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THURSDAY, 2 SEPTEMBER 2010
Poland: act carefully when requesting preliminary injunction
 Polish company Technopol sp. z o.o. succeed to register in the Polish Patent Office over a hundred word and word-figurative trade marks in the form of Arabic numeral "100" and its multiples (200, 300, etc.) together with the word "Panoramicznych" or "Panoram". Technopol was sued by another Polish entrepreneur, Roman Oraczewski who publishes crossword magazines under such titles as "222 Panoramiczne", "333 Panoramiczne", "500 Krzyżówek", "300 Krzyżówek z Uśmiechem", "300 Krzyżówek Panorama Rozrywki". Mr Oraczewski claimed protection to its press titled and Technopol filed counter claims based on Article 10 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.
Article 10.1. Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
2. Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
Technopol requested the court to issue preliminary injuction ordering Mr Oraczewski to cease the sale and introduction to the market of all his magazines bearing titles that are identical or similar to Technopol's trade marks. The Court granted the injunctive relief. Mr. Oraczewski did not agree with such order and after couple of years this case ended in a final dismissal of the application for preliminary injunction. Mr. Oraczewski sued Technopol for the compensation for the loss incurred due to the enforcement of the injunction. He claimed over 67.000.000 PLN loss. According to Article 746 §1 of the Civil Proceedings Code – CPC (in Polish: Kodeks Postępowania Cywilnego) of 17 November 1964, Journal of Laws (Dziennik Ustaw) No. 43, item 296, with subsequent amendments, when a preliminary injunction has been granted and the plaintiff fails to file the principal claim, withdraws it, the claim fails for procedural reasons, or is dismissed as unfounded, the defendant may demand compensation for the loss incurred due to the enforcement of the injunction. The claim expires if it is not pursued within one year from the moment the loss occured. This provision makes a plaintiff who obtained a preliminary injunction but ultimately failed with its principal claim liable towards the defendant for the loss caused by the injunction.
The Supreme Court in its judgment of 25 February 2010 case file V CSK 293/09 held that the liability provided under Article 746 § 1 of the CPC is independent of plaintiff's fault. However, the Court dismissed Mr Oraczewski complaint because he did not follow the preliminary injunction order.
See also "The Polish Supreme Court speaks on reputation and criteria for trade mark infringement" and "Poland: press titles and trade marks".
Posted by: Tomasz Rychlicki @ 14.14
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THURSDAY, 2 SEPTEMBER 2010
Octopus Paul (trade marks) - alive and kicking
Quite some time has passed since the end of the football World Cup, so surely Paul the psychic octopus (see our earlier reports here) should by now be out of the headlines for good and any searches for Paul octopus trade marks should not reveal any new results?
While the internet was flooded with rumous that Paul had passed away and fans already feared the worst, we now learn from an article in The Telegraph that Paul is alive and kicking and the latest celebrity to support England's bid to host the World Cup in 2018. Interested readers may recall that Paul, who currently resides in a German sea life zoo, was "born" in England, so that his latest move could be seen as a return to his English roots. Almost as if to dispel any rumours, there also three new Paul trade mark applications to be found on the Community trade mark register, all in the name of Sea Life Deutschland GmbH which owns Paul's zoo.
Posted by: Birgit Clark @ 12.24
Tags: Paul, |
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THURSDAY, 2 SEPTEMBER 2010
No confusion without similarity of marks, as CK appeal fails again
The Court of Justice of the European Union gave its ruling this morning in Case C‑254/09 P, Calvin Klein Trademark Trust v Office for Harmonisation in the Internal Market; Zafra Marroquineros SL, an appeal by Calvin Klein against the General Court's refusal to allow it's appeal against the Board of Appeal's refusal to allow its appeal agains the OHIM Opposition Division's decision to dismiss its opposition.
 Zafra had applied to register the word mark CK CREACIONES KENNYA for goods in Classes 18 and 25, in which Calvin Klein had earlier registrations, for identical goods, of the two figurative marks illustrated here. The Court of Justice affirmed that, notwithstanding the identity of the goods, there was no visual, aural or conceptual similarity between the marks and thus no basis upon which to establish the existence of a likelihood of confusion.
