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SUNDAY, 14 MARCH 2010
Poland: nuances in advertising of pharmaceutical products
The Main Pharmaceutical Inspector (MPI) found that Polish Federation for Women and Family Planning (in Polish: Federacja na rzecz Kobiet i Planowania Rodziny) is publishing the names of contraceptives on its Internet website, and therefore the Federation advertises these products. The MPI ordered the immediate cessation of such actions because it may encourages the use and prescription of such medical preparations and public advertisement of medicinal products as contraceptives, that are issued only on prescription, is prohibited by provisions of the The Polish Act on Pharmaceutical Law.
Advertising a medicinal product shall mean any activity consisting in informing about and encouraging to use the medicinal product
The Federation filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw. The VAC in a judgment of 3 March 2009, case file VII SA/Wa 2108/08, has overturned the decision of the GIF, but only because the incomplete material was submitted. The VAC agreed that MPI's decision was justified with regard to cessation of public advertisement of contraceptives. The Federation filed a cassation complaint.
The Supreme Administrative Cort (SAC) in a judgment case file II GSK 461/09, ruled that the provisions of Polish Pharmaceutical law are legible and obvious, but they must relate to the circumstances of a particular case and to all reasons of actions taken in order to inform about the medicinal product. According to the SAC these circumstances were not considered and the VAC also omitted the statutory objectives of the Federation. The major role of the Polish Federation for Women and Family Planning is to inform of the various methods of family planning. Publishing the name of contraceptives, cannot be treated as an encouragement for its use. The information does not come from the responsible entity, and the publication of characteristics of medicinal products is not considered as advertising. If the order issued by the MPI was sustained, such information could not be published at all.
Therefore, the SAC annulled the questioned judgments of the Voivodeship Administrative Court and returned the case to the VAC for reconsideration.
See also Class46 post entitled "Poland: first judgment on differences between sponsorship and advertising of pharmaceutical product".
Posted by: Tomasz Rychlicki @ 00.18
Tags: Main Pharmaceutical Inspector, advertising of pharmaceuticals, Voivodeship Administrative Court, Supreme Administrative Court, pharmaceuticals, |
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FRIDAY, 12 MARCH 2010
New Romanian mandatory mediation to help settle TM disputes
With effect from Wednesday 3 March 2010 mediation -- which has been available in Romania since 2006 -- has become mandatory for all civil disputes and simple criminal cases.
The parties involved in the dispute will be obliged to seek to resolve each issue through mediation before turning to court. If a trial has already been initiated, the parties may request its suspension for a maximum of three months in order to try to settle the case through mediation. If the parties bring the case to court directly, the judges will require them to attempt mediation first, resorting to court only if mediation fails.
This measure, mainly enforced to ease the courts’ caseloads, is advantageous for the parties involved in disputes, as it is shorter and less complex and costly.
While approaching the other party with the purpose of amicable settlement was often used by trade mark owners before initiating a court action, it was not always taken into consideration as a way of resolving a conflict.
Mediation should be seriously considered as an alternative to the traditional judicial system, especially because of the saved time and money.
With ordinary trials before the Romanian courts, on average two to three years pass before a definitive and irrevocable decision is reached. During this time, IP rights owners cannot fully benefit from their rights and they also spend the unnecessary money and energy.
The advantage given by the mediation procedure is that the disputing parties have complete control over the entire process. The procedure is informal, fast, efficient and low cost, which is especially favourable in light of the current economic crisis.
This item is based on an article in the IP newsletter of PETOSEVIC.
Posted by: Jeremy Phillips @ 15.10
Tags: Romania, mediation, |
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FRIDAY, 12 MARCH 2010
Trade marks and taxes in Poland
A taxpayer being also an entrepreneur has requested the Director of the Tax Chamber in Warsaw to issue an interpretation to a question whether by contributing a trade mark to a general partnership (ordinary partnership), he would receive a revenue that is subject to personal tax income. The right of protection for a trademark was granted by the Polish Patent Office. The taxpayer received revenue from licensing the use of that trade mark. However, he decided to form a general partnership, to which he wanted to make a contribution in a trade mark, based on its market value. The partnership would treat such trade mark as a legal and intangible asset and would make it available to other entities under a license agreement. The entrepreneur was also considering the possibility to sale his right of protection for the trade mark to another entity if the general partnership would not count it as the intangible asset.
