of the Nice Classification, i.e.
“machines and lathes, roller bearings and
elements thereof, spherical roller bearings
and large-format bearings”. An objection
to the registration of the above designation
was raised by another Polish company,
Impexmetal S.A., the right holder to an earlier
Trade marks and unfair competition
which argued in the objection that the
registration would entail a likelihood of
consumers being misled.
The OHIM agreed with Impexmetal’s
reasoning, and refused to register the
Kraśnik company’s mark. In addition,
it dismissed an appeal against the OHIM
decision filed by the company interested
in obtaining registration of the mark “KFŁT
Kraśnik”. Fabryka Łożysk Tocznych Kraśnik
S.A. then submitted a motion to the EU
General Court for the invalidation of the
contested decision. In the justification to
its decision, the OHIM explained that, even
if the categories of goods involved are not
identical because FŁT Kraśnik also applied
for registration of the mark for machines
and lathes, they are similar enough to be
analysed together. Machines and their
component parts are complementary
in nature, and are addressed to the
same group of consumers. During the
analysis of the similarity of the marks,
the OHIM declined from comparing them
on the conceptual level, holding that
the abbreviation “FŁT” is not a known
abbreviation and contains no semantic
meaning. The OHIM also held that the
visual similarity between the marks was
limited. In respect of their phonetic
similarity, however, it judged that it is
greater in those countries in which the
letter “Ł” is not used. As to the likelihood
of consumers being misled, the OHIM
reached the conclusion that, even taking
accounting of the higher level of attention
paid by European professional consumers,
such a similarity could not be ruled out. In
the OHIM’s opinion, consumers would rarely
have the opportunity to directly compare the
two marks visually, and would tend to rely on
the overall impression they had retained.
In the justification to its complaint, the
appellant pointed out, among other things,
that the marks create a different overall
general impression, are written in a different
font, differ in terms of color, and that the
abbreviation “FŁT” is a designation which
has been used by the appellant for a long
time. It also emphasized that the two marks
had co-existed for many years.
The Court upheld the position of the OHIM.
It drew attention to the fact that the visual
element “FŁT” dominates (and is in the
same color in each of the marks), and that
the addition of the word “KRAŚNIK” in one
of the marks does not eliminate the similarity
between the two. The situation is similar
with regard to their phonetic similarity,
where the element “FŁT” will be expressly
pronounced. The Court explained that
a trademark may be deemed similar also
when it contains a dominant element which
makes the other components insignificant to
the overall impression the mark creates.
In summary, the differences between the
marks are not sufficient to rule out the
likelihood of consumers being misled.
Registration of the mark of the company from
Kraśnik could lead to the impression that the
two businesses have commercial ties, or that
the mark submitted identifies a more modern
product line. In the opinion of the Court,
the identity or similarity of the goods under
consideration, and the visual and phonetic
similarity of the marks, make it impossible to
exclude the likelihood of consumers being
misled. Also, the fact that FŁT Kraśnik
has used the letters “FŁT” for a long time
does not refute the charge that the marks
are similar. In order to employ such an
argument, the company should have proved
that it enjoys a right to an earlier trademark,
which it did not do. Nor did it show that the
previous co-existence of the two marks had
not misled consumers.
For these reasons, the appeal of Fabryka
Łożysk Tocznych – Kraśnik S.A. was
dismissed, and the mark was not registered.
Source: www.curia.europa.eu
Poland – “CARTIER” cosmetics:
remarks contained in a ruling
by the Supreme Administrative
Court on the invalidation
of a protection right
to the trademark “CHATIER
COOL MEN”
On 23 April 2013, the Supreme
Administrative Court issued a legally binding
ruling, case file No. II GSK 191/12, dismissing
a cassation appeal in which fundamental
issues were raised concerning the invalidation
of protection over a word-figurative trademark
for goods, “CHATIER COOL MEN”.
The contested trademark, which was
registered by the Polish Patent Office at
the beginning of 2008, was designated for
goods from Class 3 of the Nice Classification,
including creams, shampoos, perfumes
and other cosmetic products. In June of
2008, a motion for the invalidation of that
protection right was filed by the right holder
to the trademarks “CARTIER”.
In the justification to the motion for
invalidation, it was also argued that there is
a similarity between the marks which could
evoke a mistaken association between them,
and mislead consumers about the origin of
the goods concerned. In the applicant’s view,
protection of the contested mark could result
in undue benefits being reaped, and would
be harmful to the renown of the “CARTIER”
marks having priority. The applicant
also claimed that the submission of the
contested mark had been made in bad faith.
