Welcome to another edition of our bulletin. This time, we are particularly pleased to be able to offer you an expanded edition, enhanced with material prepared by our colleagues from the K&L Gates office in Paris. This is a further step in making our bulletin more international – and even more interesting, providing our readers with a variety of information on trademark law and unfair competition, going beyond the Polish and European topics discussed to date.

Of particular interest in this issue is the material on EU legislative plans for the protection of confidential business information (know-how), which has not yet been harmonized at EU level. A draft directive has been released in this regard, indicating that the unification of the principles of protecting businesses in the European Union may be in the cards. This bulletin provides a brief overview of the draft, and we will definitely follow up on the progress of the legislative process.

We also cover the publication of an EU Regulation on the content of applications submitted by right holders’ for customs protection of their intellectual property rights. It completes the regulation of customs protection of these rights, an essential part of which was enacted last year in Regulation 608/2013. The new customs forms are much more detailed than the old ones. It will certainly be some time before any summary of the fight against imports of counterfeit goods under the new rules can be attempted, and in particular, as to whether and to what extent the changes made have actually improved cooperation between right holders and customs authorities.

As every quarter, we report on interesting rulings concerning trademarks and unfair competition (it so happens this time that our authors have chosen to cover wolves, wild and domestic cats, and tigers!), and we continue our tradition of posting media articles by K&L Gates lawyers.

We wish you pleasant reading.

Oskar Tułodziecki

no. 1/2014 (13)

Quarterly bulletin

K&L Gates Jamka sp.k.Al. Jana Pawła II 2500 854 Warszawa, Polskawww.klgates.comT: +48 22 653 4200 F: +48 22 653 4250

Trade marks and unfair competition Introduction

Legislative initiativesEU – Uniform standards of protection for trade secrets: draft directive of the European Parliament and of the Council .................................................................................. 4

EU – New customs application forms ....................................................................... 5

Case-LawEU – Weakening of the distinctiveness of a mark with an image of a wolf: ruling of the Court of Justice of the European Union .................................................................... 6

EU – International agreements and EU law: a difficult relationship. Ruling of the Court of Justice of the European Union on the issue of the actual use of a trademark ................................................................................................... 6

EU – Could consumers be misled? “SUPERGLUE” and “SUPER GLUE”: ruling of the EU General Court .................................................................................. 8

EU – “FOREVER” and “4EVER” are similar marks: ruling of the EU General Court ..... 8

EU – Registration of a trademark as evidence of public availability of a design: ruling of the EU General Court ................................................................................ 10

EU – No similarity between tigers: decision of the Office for Harmonization of the Internal Market in the case of the trademark “T.G.R. ENERGY DRINK” .................... 11

PL – Cash premiums and logistics fees as an act of unfair competition: ruling of the Supreme Court of Poland .................................................................................. 12

PL – The use of foreign words in a trademark: comments contained in a ruling of the Supreme Administrative Court on an attempt to invalidate the protective right to the trademark “BIEN DONG” ..................................................................... 12

PL – The correctness of the control of a decision by the Polish Patent Office: the Supreme Administrative Court in the case of a protective right granted for the designation “EKOFLORA”............................................................................. 13

Other issuesFR – The two leading French online private sellers, Vente-privee.com and Showroomprive.com ........................................................................................ 15

It is worth using the ® symbol beside a registered trademark .................................. 16

Contents

4 Trade marks and unfair competition

EU – Uniform standards of protection for trade secrets: draft directive of the European Parliament and of the CouncilThe European Commission has presented a draft directive of the European Parliament and of the Council on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure. We reported on this European initiative and on the work of the Commission in Bulletin 3/2013.

The directive should introduce uniform standards of protection for trade secrets in all member states, as well as eliminate currently existing discrepancies between the legal systems of individual territories. Above all, the directive will clarify what a trade secret is. The proposed definition of ”trade secret” is based on the definition of ”undisclosed information” contained in the TRIPS agreement. The draft also introduces the notions of ”a trade secret holder”, ”infringing goods”, and ”the infringer”.

The directive defines and specifies when acquisition, using, or disclosing a trade secret is considered legal, and when it is contrary to the law. For example, obtaining a trade secret as a result of discovering or creating it independently does not constitute an infringement of the law. Similarly, under the directive, obtaining protected information by actions such as observation, research, disassembly, or testing a product or object is legal, provided that the product or object was made publicly available or was legally in the possession of the person who obtained access to that information.

The new law imposes an obligation on member states to establish the general and remedial means and procedures necessary for the pursuit of civil law claims arising from the illegal acquisition, use, or disclosure of trade secrets. Those means should be effective, and should deter potential infringers, but should not be unnecessarily complicated, costly, or protracted. The directive requires member states to guarantee the availability of suitable temporary and security measures which can be taken against an alleged infringer, such as, e.g. the seizure of goods where there exists a suspicion that the goods constitute an infringement of the law; the prohibition of the production, importing, exporting or storing of such goods; or the temporary prohibition of using or disclosing the trade secret. In essence, case law regarding domestic provisions should provide for the ability of a court to order such actions as, for example: that goods be withdrawn from the market; that the infringer issue a declaration on the infringement of the law; that the goods be deprived of those features which cause the infringement of the law; that documents, materials, substances or electronic files containing or using a trade secret be destroyed; as well as other similar measures, to be performed at the expense of the infringer. The injured party should have a guaranteed right to obtain appropriate compensation in an amount proportional to the harm suffered. When determining the amount of compensation, the directive requires that account be taken of such criteria as: negative economic consequences (including lost profits), unfair profits made by the infringer, and moral prejudice caused to the trade secrets holder.