He argued that making a contribution to a partnership, such as general or ordinary one (these are not having a status of a legal person), is not a source of revenue in personal income tax. His opinion was based on provisions of the Polish Act on Personal Income Tax which says that revenues from financial capital shall be par value of shares (stocks) of an incorporated company or shares of a cooperative received in exchange for a non-financial contribution.
The Director of the Tax Chamber in Warsaw in the interpretation of 25 June 2009, no. IPPB1/415-288/09-2/AG, concluded that the contribution of a trade mark to a general partnership is considered as a sale. The value of a trade mark that was established in the partnership contract serves as a basis to set the revenue from financial capital. Therefore, it is a revenue from commercial activity of a contributing person. The Director of the Tax Chamber referred to the Commercial Companies Code, under which the general partnership is a partnership, which may on its own behalf acquire the rights, including real property and other property rights, to incur obligations, may sue and to be sued – it has legal capacity but not the legal personality (a private company not an incorporated one). A non-financial contribution causes a transfer the ownership of things or rights to a general partnership because the capital share of the partner shall equal the value of the contribution effectively made. From the viewpoint of the civil law regulations, it is a payable sale of things or rights. Because the general partnership has no legal personality separate from its partners, therefore is not subject to personal tax income. Only partners are subject to personal tax income in such case.
Posted by: Tomasz Rychlicki @ 15.04
Tags: Poland, tax law, value of trade mark, Tax Chamber, personal income tax, legal entity, general partnership, Polish law, |
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THURSDAY, 11 MARCH 2010
DG Trade organises meeting on ACTA
 From OHIM, we learn that DG Trade is
organising a meeting in Brussels on 22 March to inform and consult
interested parties about the negotiation of the Anti-Counterfeiting
Trade Agreement (ACTA). According to the press release, "The goal of ACTA is to provide an improved framework for
countries committed to intellectual property protection, with a view to
effectively address the challenges of IPR infringement. The event,
which requires pre-registration, takes place in the Charlemagne
Building from 10.00am to 12.30pm." As ACTA has attracted criticism for secrecy and lack of transparency in the progress of negotiations (see IPKat's post here), this meeting might just be a pleasant surprise.
Posted by: Nikos Prentoulis @ 16.31
Tags: DG Trade, ACTA, |
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THURSDAY, 11 MARCH 2010
Extra virgin olive oil gets PDO
 Commission Regulation 203/2010 of 10 March 2010 entering a name in the register of protected designations of origin and protected geographical indications (Irpinia — Colline dell’Ufita (PDO)) was published today on the website of the Official Journal of the European Union. Irpinia — Colline dell’Ufita is an extra virgin olive oil from Italy.
Posted by: Jeremy Phillips @ 11.42
Tags: PDOs, |
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THURSDAY, 11 MARCH 2010
The Polish Supreme Court speaks on reputation and criteria for trade mark infringement
Technopol Publishing Agency filed a suit against Phoenix Press and Bauer Publishing House. Technopol requested the court to prohibit both defendants from putting on the market all magazines and periodicals bearing the number "100" or its multiples, and journals bearing the titles composed of three Arabic numerals together with the words "panorama" (in Polish: panorama) or "panoramic" (in Polish: panoramiczny), and to order the withdrawal of such publications from the market, to order the publication of an apology of specific content in the press, to order the defendants to pay the amount of 75000 PLN as compensation and the amount of 99000 PLN as unjustified benefits received by the defendants as a result of the unlawful use of Technopol’s trade marks, and to order defendants to withdraw particular trade mark applications from the Polish Patent Office.
Technopol argued that it has introduced characteristic titles of crosswords magazines, presenting the number "100" or its multiples, with the words "panorama" or "panoramic" since 1994. Bauer Publishing House gave a licence to Phoenix Press to publish crosswords magazine entitled "Chwila na 100 panoramicznych". Later on, Phoenix Press began to publish crosswords magazines with titles composed of the multiple of "100" and the "panoram" word.