In justification of this accusation, it stated that
the right holder’s aim was reap benefits from
the renown and strongly distinctive nature of
the “CARTIER” marks.
Despite the opposing views of the right
holder presented in its response to the
motion for invalidation, namely, that there is
an absence of similarity between the marks
compared, especially in their phonetic
aspect, in September 2009 the PPO did
invalidate the protection right to the mark
“CHATIER COOL MEN”. It held that the
two marks are designated for similar goods,
i.e. cosmetic products, which will be in
general use, and could be available in the
same multi-purpose shops or drugstores.
In addition to the similarity of goods, the
PPO held that the designations themselves
were very similar, which would entail the
danger of consumers being misled as to the
origin of the goods they identify. The marks
“CHATIER” and “CARTIER” are written
in a very similar manner, using the same
font. In the words, six of the same letters
occur, with the same letters at the beginning
and the end of the words. The words are
of equal length, which results in a visual
similarity between them. The phrase COOL
MEN in the contested mark is of secondary
importance, in the view of the PPO.
The PPO also found that the marks
compared are similar in their phonetic
aspect. Their pronunciation, especially by
persons who do not speak French or English,
may be the same. Despite differences in
the prices of the products identified by
the trademarks being compared, the PPO
also deemed that the average consumer of
perfumes and cosmetics could confuse the
two marks.
The Office also confirmed the renown of the
“CARTIER” marks, which are associated
with the high quality and exclusive nature
of that brand. Goods bearing those marks
are designated as luxury goods, which
by definition are high-quality products
manufactured using the best materials
and highest standards of production,
artistry, precision and attention to detail.
Such products need not be known to all
consumers on the market, because as
highly-priced luxury goods they are not
addressed to everyone.
The right holder to the mark “CHATIER
COOL MEN” filed a complaint against the
PPO decision which, after consideration, the
2/2013 Provincial Administrative Court dismissed
with the justification that the authority had
correctly established the facts of the case,
properly assessed the evidence gathered
during the proceeding, had analysed
the evidence comprehensively, and had
in consequence rightly invalidated the
protection right. The PAC found that
consumers could believe the contested
trademark to be a variation of the “CARTIER”
mark having earlier priority, deriving from the
same business, or that the company using
the similar mark has some organization,
commercial or legal ties with the company
having the previous registration. This
constituted sufficient justification for the
authority to correctly hold that there was
a risk of consumers being misled as to the
origin of the goods offered on the commercial
market. The SAC also confirmed the renown
of the “CARTIER” mark, which means that
the use of the disputed mark “CHATIER
COOL MEN” could lead to the latter acting as
a parasite, yielding undue material benefits
in connection with the sale of goods bearing
the contested mark.
The right holder to the “CHATIER COOL
MEN” mark filed a cassation appeal,
demanding that the ruling be overturned.
The Supreme Administrative Court did not
find in favor of the complaint due to a lack
of justified grounds, and thereby upheld the
correctness of the findings of the PPO and
PAC with regard to the invalidation of the
protection right to the contested trademark.
The SAC confirmed that the use of that mark
to identify cheap products would diminish
the exclusivity of the renowned mark and
dilute its distinctiveness, which would be
detrimental to it.
Source: www.orzeczenia.nsa.gov.pl
10 Trade marks and unfair competition
Poland – Likelihood of confusion
between “MOJA HISTORIA”
and “MOJE HISTORIE”: ruling
of the Supreme Administrative
Court
In a ruling of 22 March 2013, the Supreme
Court of Administration dismissed a
cassation appeal by the company P.P. with
its registered office in Wroclaw regarding the
registration of the mark “moje historie”.
In 2008, the company submitted the wordfigurative mark “moje historie” for Classes
9, 16, 35, 39, 41 and 42 of the Nice
Classification. The PPO refused to register
the mark for those classes because of the
similarity of the mark to the word-figurative
mark “Moja historia” registered in 2005
for Classes 9, 16 and 41. In the PPO’s
assessment, consumers could understand
the form of the submitted mark as the
beginning of a new series of marks by the
same business, or as a new version of the
designation used to date.