What is particularly noteworthy in the context of potential amendments of Polish legislation is a proposal concerning the period of time after which claims over an infringement of a trade secret become time-barred. The proposal introduces a minimum one-year and maximum two-year time-barring period, counted from the date on which the plaintiff became aware or had reason to become aware of the last fact giving rise to the action. Currently, pursuant to the Act on Combating Unfair Competition, claims over acts of unfair competition become time-barred after a lapse of three years.

Under the draft directive, member states are also to guarantee the protection of trade secrets during court proceedings concerning the acquisition, use, or disclosure of a secret. The directive requires that provisions be introduced in order to guarantee the confidentiality of court employees, experts, and witnesses. The courts are to be equipped with means of restricting access to all documents containing trade secrets submitted by parties to a case or third parties, as well as with means of restricting access to hearings and minutes of hearings, and removing confidential passages from published court rulings.

Further work on the directive will be carried out in the European Parliament and the Council. If the directive is approved, it will take 24 months to transpose its provisions to the domestic law of member states.

Source: www.eur-lex.europa.eu

Legislative initiatives

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EU – New customs application forms At the beginning of January 2014, Commission Implementing Regulation (EC) No. 1352/2013 of 4 December 2013 establishing the forms provided for in Regulation (EU) No 608/2013 of the European Parliament and of the Council concerning customs enforcement of intellectual property rights came into force. In Regulation (EC) NO. 608/2013, conditions and procedures were set out concerning actions by customs authorities where goods suspected of infringing intellectual property rights are or should be subject to customs supervision or customs inspection. The implementing regulation establishes what should be contained in an application prepared by a right holder concerning the customs authorities taking action in a case of goods suspected of infringing intellectual property rights or in an application concerning an extension of such protection.

A completed form must contain the information necessary for the customs authorities to take further action. Apart from the data of the right holder and its authorized representatives in appointed EU member states, it is also important to specify what exclusive rights provide the basis for such action. In comparison with the forms currently in use, the amount of data required has been increased for certain entities, including those engaged in the production and marketing of original goods.

Source: www.eur-lex.europa.eu

6 Trade marks and unfair competition

EU – Weakening of the distinctiveness of a mark with an image of a wolf: ruling of the Court of Justice of the European UnionIn November 2013, the Court of Justice of the European Union issued a ruling in the case of the registration by Environmental Manufacturing LLP of a Community graphic mark consisting of the image of the head of a wolf (C-383/12).

The registration of the above designation was objected to by the company Société Elmar Wolf, in reference to a series of French and international trademarks registered for its benefit which incorporate the image of a wolf.

The OHIM established that those marks enjoy reputation in three EU member states.

At further stages of the proceedings, both the OHIM and the EU General Court held that the mark submitted could dilute the distinctive character of the earlier trademarks. Its use would cause Environmental Manufacturing LLP to take unfair advantage of the distinctive nature or reputation of the earlier trademarks. In Bulletin 2/2012, we reported on the EU General Court’s ruling in the matter in May 2012.

The case went to the EU Court of Justice as a result of a complaint filed by Environmental Manufacturing LLP. One of the claims raised by the plaintiff concerned an infringement of Article 8 par. 5 of Regulation No. 207/2009. That provision regulates the consequences of submitting an opposition in a situation where an earlier mark and a submitted mark are designated for identifying goods of different types but the earlier mark enjoys reputation. As a result of an objection, the submitted mark is not registered if it is identical or similar to the earlier mark, where the unjustified use of that trademark would result in undue benefits or would be harmful to the distinctiveness or reputation of the earlier trademark.

The Court of Justice held that, in the absence of appropriate evidence in the proceedings, it cannot be ascertained that there is harm to the distinctiveness of the earlier mark or likelihood of such harm as a consequence of the use of the later mark. That circumstance requires a demonstrated change in the market behavior of the average consumer with regard to a given category of goods or services, or a demonstration of the strong likelihood that such change will occur in the future. The existence of a likelihood of the occurrence of harm can be deduced from logical principles. However, such an analysis cannot be based on ordinary

suppositions. It is necessary to take account of accepted practice in a given commercial sector, as well as of all the circumstances of a given case. In the opinion of the Court of Justice, the OHIM Board of Appeal failed to carry out such an analysis, and, for this reason, the Court of Justice held that the ruling of the EU General Court was flawed.

For the above reasons, the case was referred back to the EU General Court for reconsideration.