Posted by: Jeremy Phillips @ 12.08
Tags: ecj appeal, similarity of marks, |
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TUESDAY, 31 AUGUST 2010
Facebook.me transferred to rightful owner
 A WIPO mediator ordered last month that the domain name Facebook.me, obtained during Montenegro’s country code top-level domain (ccTLD) .me auction period in 2008, be transferred from the United Arab Emirates resident Amjad Abbas to Facebook, Inc. This order followed a successful complaint filed in May 2010. Facebook Inc argued that it owned numerous Facebook trade marks around the world and that its online social networking services were internationally renowned. The disputed domain name was one of a number of domain names offered for sale at a minimum price of US$ 2,000 (EUR 1,575) on Abbas's website at www.batfind.com. According to Abbas, he bought and registered Facebook.me for around US$ 5,115 (EUR 4,029); he also claimed to hold Oracle.me, Trump.me and other domains, saying he collected domain names as a hobby and as a means of impressing his friends, with possible future plans of creating non-profit personal blogs.
The WIPO mediator dismissed both these and a number of other explanations for registering the domain name, saying that were not persuasive and concluding that it was registered and used in bad faith.
Source: Petosevic newsletter here
Posted by: Jeremy Phillips @ 05.49
Tags: Montenegro, domain names, cyberquatter, |
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MONDAY, 30 AUGUST 2010
Preparing for the new gTLDs: a survey
 World Trademark Review (WTR) magazine is conducting a survey into how industry is preparing for new generic top-level domains. This survey will be live until at least 15 September. According to WTR: "It is now almost certain that new gTLDs will launch. So the trademark community is best advised to stop trying to improve the policy and focus instead on strategy. External counsel must work out how to build business models around new gTLDs. Meanwhile, brands must answer much more than the question of whether or not to apply to run a new gTLD registry; they must plan how to react to new spaces on the internet, how to restructure their internal teams accordingly and how to continue building and protecting their brand online". If you would like to contribute to this survey, you can access it here.
Posted by: Jeremy Phillips @ 15.34
Tags: domain name survey, |
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MONDAY, 30 AUGUST 2010
Poland: membership in capital group is not enough
 On 25 July 2005, DOMAIN MENADA Sp. z o.o. from Warsaw applied for the right of protection for FILIPETTI MONTENERO SPUMANTE DEMI SEC dalla tradizione italiana trade mark in class 33.
The Polish Patent Office informed DOMAIN MENADA that there exist earlier trade marks owned by Belvedere S.A. and refused to grant the right of protection for the applied sign. DOMAIN MENADA filed a complaint in which the company argued that it is a member of Belvedere Group and provided a proper letter of consent.
The Voivodeship Administrative Court in Warsaw in its judgment of 21 June 2010 case file VI SA/Wa 710/10 held that in any case, the mere existence of links (relationships) between entities belonging to the same capital group cannot be regarded as a guarantee of quality of product bearing the disputed trademark. It should be noted that the capital group is a specific form of business, where corporate governance is exercised at several levels - both across the group and in individual companies. The mere membership in a capital group cannot be used as an argument that the signs from affiliated companies will not mislead consumers.
Posted by: Tomasz Rychlicki @ 14.15
Tags: Polish law, Voivodeship Administrative Court, letter of consent, capital group, likelihood of confusion, |
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MONDAY, 30 AUGUST 2010
The weird case of the ZAHIA trade marks applications
 In April 2010, the name of four members of the French soccer team were mentioned in a sex scandal. Franck Ribéry, Sydney Govou, Hatem Ben Arfa and Karim Benzema were mentioned as potential clients of Zahia Dehar, a young prostitute who might have been under eighteen at the time of the facts.
 The forename Zahia rapidly became a buzz word. In June 2010, Ms Dehar applied for several trade marks including her forename and covering a wide range of products and services of various nature (as one can imagine). However prior trade mark applications for ZAHIA and the phonetic equivalent ZAYA had just been filed some time before in the name of ... another French sportsman, Frederic Michalak (scrum half and fly-half in the national rugby team).
After this was mentioned in the press, Michalak's agent denied that the rugbyman actually filed the applications; it appears that a yet-unknown individual used Michalak's name and address when filing the INPI online forms. I can only wonder how anyone could benefit from such identity theft?
Posted by: Frédéric Glaize @ 14.13
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