The company asked the PPO to reconsider
the matter. In a decision of January 2011,
the authority upheld the decision to refuse
to grant a protection right. P.P. filed
a complaint against that decision to the
Provincial Administrative Court in Warsaw,
which dismissed the complaint, pointing to
the similarity between the marks. The PAC
stated that both marks are word-figurative
marks comprising a two-word designation
written in a red font, which could create
the impression that they derive from
the same producer or that some form of
organizational or legal ties exist between
the two companies. The fact that one of
the marks is in the plural and the other in
the singular does not prevent them from
being associated with each other. The PAC
upheld the position of the PPO that there
was a risk of consumers being misled in all
the aspects considered. In its justification,
the PAC also stated that one could not
expect a buyer to analyze goods to the
degree necessary to differentiate the two
marks from each other. It emphasized
that a decision to buy a magazine is not
preceded by a long investigation of the
market. The court of first instance pointed
out that the appellant company did not
present any evidence showing how long and
in what area its mark had been in use, and
even less so what resources it had invested
in promoting the mark.
The company filed a cassation appeal
against that ruling, accusing the PAC of
having erroneously interpreted and applied
material law, and of having breached the
procedural provisions, which had, in its
opinion, a significant impact on the result of
the case.
The Supreme Administrative Court
confirmed that previous argumentation of
the PPO and PAC, holding that the two
marks are similar. It could not agree with
the arguments of the company, since the
semantic aspect of a mark refers to the
contents of the goods, and not to the form
of the mark itself. Moreover, the SAC
shared the view that there was a risk of
consumers being misled, which could result
in potential buyers believing that the goods
concerned derive from a single company.
What is more, it is incorrect to claim that
the trademark of the right holder contains
words or a combination of words which are
customarily, commonly used on the press
market. Finally, the SAC held that there
had been no infringement of the procedural
provisions. For those reasons, the Court
dismissed the appeal.
Source: www.orzeczenia.nsa.gov.pl
Poland – Dispute over the mark
“PEEK&CLOPPENBURG”:
ruling of the Supreme
Administrative Court
Pursuant to a ruling by the Supreme
Administrative Court of 8 May 2013, the
Provincial Administrative Court in Warsaw
will have to reconsider the issue of the
correctness of granting a protection right
to the trademark “PEEK&CLOPPENBURG”
for the benefit of the company
Peek&Cloppenburg KG with its registered
office in Hamburg, for goods such as leather
goods, belts, straps and bags.
An objection aimed at the invalidation of
the protection right to the word-figurative
trademark registered for the benefit of
Peek&Cloppenburg KG with its registered
office in Hamburg was submitted to the PPO
in October 2008 by Peek&Cloppenburg KG
with its registered office in Dusseldorf. The
applicant pointed to the earlier registration
of an identical designation on its behalf,
protected by a protection right, with priority
as from 18 October 2000. In addition, it
demonstrated a series of exclusive rights
to other marks registered for its benefit,
namely “Peek” and “Cloppenburg”.
In analyzing the similarity of the trademarks,
the PPO Adjudication Board considered
their visual, phonetic and semantic aspects.
In the first two of these, the authority found
that the marks are similar, while in the third
the Office could not make an assessment,
given the undoubted fantastical nature
of the designations. The PPO also held
that there was no risk of consumers being
misled. It found that the fact that the group
of consumers is the same, taking account
of clothing, headwear and shoes, was not
significant, but that differences exist with
regard to “leather goods”. The Board
of Adjudication therefore dismissed the
objection.
The Dusseldorf company filed a complaint
with the Provincial Administrative Court
against that decision by the PPO. The
court of first instance found that the
complaint was worthy of consideration,
since the prerequisites for invalidation of
the protection right to the contested mark
had not been sufficiently individualize to
a degree which could have a significant
impact on the result of the case.
Consequently, the PAC referred the matter
back to the PPO for reconsideration, at the
same time instructing the Office to carry out
the proceeding in accordance with the rules
of the Code of Administrative Procedure.
The company from Hamburg filed
a cassation appeal against that ruling.
It emphasized that the contested decision
contained a detailed analysis of the
similarity of the goods, while the PAC’s
charge that this was lacking was aimed
at breaking the rule of specialization of
a protection right to a mark which does
not possess the attribute of renown. The
appellant accused the PAC of groundlessly
accepting that irregularities had occurred
in the proceeding conducted by the PPO,
and that the PAC had not shown in its
justification what such alleged infringements
of proceedings before the PPO were to have
consisted of. Finally, the company argued
that, contrary to the wording of Article 7
of the Civil Code, from which results the
supposition of good faith, the court of first
instance had demanded that the authority
establish all circumstances, which for the
PPO would be an impossible barrier to
cross, for it is not possible to demonstrate
the non-existence of a particular
circumstance.