Source: www.curia.europa.eu

EU – International agreements and EU law: a difficult relationship. Ruling of the Court of Justice of the European Union on the issue of the actual use of a trademarkThe proceeding before the Court of Justice in the case in question (C-445/12 P) concerned an appeal by Rivella International AG (“Rivella”) against a ruling by the EU General Court of 12 July 2012 in the case of Rivella versus the OHIM – Baskaya di Baskaya Alim (“Baskaya”). The course of the proceedings was as follows:

On 25 October 2007, Baskaya applied to the OHIM for registration of a Community trademark for certain food products.

Rivella submitted an opposition to that application, referring to the earlier

Case-Law

1/2014 7

registration of an international graphic trademark and arguing that the two marks are similar, which could mislead consumers in the meaning of Article 8 par. 1 letter b) of Regulation No. 40/94 of 20 December 1993 (currently Article 8 par. 1 letter b) of Regulation No. 207/2009 of 26 February 2009 on the Community Trade Mark).

During the proceedings, Rivella narrowed its opposition to the part of the international registration that concerned Germany, and presented documents on the use of the mark in Switzerland. Rivella referred to Article 5 par. 1 of the Convention between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks of 13 April 1892 (the “1892 Convention”). In accordance with that provision, the legal disadvantages which arise under the domestic law of the contracting parties due to the fact that a trademark or other commercial designation has not been used within the specified period of time are precluded if the use takes place in the territory of the other party.

On 8 February 2010, the Board of Appeal of the OHIM dismissed the opposition, arguing that the documents presented only demonstrated use in Switzerland. Pursuant to Article 42 par. 2 and 3 of the Regulation on the Community Trade Mark, the earlier trademark must actually be used in the member state in which protection has been granted.

Rivella appealed to the OHIM against the decision of the Opposition Division.

That appeal was dismissed by the OHIM Fourth Board of Appeal in a decision of 10 January 2011. The appellant filed an action for annulment of the contested decision to the EU General Court on 17 March 2011.

In Rivella’s opinion, it was not obliged to provide proof of actual use of the earlier trademark in Germany because, pursuant to Article 5 par. 1 of the 1892 Convention, the use of a trademark in Germany is admitted if that mark was used in Switzerland.

The EU Court dismissed Rivella’s action, ruling that, while the registration procedures for trademarks are set out in the domestic law of each member state, this is not so in the case of determining the territory for which the actual use of the earlier mark must be demonstrated. That issue is regulated by the provisions of EU law. In some situations, domestic law may apply; however, the Regulation on the Community Trade Mark provides for the parallel existence of domestic systems and the Community system for protecting trademarks.

Rivella appealed to the Court of Justice. Rivella sought to have set aside the contested EU General Court judgment based on the claim that the EU General Court infringed Article 42 par. 2 and 3 of the Regulation on the Community Trade Mark. In Rivella’s assessment, the above provision does not apply to trademarks that are the subject of an international registration causing effects in one member state.

The Court of Justice ruled that “trademarks registered under international agreements in force in a member state” in the meaning of Article 8 par. 2 letter a) subpt. (iii) of the Regulation on the Community Trade Mark are covered by the same system as

“trademarks registered in a member state” (Article 8 par. 2 letter a) subpt. (ii) of that act). Moreover, Rivella cannot question the guidelines derived by the General Court from the ruling of the Court of Justice of 13 September 2007 in the case of Il Ponte Finanziaria vs. OHIM in reference to the concept of the use of a trademark. In that ruling, the Court of Justice held that the domestic concept of protection of a trademark, under which an earlier trademark enjoys protection under domestic law even if the use of the mark cannot be demonstrated, cannot stand in the way of the registration of a Community trademark. The Court of Justice ruled that the General Court did not infringe the law when it ruled that the concept of the use of a Community trademark within EU territory had been exhaustively regulated by EU law itself. Finally, the principle of the uniform nature of a trademark allows for exceptions, such as those foreseen in the Regulation on the Community Trade Mark. In particular, Article 111 par. 1 of the Regulation allows the owner of an earlier right which only applies to a particular locality oppose to the use of a Community trademark in the territory for which that right is protected, in so far as the law of the member state concerned so permits. As a result, the General Court correctly stated, in point 36 of the contested ruling, that the principle of the uniform nature is not absolutely binding.

The Court of Justice dismissed Rivella’s appeal in its entirety.

Source: www.curia.europa.eu

8 Trade marks and unfair competition

EU – Could consumers be misled? “SUPERGLUE” and “SUPER GLUE”: ruling of the EU General CourtOn 17 September 2008, a company operating under the business name Przedsiębiorstwo Handlowe Medox Lepiarz Jarosław Lepiarz Alicja sp. j. filed an application for registration of the graphic mark shown below as a Community trademark.

The application was made for goods in classes 1 and 16 of the Nice classification, namely for goods including glues for stationery or household purposes, glues other than for stationery and household purposes, and preparations for gluing.