Technopol based its claims on articles 3, 10 and 18 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 later amendments.
Article 3
(1) The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
(2) The acts of unfair competition shall be in particular: misleading designation of the company, false or deceitful indication of the geographical origin of products or services, misleading indication of products or services, infringement of the business secrecy, inducing to dissolve or to not execute the agreement, imitating products, slandering or dishonest praise, impeding access to the market and unfair or prohibited advertising and organising a system of pyramid selling.
(…)
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.
(…)
Article 18
(1) Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,
6) adjudication of an adequate amount of money to the determined social goal connected with support for the Polish culture or related to the protection of national heritage – where the act of unfair competition has been deliberate.
2. The court, upon a motion of the entitled party, may also adjudge on products, their packing, advertising materials and another items directly connected with commitment of the act of unfair competition. In particular, the court may order their destruction or include them on account of the indemnity.
and articles 120(2) and 296(1) and (2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.
Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.
(…)
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
i) in accordance with the general principles of law,
ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.
1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.
Phoenix Press and Bauer Publishing House requested the court to dismiss the suit. They argued that all trade marks in question have only informational character, and they refer to the title of the magazine "Chwila dla Ciebie", and substantially differ from plaintiff’s trade marks, which excludes the risk of confusion.
The judgments of the District Court and the Court of Appeal did not satisfy any of the parties and as a consequence, both appealed.
The Supreme Court in a judgment of 24 November 2009, case file V CSK 71/09, ruled that the admissibility of a cassation complaint in matters of property rights is dependent on the minimum value of the subject matter of litigation, which in economic cases, cannot be less than 75000 PLN. The legal doctrine and the case law of the Supreme Court has expressed the view that the claims under article 18(1) points 1, 3 and 4, of the CUC have non-financial nature. See judgment of the Supreme Court of 9 March 2006, case file l CZ 12/06, and a judgment of the SC of 9 January 2008, case file II CSK 363/07. But this view has no legal justification which was the most widely expressed by the Supreme Court in the opinion of 8 March 2007, case file III CZ 12/07, published in OSNC 2008/2/26. The Court held that the claims set out in the CUC, though - according to the prevailing view - are not based on the absolute rights (enforceable against anybody infringing that right, an erga omnes right can be distinguished from a right based on a contract, which is only enforceable against the contracting party), they are directly contingent upon economic interests of persons who have the absolute right, and thus have the financial character. This view is justified by the general objective of the unfair competition law as defined in article 1 of the CUC, which is to prevent and combat unfair competition, and by provisions of article 20 of the CUC which set the same term of terminations of actions as for claims ensuing from property rights. For this reason, the Supreme Court dismissed the cassation complaint brought by Phoenix Press.
Technopol based its cassation complaint inter alia on the reputation of its trade marks. The Supreme Court ruled that according to the legal doctrine and the case law established by the SC, the distinction made between well-known and reputed trade marks is based on a different criterion. The reputation of a trade mark means its attractiveness, the value of advertising it creates and the ability to stimulate sales of goods marked with it. It is therefore a criterion referring rather to the special quality of a sign than to the degree of its knowledge. Such opinion was issued by the Supreme Court in a judgment of 7 March 2007, case file III CSK 428/06. The Supreme Court in a judgment of 12 October 2005, case file III CK 160/05, published in OSNC 2006/7-8/132, ruled that, the reputed or renowned trade mark serves as a carrier of information and ideas/opinions about high quality and high prestige. The last word is synonymous with "reputation" in Polish. However, the concept of a reputed/renown trade mark does not indicate an association with the exclusive services or goods of significant value. A renowned trade mark is a carrier of information on a specific, expected and tested quality of a sign. It includes a settled belief about the expected values of the goods, in the minds of buyers. The Supreme Court pointed out that the reputed trade mark in relation to other signs is characterized by ever stronger distinctive characteristic. Numerical trade marks owned by Technopol and registered for crosswords periodicals do not have the distinctive character. Trade marks intended to use for such periodicals have informational nature and are descriptive. They demonstrate direct and specific relationship with goods at stake which could allow its buyers to see them as a description of quantity of goods or one of their essential characteristics. In any case, a numerical trade mark placed on the cover of the magazine informs about the amount of crosswords that are appearing in the magazine and it is seen by buyers as a description of the characteristics of the goods, in particular the number of crosswords appearing in the magazine. Similarly, the word signs "panorama" or "panoramas" are used to describe the features of crosswords printed in a journal. The weak distinctive characteristic of Technopol’s trade marks that were registered for crosswords periodicals proves that these are not reputed trade marks, and there is no risk of confusion as referred to in article 296(2)(ii) of the IPL.