The SAC shared the view that the cassation
appeal was fully justifiable. The Court was
not, however, in a position to evaluate the
charges of an infringement of material
law. Therefore, in the course of the
reconsideration of the matter, the Provincial
Administrative Court is to take a substantive
position with regard to the determinations of
the PPO contained in the justification to the
decision being verified.
Source: www.orzeczenia.nsa.gov.pl
Poland – Similarity primarily
pertains to common features,
and not differences: ruling of the
Supreme Administrative Court
The Supreme Court of Administration
dismissed a cassation appeal filed by the
company M.A. Firma Handlowa A against
a ruling by the Provincial Administrative
Court in Warsaw (case file No. VI SA/Wa
2/2013 11
867/11) in the case of a complaint against
a decision by the PPO on the invalidation of
the protection right to the word trademark
“CHATIER ROSS”.
The company Cartier International N.V.
applied for the invalidation of the mark,
claiming an infringement of its rights to the
word mark “CARTIER” and to the wordfigurative mark “CARTIER”. The marks
compared are designated for identifying
perfume products.
In the cassation appeal, the PAC was
accused of a number of procedural errors
with regard to both formal and material law.
The appeal emphasized that an assessment
of the similarity of trademarks and the risk
of consumers being misled as to the origin
of goods cannot focus only on one element
of both marks, but must involve an overall
comparison, and a comparison of all of their
aspects. Both the PAC and the PPO should
have recognized that the case concerned
knowledgeable consumers. The appellant
also raised the fact that the renown of
the “CARTIER” mark in Poland had not
been shown, as well as the omission of the
circumstance that the extended protection of
a renowned trademark is dependent on the
degree of repetition of that mark and
the likelihood of an association between
the marks.
The company Cartier International N.V.
moved for dismissal of the cassation appeal,
claiming that the charges contained therein
are groundless. In addition, it stated
that the appellant possesses a ‘family’
of marks submitted on the basis of the
same business idea, that of conscious
and deliberate references to renowned
trademarks, including “CHATIER” in
imitation of “CARTIER”, “LACROSSE”
12 Trade marks and unfair competition
– “LACOSTE”, and “FAHNENEID” –
“FAHRENHEIT”. The appellant sometimes
makes combinations of two renowned
designations, and even uses the color
schemes and package shapes of renowned
manufacturers.
The cassation appeal mainly questioned the
determinations concerning the prerequisite
of a similarity between the trademarks
and the prerequisite of consumers being
misled which result from Article 132 par.
2 pt. 2 IPL. The SAC did not recognize
the appeal in this scope, and emphasized
that, when assessing the similarity of
marks, it is necessary to consider not only
an analytical summary of the arrangement
of individual letters and syllables, but also
the general context, wording and visual
form of the whole of the designations
compared. What is more, the similarity
of marks is evaluated according to their
common characteristics, and not according
to the differences between them, which can
affect the degree of risk of consumers being
misled. The contested mark “CHATIER
ROSS” is a complex one, containing the
elements “chatier” and “ross”. The marks
compared contain similar words: “chatier”
and “cartier”, but for the average buyer
these are certainly fantasy elements – such
a consumer does not know what the origin
of the Cartier brand is, and is not sufficiently
familiar with the French language. In the
case of perfumes, which are articles of daily
use, readily available, the average consumer
is not guided by a high level of caution, but
pays attention only to the general impression
a product makes.
Contrary to the above claims, the renown
of the mark “CARTIER” was correctly
demonstrated. Cartier International N.V.
supplied exhaustive material evidence
covering numerous advertisements and
publications in the Polish press which
showed not only that the Cartier brand
enjoys high recognizability on the Polish
market, but also that for many years it has
had a high position among the most valued
brands in the world. The SAC confirmed
the aptness of the PAC’s determinations
that, in the case of a renowned mark,
in determining whether a similarity between
two marks exists, the very danger that
another mark could be associated with the
renowned mark suffices.
In addition, the use of the contested
mark on products offered at a price many
times lower than the original product
would diminish the exclusive nature of the
renowned mark and lead to a dilution of its
distinctiveness, to its detriment.