On 2 April 2009, the company Henkel Corp., as an intervener in the case, filed an opposition to the registration of the trademark submitted (as shown in the illustration above) for all of the goods listed in the application. Henkel Corp. based its opposition on the existence of the word trademark “SUPERGLUE” submitted and registered on 1 December 1981 in the Benelux countries. The OHIM Opposition Division found in favor of the objection for certain goods from the classes the application included, ruling that the two designations are “to a certain extent similar”. The applicant company, Przedsiębiorstwo Handlowe Medox Lepiarz Jarosław Lepiarz Alicja sp. j. appealed against the decision of the Opposition

Division, yet the decision was upheld by the OHIM Fourth Board of Appeal. The Board of Appeal concluded that the disputed goods are identical, because of the identical nature of their packaging and the circumstance that the description “adhesive substances” that the earlier trademark refers to various goods bearing the mark submitted by the applicant company. It was shown that the dominant elements of the trademark submitted, other than the descriptive element, are the words “super” and “glue”, divided by a black point. The mark is, thus, highly similar visually to the earlier mark. The Board of Appeal reached the conclusion that there was a likelihood of consumers being misled, despite the limited distinctiveness of the earlier trademark, due to the identical nature of the disputed goods and because of the strong visual and phonetic similarity of the two marks.

The case was considered by the EU General Court (T-591/11), and the appeal of Przedsiębiorstwo Handlowe Medox Lepiarz Jarosław Lepiarz Alicja sp. j. was dismissed. The General Court ruled that the Board of Appeal had correctly ruled on the issue of the identical nature of the goods involved. The General Court also dealt with the aspects of visual, phonetic and conceptual similarity, and on the likelihood of consumers being misled. Given the similarity of the dominant element of the trademark submitted and the word that the earlier trademark comprises, there is a strong visual similarity between the conflicting marks. On the phonetic and conceptual levels, a similarity between the contested marks also arises. The EU General Court also confirmed, as had the Board of Appeal, that in this case there is also a likelihood of consumers being misled.

Source: www.curia.europa.eu

EU – “FOREVER” and “4EVER” are similar marks: ruling of the EU General Court On 16 January 2014, the EU General Court handed down a ruling (T-528/11) on dismissing a complaint by Aloe Vera of America, Inc. (“Aloe Vera”) against a decision by the OHIM Fourth Board of Appeal on refusing to register a trademark.

In 2006, the applicant submitted the following graphic Community trademark to the OHIM for goods from class 32 of the Nice Classification (aloe vera drinks, aloe vera gel beverages, aloe vera pulp; mixtures of aloe vera juice with fruit juices; bottled spring water):

In 2007, the company Diviril – Distribuidora de Viveres do Ribatejo, Lda  (later Detimos – Gestão Imobiliária, SA, “Detimos”) filed an opposition to that registration, based on an earlier Portuguese graphic trademark (297697) used to identify goods from within the same class (juices, lime juice – solely for export):

1/2014 9

During the proceedings, the applicant demanded, through the agency of the OHIM, that Detimos present proof of the actual use of the earlier trademark. Detimos presented a collection of invoices in response. In 2010, the Opposition Division of the OHIM upheld the opposition and rejected the application for registration of the Community trademark. Aloe Vera lodged an appeal against that decision, which was also dismissed.

The OHIM Fourth Board of Appeal established that the relevant public for the products consists of average Portuguese consumers. It also found that Detimos had sufficiently proven the use of the earlier mark in Portugal over the five-year period considered. The goods in question were deemed as partly identical and partly similar. The Board of Appeal found that the conflicting marks had a low degree of visual similarity, but were identical phonetically for some of the relevant public, who has a certain familiarity with the English language, and of average similarity for the rest of the relevant public. On the conceptual level, the conflicting trademarks are identical for that part of the relevant public who know English, and cannot be compared for the rest of that group. Summarizing the above, the Board of Appeal held that there is a likelihood of consumers being misled, and the Court agreed with those conclusions.

Aloe Vera argued before the Court that the invoices presented by Detimos were not sufficient to prove the actual use of the earlier trademark. In evaluating this issue, the Court considered a number of factors and also referred to existing case law within this scope. Primarily, the Court drew attention to the fact that the small number

of invoices provided (27, including 12 from the period in question) does not affect the assessment of the actual use of the mark. The invoices presented confirmation that the products were sold to various customers on the Portuguese market and show the earlier trademark written in an ordinary font. Therefore, despite the small number of sales, it must be acknowledged that the beverages were offered externally, and it was not simply a case of symbolic sales only for the purpose of maintaining the mark.

A further claim of Aloe Vera against the decision of the Board of Appeal concerned the correctness of the phonetic comparison between the two marks. In the applicant’s opinion, this was based only on the impression made on English-speaking consumers. In accordance with established case law, a likelihood of consumers being misled exists if the relevant public could believe that given goods or services come from the same business or from businesses having commercial ties with each other. The Court agreed with the Board of Appeal, which held that the relevant public consisted of Portuguese consumers exercising an average level of attention. The authority then held that the goods being considered are partly identical and partly similar, which the applicant did not dispute.