There was no evidence for the Court, that Technopol’s trade marks acquired the secondary meaning. On the contrary, such arguments were denied by the Court because of the use of these trade marks in such a way that they became a carrier of information about the origin of the goods. The Court confirmed that, as a general rule, it is possible for a trade mark that also serves as a press title, to acquire secondary meaning and distinctive character while performing informational function, but only taking into account all the circumstances the of use of such sign for designation of the goods.
The Court also ruled that the risk of consumers confusion as to the origin of goods, which creates the infringement of the right of protection for a trade mark, has many factors that require a comprehensive examination. The degree of knowledge of the registered trade mark, the degree of similarity between trade marks and the goods, and the circumstances in which the marked goods are sold, but also its distinctiveness should be taken into account while determining the risk of consumers confusion. According to the Court, the risk of consumers confusion was excluded because of the weak distinctive characteristic of the descriptive numerical signs, and the allegations of violation of article 296(2)(ii) of the IPL were unfounded, irrespective of any similarity between Phoenix Press and Technopol’s trade marks. Article 296(2)(ii) of the IPL applies to the infringement performed in the form of imitation, which may involve the use of an identical or similar trade mark to a trade mark registered, for the same or similar goods to these listed in the registry. The premise of violation is not only the unlawful use of a sign, but also the risk of confusion as to the origin of goods. The common knowledge of Technopol’s trade marks has not been proved and such knowledge cannot be equated with the popularity, especially as these trade mark serve for the designation of crosswords magazines that are targeted to specific audiences.
The Supreme Court also ruled that there was no violations of the provisions of the CUC related to the likelihood of consumers confusion as to the origin of the goods. The condition for the application of article. 10(1) of the CUC is decided on the factual basis. As it was noted by the Supreme Court in a judgment of 23 April 2008, case file III CSK 377/07, published in OSNC 2009/6/88, the difficulties in establishing such datum stem from the situation that it’s a fact of a legal nature and which may arise, as well as the fact that the likelihood of confusion must relate to a specific model of the consumer. According to article 10(1) of the CUC, the indication of the goods or services must have such a distinctive character so it’s illegal use would cause the likelihood of consumers confusion as to the origin of the goods. Only the use of words and numbers in a specific composition could cause such a risk. A similar opinion was issued by the Supreme Court in a judgment of 21 February 2008, recognizing that the numerical designation placed on the cover of the crosswords magazine can make the average consumer confused as to the origin of the goods, only if it is put in the place usually reserved for the title of a periodical. There was also the need for an appropriate balance between the rights and interests of different market participants, so giving due protection would not allowed to abuse their position.
The Supreme Court also noted that Technopol wrongly raised the plea of faulty decision of a case where it argued that the lower court did not take into account its claim against the defendants to withdraw given trade mark applications from the Polish Patent Office and the claim to abandon of their trademarks rights. The Court ruled that these claims relate to the rights on the existence of which decides an independent body – the Polish Patent Office. It is the PPO’s jurisdiction to decide on the invalidation of the right of protection for a trade mark at the request of any person who has a legitimate interest if it's shown that the statutory conditions for obtaining this right have not been met.
For all these reasons, the Supreme Court dismissed the cassation complaint brought by Technopol.
Posted by: Tomasz Rychlicki @ 10.36
Tags: Polish Patent Office, Polish courts, Polish law, Polish Supreme Court, famous trade marks, reputed trade marks, trade mark infringement, |
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