In a ruling of 7 March, the SAC dismissed
the cassation appeal as groundless (case file
No. II GSK 2323/11).
Source: www.orzeczenia.nsa.gov.pl
Other issues
Poland – The internet and the law
Oskar Tułodziecki
An article by Igor Ostrowski and Aleksander Tarkowski which appeared in Rzeczpospolita on 13 June 2013 has inspired me to write this
rebuttal to their arguments.
For many years, the importance of the internet to business has been growing. Industries far removed from IT or telecommunications use
the internet to sell their goods and services online. Today, you can have an internet bank account, book holidays and order groceries online.
Even when looking for valuable goods such as cars and works of art, buyers commonly turn to the internet before reaching the stage of direct
contact with the object of their interest. The internet has become an important source of information on similar offers and the best prices.
It provides an opportunity for small and medium-sized businesses who would otherwise have no chance to reach potential customers. So it is
paradoxical that, while offering an opportunity for growth to most businesses and industries, the internet also presents an enormous challenge
– and sometimes a deadly threat – to the entertainment industry and the media, in particular for music and film companies, publishers of
books, and the press. The gradual disappearance of traditional media and the shrinking of offers by producers of copyright-protected content
constitutes not only a threat to growth, but perhaps even a threat to the survival of culture as we know it – and, in my view, it may also have
far-reaching harmful effects in the realm of civil and human rights.
Questions arise as to the causes of this state of affairs. Firstly, industries other than entertainment and information offer goods and services
which cannot usually be ‘consumed’ solely through the internet. Electronic communication between suppliers and customers only facilitates
transactions without entailing any additional dangers. But information and artistic works are intangible goods, and copying and disseminating
them through the internet is exceptionally easy. As a result, the temptation arises to distribute protected content as one’s own, sidestepping
the right holders involved. What is more, entire business models have arisen and will arise based on distributing the content of others.
The most important cause of the current state, however, is the fact that, in the area of the distribution of cultural goods, the law has evidently
not kept pace with the changing reality. It is interesting that legal regulations have been and are being established concerning economic
phenomena in this sphere, for legislators in many countries and legal systems are aware of the opportunities and challenges of the internet.
I have in mind legislation regulating remote contracting, protection of privacy in the web, provisions combating hacking, and regulations on
electronic signatures. In each of these cases, legislative initiatives are preceded by an analysis of the new economic reality forged by the
internet. The regulations strive to adjust the economic relations among various interest groups. It would never occur to anyone to suggest
that, say, travel agencies should offer trips for free, or that banks should hand out their money or agree to abuse such as attacks by hackers
or the theft of customer identities. On the contrary, it becomes easier to enter into contracts by means of the internet, and legal protection is
intensified so that consumers can quickly, comfortably manage the resources they have on deposit in banks. What is curious is that culture
and the distribution of cultural goods seem to be deprived of such protection. The idea that, after considering the specifics of the challenges
posed by the internet, levels and means of protecting works should be implemented, is met with hostility and demagogic counterarguments.
The EU directive from 2001 on copyright in the information society and on electronic trade, and even the directive on compliance with
intellectual property law of 2004, are grossly inadequate to their purpose, and even the attempt to implement these imperfect provisions
was torpedoed. Perhaps it was all about freeing suppliers of internet services from legal liability, and within a scope well beyond the
standard set out in EU law. The main cause of this would seem to be the open conflict between a high level of intellectual property rights
and the development of the internet industry. A low level of protection gives suppliers of various internet services the opportunity to achieve
high revenue in the form of sales of internet ‘traffic’, or as a result of intermediating in ‘sharing’ of third-party content taking place among
unauthorized parties, or finally, by offering services involving searching and aggregating ‘free’ resources. The business models are known,
and have one thing in common: revenue is generated as a result of the interest shown by internet users in free content, where such content
is made available without the participation of the relevant right holders, who can only look on helplessly as others profit from their work. It is
) This article appeared in Rzeczpospolita on 13 June 2013 under the title: “Internet does not invalidate the law”; the author is a partner in K&L Gates Jamka sp. k.
and a member of the Copyright Law Commission by the Ministry of Finance for the third consecutive term
2/2013 13
a paradox that such a situation seems to sit well with various organizations supposedly interested in promoting freedom on the internet. In
propagating what they see as individual and cultural freedom, they support this state, and go further, not simply opposing adjusting the law
to the requirements of digital reality, but actually demanding a weakening of copyright. Interestingly, the same organizations remain entirely
blind to the real threats to internet users’ rights and freedoms posed by the barely restricted erosion of their privacy or the impossibility of
enforcing subjective rights in such situations as internet infringements of personal rights or rights to one’s own image. A person seeking to
establish the identity of an infringement comes up against insurmountable barriers resulting from telecommunications law or personal data
protection law. In effect, the internet virtually escapes from the operation of the legal system, and civil rights, both subjective rights and the
right to go to court, exist only on paper. This scandalous state of affairs is not perceived by organizations fighting – nominally, at least – for the
rights of internet users and consumers of culture.