In respect of the visual comparison, the Board of Appeal stated that there was a low degree of similarity between the marks, whereas Aloe Vera maintained that they are not similar at all to each other on that level. The Court held that the marks contain the common letters “e”, “v”, “e”, and “r”, in the same order, differing in the font used to present the word element in each mark, with a delicately stylized form of the letter “r” in the earlier mark, and the presence of

the digit “4” at the beginning of the earlier mark and the image of a predatory bird in the upper part of the trademark applied for and the presence at the beginning of the word element of that mark of the letters “f”, “o” and “r”, leading to the formation, together with the other letters of the word element, of the English word “forever”. The graphic element of the predatory bird was not acknowledged in this case as being fantastic in nature. What is more, the Board of Appeal stated that where a mark contains a word element the average consumer will not focus on the graphic element.

With regard to the phonetic comparison, the Board of Appeal noted that part of the relevant public who knows English will pronounce both marks identically, while that part which does not speak English will pronounce them somewhat differently: “CU/A/TRO/E/VER” and “FO/RE/VER”. In the first case, the marks must be deemed identical, and in the second only averagely similar. Aloe Vera argued, however, that an evaluation of the phonetic similarity should focus on the issue of how the marks will be perceived by Portuguese consumers who read the first mark as “QUATROEVER”. The Court, however, ruled in favor of the objection, that many Portuguese consumers know English well enough to understand both marks. The Court also held that, when connected with an English word, the digit “4” will be normally read in English and understood as a reference to the preposition “for”, since this practice is common in text messaging, internet communication, e-mail, and on internet forums and blogs.

In respect of the conceptual similarity, the Board of Appeal found that “…the conceptual comparison depends on what consumers are considered: consumers who

10 Trade marks and unfair competition

know English will perceive the same idea in each of the marks: “without end, eternally” (which would mean that the marks are conceptually identical), while consumers who do not speak English will not associate the two marks with each other on the conceptual level”.

Source: www.curia.europa.eu

EU – Registration of a trademark as evidence of public availability of a design:ruling of the EU General CourtAn interesting ruling was issued by the EU General Court on 7 November 2013 in the case of an action by Danuta Budziewska against a decision by the OHIM of 23 September 2011 (case R 1137/2010-3), in the case of a dispute over the invalidation of a right to a design between the plaintiff and Puma AG Rudolf Dassler Sport.

The proceeding before the OHIM began when Danuta Budziewska submitted an application for registration of a Community design on the basis of Council Regulation (EC) No. 6/2002 of 12 December 2001 on Community Designs (hereinafter the “Regulation on Designs”). The design was to be registered for products from class 32 (graphic symbols and logos, designs, ornamentation) in accordance with the Agreement establishing an international classification of industrial designs signed in Locarno on 8 October 1968 (the “Locarno Agreement”). The Community design submitted, which shows a jumping cat, was registered on 2 May 2007.

On 26 February 2009, Puma AG Rudolf Dassler Sport (in later proceedings before the EU General Court, Puma SE acted as an intervening party) (“Puma”) moved for invalidation of the right to that design on the basis of Article 52 of the Regulation on Designs. Puma justified its motion by the design’s absence of novelty and individual character (Article 25 par. 1 letter b of the Regulation on Designs) and by the use in the contested design of a distinguishing mark belonging to another party (Article 25 par.1 letter e of the Regulation on Designs). Puma referred to an earlier design disclosed in a trademark registered in 1970.

The OHIM Cancellation Division found in favour of Puma’s motion and invalidated the design by a decision of 23 April 2010. Danuta Budziewska appealed against that decision. In a decision of 23 September 2011, the OHIM Third Board of Appeal dismissed the appeal, stating primarily that the design was devoid of individual character.

Danuta Budziewska applied to the EU General Court for an amendment of the contested decision and for the decision of the Cancellation Division of 23 April 2010 to be overturned.

In analyzing the legal status, the EU General Court referred to Article 4 par. 1 of the Regulation on Designs, which emphasizes that a design is protected as a Community design within the scope in which it is new and possesses individual character.

Pursuant to Article 6 par. 1 letter b) of the Regulation on Designs, it is deemed that a registered design possesses individual character if the overall impression it makes on an informed user differs from the impression made on such a user by a design that was publicly available before the date on which the design in question was submitted for registration, or, if priority was reserved, before the date of priority. Article 6 par. 2 of that Regulation on Designs adds that, when evaluating individual character, account is taken of the degree of creative freedom used in preparing the design.

The appellant argued that even if – as the Board of Appeal found – the elements to which Puma referred existed prior to its submission of the design, those earlier rights would constitute trademarks, and not designs made publicly available in the meaning of Article 6 par. 1 letter b) of Regulation No. 6/2002. The EU General Court had no doubt, however, that the international registration of Puma’s design in the form of a trademark constitutes evidence of the public availability of that design.

The appellant maintained that the contested design presents a “domestic cat in the

1/2014 11

act of landing on its proverbial four feet”, and not a wild puma in the act of leaping upwards, as in the case of the Puma trademarks. The Court held that, from the point of view of an informed user of logos who is aware of the reputation of the Puma design, the overall impression created by the disputed design does not differ from that made by the earlier design, for the overall impression made by both designs results from the silhouette of an animal from the cat family, seen in profile and facing leftwards, in the act of jumping, with its tail raised, presented in a light color on a dark background.

In the view of the Court, the difference between the designs (including the position of the ears, paws and tails of the animals), even if perceptible to an informed user of logos, are not distinct enough to negate the overall assessment of similarity made by the Board of Appeal.

The Court held that the ruling of the OHIM Board of Appeal had not been made in infringement of the law and dismissed the appeal in its entirety.

Source: www.curia.europa.eu

EU – No similarity between tigers: decision of the Office for Harmonization of the Internal Market in the case of the trademark “T.G.R. ENERGY DRINK”A likelihood of consumers being misled exists where public opinion may be convinced that given goods bearing

specific trademarks come from the same business or businesses that have commercial ties with each other. Thus argued the Cancellation Division of the OHIM in a decision of 25 November 2013 (No. 6041C), pursuant to which a motion for invalidation of the trademark T.G.R. ENERGY DRINK was dismissed (exclusive right No. 5 689 237).

That motion was submitted by boxer Dariusz “Tiger” Michalczewski, the right holder to the earlier Community word-graphic trademark “Dariusz Tiger Michalczewski” and to the Polish graphic marks:

The word trademark “T.G.R. ENERGY DRINK”, which the boxer sought to have invalidated, was submitted by the company Foodcare sp. z o.o., with which Michalczewski collaborated in the years 2003-2010 concerning promotional activities for “TIGER” energy drinks.

In his motion, Michalczewski referred in particular to the existence of the earlier marks and to the likelihood of consumers

being misled by the coexistence of his earlier trademarks and the contested trademark (Article 53 par. 1 letter a) read together with Article 8 par. 3 of Regulation No. 207/2009 of 26 February 2009 on the Community Trade Mark (Journal of Laws 78 p. 1)).

In the OHIM’s assessment, a likelihood of consumers being misled exists when the impression is created by the marks that certain goods bearing specific trademarks come from the same business or, depending on the case, from businesses that have economic ties with each other. Whether a likelihood of consumers being misled arises depends on an overall evaluation of several interdependent factors. According to the OHIM, those factors include:

a) The similarity of the goods or services.

The trademarks belonging to Dariusz Michalczewski (Community trademark No. 1,219,73 and Polish trademark R-191973) are registered for class 32 (waters, non-alcoholic drinks, juices). The case is similar for the goods submitted by Foodcare sp. z o.o., against which Dariusz Michalczewski submitted an opposition.

b) The similarity of the marks.

The OHIM ruled that there is no similarity between the above graphic marks, the mark “Dariusz Tiger Michalczewski” and the mark “T.G.R. ENERGY DRINK”. They are not similar visually, phonetically, or conceptually. On the conceptual level, there is no similarity between the English word ”tiger”, which has no meaning in Polish, the man’s first and last name of Slavonic origin, and the

12 Trade marks and unfair competition

English term ”energy drink”.

c) The distinctiveness of the earlier mark.

In the OHIM’s opinion, the distinctiveness of the earlier mark is of an average degree. The fact that the applicant, whose first and last name and nickname are used in the marks, is a famous boxer does not provide a basis for arguing that the marks concerned are highly distinctive due to use or reputation.

d) The distinguishing and dominant elements of the conflicting trademarks.

In the OHIM’s opinion, a comparison of the marks must be made on the basis of the overall impression they make. The OHIM held that the contested trademark does not contain any elements that could be deemed as clearly dominant (drawing attention to themselves more than other elements).

e) The relevant public.

In the OHIM’s assessment, the relevant public for the products bearing the marks is all consumers.

In the view of the OHIM, it is highly unlikely that an average consumer who does not remember the marks precisely would find any relationship at all between them. Therefore, there is no risk of confusion between the earlier registered marks and the objected mark. Dariusz Michalczewski’s motion for invalidation of the mark submitted by Foodcare sp. z o.o. was dismissed in its entirety.

Source: www.oami.europa.eu

PL – Cash premiums and logistics fees as an act of unfair competition: ruling of the Supreme CourtOn 8 November 2013, the Supreme Court dismissed a cassation appeal in a case between the Lodz clothing company Redan S.A. and the hypermarket chain Auchan Polska Sp. z o.o. over a return of premiums and logistics fees infringing Article 15 par. 1 pt. 4 of the Act on Combating Unfair Competition (case file No. I CSK 46/13).

Auchan had concluded an agreement with Redan containing provisions on cash premiums and logistics fees. In the case where the amount of sales of textiles offered by the claimant to Auchan exceeded the amount specified in the agreement, the claimant was obliged to grant after-sales discounts. The amount above which premiums were to be awarded was established at a turnover of 10,000 zlotys, which, in the opinion of the court, was a symbolic amount for the purpose of circumventing the provisions prohibiting additional fees. What is more, the defendant imposed logistics fees on Redan for distributing its products to individual hypermarkets. The clothing company was responsible for delivering all of the goods ordered to Auchan’s central warehouse, yet also had to cover the costs of further distribution of the goods to shops; this, in the opinion of the Court, constitutes an internal matter of the commercial chain.