An instructive case study of the foundations of social reactions and lobbying activities was the notorious (for many) international treaty known
as ACTA. We remember the demonstrations and protests numbering thousands of people, and the media hysteria directed against the
‘corporate conspiracy’ to censor the web and monitor the content of internet communications. The only problem is, the treaty doesn’t contain
a single word on censorship or monitoring of content. Those thousands of people were manipulated by activists, with the active collusion of
the media, while the small number of voices reporting the true situation was drowned in a flood of hysterical demagoguery.
Let me put forward a hypothesis opposite to what is currently being proposed. Facilitating trade in other people’s goods is not a condition for
cultural development. On the contrary, what is necessary is to ensure that the exclusivity to which authors are entitled is respected, both in
traditional commerce and in the new internet-based economy. It is not creators who should ‘adapt to reality’, looking on helplessly as others
enrich themselves with the fruits of their work. The law should form reality so as to make it possible for authors to profitably exploit their works
on the internet, in a way similar to that in which regulations were once adopted which made it possible for people to bank over the internet;
at that time, no one advised the banks to wind up their operations because the era of the internet had arrived. The slogan that we are all
creators may be catchy, but some people are professional creators who devote their passion and their entire lives to their creative activities.
It is both improper and immoral for the fruits of their creation to be the subject of illegal trade. This does not invigorate culture; at the most,
it enriches internet providers and certain internet services. Serious investments are required for a creative work to come into being. It is not
fair to negate the rights of the producers and distributors who finance a work and promote it. After all, if someone can afford to make their
work available for free, they’re free to do so. But it is unjust to exploit someone else’s property and to argue for restrictions of their rights,
whether for business or ideological reasons.
The argument is often made in discussions that strengthening intellectual property rights in Poland is acting in the interests of large
corporations. I think otherwise. I am convinced that the huge international content producers, the big film and music companies, will
manage pretty well no matter how well their rights are enforced in Poland. They’ll earn a bit less or a bit more, that’s all. But legal protection
within this scope is essential to the survival of Polish authors, producers, music companies, book publishers and media. Polish creators,
as a rule, must exist from the domestic market, and the level of legal protection within the scope in question is a matter of survival for them.
Outstanding works are born out of long-term, intense work. Films and music recordings involve investments of millions of zlotys. They
will not arise if they have no chance of being distributed profitably. This is what affects the growth of culture, and jobs relating to domestic
culture. When faced with the argument about liberating creativity from the clutches of middlemen such as distributors and publishers, let
us examine it through the eyes of our book publishers, distributors and press publishers. First let us look at the condition of such respected
cultural institutions as Ossolineum or PIW, and only then decide what value there is in the slogan that we are all creators. It may be that a
strengthening of copyright protection will prove much more effective than state patronage, for in certain spheres, subsidies for culture will be
able to be reduced, or may prove entirely unnecessary.
The level of protection of intellectual property rights also has a direct impact on civil rights and freedoms. Before our very eyes, services
replicating third-party content are causing an erosion of traditional media. The question arises as to how those media ought to ‘adapt’ to the
new situation, as they watch others take over and replicate the content they generate, in a manner which extends far beyond the concept
14 Trade marks and unfair competition
of fair use. Free media, a strong ‘fourth estate’, is a vital condition for the continued existence of a society of free citizens. Only a board of
editors backed by a strong publisher can issue content which is not subordinate to government taste, corporate influence, local connections
or organized crime. Freelance journalists and bloggers can make a valuable contribution to social debate, but they cannot replace traditional
media.
The importance of copyright extends beyond the aims of one or several special interest groups. Amendments of copyright law should serve to
strengthen the protection given to creators, for this will lead to an enrichment and development of culture and to the continued enjoyment of
civil rights.
2/2013 15
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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