The Supreme Court formulated the hypothesis that “it is an act of unfair competition to hinder other business’ access to the market, in particular by collecting

fees other than a commercial margin for accepting goods for sale. Yet whether a given discount constitutes an inadmissible fee which can be deemed an act of unfair competition depends on the circumstances of a specific case”. In every case, an individual assessment of the events should be made, because deeming any benefits as undue can only result from their nature and from the purpose of the agreement in which they are established.

The Supreme Court acknowledged the claims of the claimant, thereby upholding what had been determined in all previous instances and awarded the claimant the amount it sought, almost one-million zlotys together with interest, for inadmissible premiums and logistics fees.

Source: www.rp.pl, Legal Information System LEX No. 1399866

PL – The use of foreign words in a trademark: comments contained in a ruling of the Supreme Administrative Court on an attempt to invalidate the protective right to the trademark “BIEN DONG”On 11 December 2013, the Supreme Administrative Court (SAC) issued a legally binding ruling in case II CSK 1406/12, dismissing a cassation appeal which raised fundamental issues concerning an attempt to invalidate the word-graphic trademark “BIEN DONG”, R-204010.

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The plaintiff was of the opinion that the contested trademark is a descriptive designation because, when translated from Vietnamese into Polish, it means “South China Sea”. That name is the official name of a geographic region used in Vietnam and, as such, should remain in free circulation. The party entitled to the mark did not agree with that argument, claiming that the expression “BIEN DONG” is a term that is totally abstract for the average Polish consumer of services from classes 36, 39, and 43 of the Nice classification, including the travel services for which the mark was registered.

In the opinion of the Polish Patent Office (PPO), the first authority to consider the case, the contested mark “BIEN DONG” is a fantasy designation in relation to the services it identifies. The combination of two words that are unknown in Polish gives rise to an impression that is of a fantastical nature phonetically, visually, and conceptually. The PPO emphasized that what is important is how the mark is perceived by the average market participant, who will not see the mark as a Vietnamese place name meaning South China Sea. Further, the party questioning the registration did not provide any evidence that the average consumer would understand the meaning of the words appearing in the contested designation.

The PPO further referred to a ruling by the Court of Justice of 9 March 2006 in case C-421/04, in which the Court held that “Article 3(1)(b) and (c) of First Council

Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks does not preclude the registration in a Member State, as a national trademark of a term borrowed from the language of another Member State in which it is devoid of distinctive character or descriptive of the goods or services in respect of which registration is sought, unless the relevant parties in the Member State in which registration is sought are capable of identifying the meaning of the term”.

The case came up on the notice board of the Provincial Administrative Court (PAC) in Warsaw, which in a ruling of 13 May 2011 (case file No. VI SA/Wa 396/11), dismissed the complaint, not concurring with the arguments of the plaintiff that consumers of the services are solely persons of Vietnamese origin. For the average consumer on the Polish market, “BIEN DONG” is not descriptive in nature.

The plaintiff then lodged a cassation appeal, which in the opinion of the SAC, was not worthy of consideration, since the charges it contained were groundless. It should be emphasized that the burden of proving the grounds for invalidation rests with the plaintiff as the initiator of the objection. The plaintiff in this case did not present any evidence during the administrative proceeding showing that the services bearing the trademark “BIEN DONG” are only used by market participants who are of Vietnamese origin. Further, the plaintiff did not produce any evidence to show that the average consumer perceiving the mark would understand the meaning of the Vietnamese words as South China Sea.

The SAC shared the stance of the both PAC and the PPO that the average consumer

of a registered domestic trademark on the Polish market is a Polish consumer. Therefore, it cannot be expected that the average consumer could perceive the contested mark as a Vietnamese place name. It is difficult to imagine that consumers of the services are only persons of Vietnamese origin. In the opinion of the SAC, the combination of two words “BIEN” and “DONG”, unknown in Polish, means that we are dealing with an expression which is fantastical in nature, phonetically (specific pronunciation), conceptually (no meaning in Polish), and visually (containing marks typical of oriental languages). The disputed trademark, therefore, has both abstract distinctiveness and specific distinctiveness. It is not descriptive of the wide range of services for which it was registered.

Source: www.oami.europa.eu

PL – The correctness of the control of a decision by the Polish Patent Office: the Supreme Administrative Court in the case of a protective right granted for the designation “EKOFLORA”On 3 December 2013, the Supreme Administrative Court (SAC) issued a ruling (case file No. GSK 1157/12) overturning a contested ruling of the Provincial Administrative Court (PAC), and referred the case back for reconsideration. The proceeding before the PAC concerned a complaint by the company E. sp. z o.o. with its registered office in S. against a decision of the Polish Patent Office (PPO) on refusing to grant a protective right to a trademark.

14 Trade marks and unfair competition

On 2 June 2009, the company E. sp. z o.o. submitted the word trademark “EKOFLORA” for registration. The mark is designated for goods in class 31, covering in particular such products as flower bulbs, natural flowers, dried flowers for decoration, seeds, seeds for animal feed, fresh garden herbs, bushes, saplings, and hay.

The PPO refused to grant a protective right to the word designation “EKOFLORA” on the grounds that the designation submitted is not sufficiently distinctive, since it merely constitutes a verbal, direct indication of the goods it is used to describe. The PPO applied Article 129 par. 1 pt. 2 and Article 129 par. 2 of the Industrial Property Law (the absence of sufficient distinctiveness).

In a motion for reconsideration of the case, the company E. sp. z o.o. submitted materials to the PPO confirming that the designation had sufficient distinctiveness. These included invoices, advertising materials, and financial reports. In this way, the company showed that it had actually and consistently used the designation submitted. E. sp. z o.o. also argued that its motion was justified because the company has been active on the domestic flower market for years. It was established in 1994 and has been identifying its products with the designation “EKOFLORA” ever since that time. It also has retail outlets that actively sell goods bearing the mark “EKOFLORA”. In the motion, maintaining the stance that the designation submitted has initial distinctiveness, E. sp. z o.o. also showed that there are grounds for accepting that the designation, being in use for years, has acquired secondary distinctiveness. The company presented evidence, which in its opinion, confirmed this position.

In the decision about which E. sp. z o.o. complained to the PAC, the PPO made no reference at all to the documents submitted, nor to the claims in the motion that the designation submitted met the prerequisites specified in Article 130 second sentence of the Industrial Property Law (acquisition of distinctiveness as a result of use). In verifying that decision, the PAC did not evaluate whether the omission of that evidence and those claims of E. sp. z o.o. could have been important to the result of the case, but it did go beyond what had been established by the PPO, making its own determinations as to whether it was possible for the designation “EKOFLORA” to have acquired distinctiveness.

Furthermore, the PPO had pointed to the inadmissibility of registering marks using the designation “eko” resulting from Council Regulation (EC) No. 834/2007 of 28 June 2007 on organic production and labelling of organic products and repealing Regulation (EEC) No. 2092/91 (the “Regulation on Organic Production”). Pursuant to Article 23 par. 1 read together with Article 23 par. 2 of that regulation, the terms “bio” and “eco” may only be applied to products created using organic methods, unless they are not used in relation to agricultural products in food or animal feed, or are clearly in no way related to organic production.

In accepting that the PPO was correct in holding that the Regulation on Organic Production applies in the case, the PAC did not justify why it did so. It did not assess whether the products of the company E. sp. z o.o. are actually covered by the Regulation on Organic Production. This is important to the case. Pursuant to Article 131 par. 1 pt. 3 of the Industrial Property Law, the possibility of consumers being misled constitutes

a negative prerequisite for granting protective rights to a designation.

The case will be considered again by the PAC.

Source: www.orzeczenia.nsa.gov.pl

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FR – The two leading French online private sellers, Vente-privee.com1 and Showroomprive.com2, opened fire against each other with regards to protection of their respective trademarks. Alexandra Bernard, Claude-Etienne Armingaud

The earlier is the owner of the French and Community semi-figurative trademark „vente-privee.com”, underlined with a pink line drawn in diagonal, enriched by two pink butterflies.

The latter is the owner of the French trademark „showroomprive.com” and expected the registration of a community semi-figurative trademark „showroomprive.com” enhanced with some stylized and coloured elements.

However, on August 1, 2012, the Office for the Harmonisation of the Internal Market (herein, “OHIM”) refused such application for „SHOWROOMPRIVE.COM” on the ground that the trademark was not distinctive enough and, much to the contrary, was descriptive for the targeted goods and services.

At the same time, on September 5, 2012, Showroomprive.com assigned before the Paris first instance Court, its competitor, Vente-privee.com, in order to invalidate the „vente-privee.com” trademark for lack of distinctiveness. This trademark had been registered since October 14, 2004 without any complains from ShowroomPrive.com or any other third party.

The first instance Court welcomed Showroomprive.com’s request and decided that „the terms ‘venteprivee.com’ was, at the time of the application date, descriptive of the company’s business activity for every consumer wishing to buy online discounted products; and thus such use was necessary to designate its private sales activity.” In addition, the Paris Court highlighted that the trademark had not acquired any „distinctiveness through its use, thus enabling the term to take ownership of generic names, when such names must remain available for all the economic actors from a given sector.”

Meanwhile, on December 6t, 2013, in another law suit, Vente-privee.com assigned the owner of similar domain names (namely vente-priveee.com, ventprivee.com, venteprives.com) on the basis of its cybersquatting activities. The French first instance Court highlighted that the semi-figurative „vente-privée.com” trademark had to be considered as a well-known trademark. Indeed, in this case, the Court decided that the „vente-privée.com” trademark had a strong reputation due to the fact that a significant part of the relevant public made a connection between the trademark and its associated goods and services.

In conclusion, the decision concerning the semi-figurative trademark should not affect the word trademark „SHOWROOMPRIVE.COM” registered in 2007 by the OHIM. Nevertheless, we can legally wonder about the consequences in case of further contestation regarding a word mark and a close watch should be kept on any follow up evolutions.

1) French for “private sales”2) French for “private showroom”

Other issues

16 Trade marks and unfair competition

It is worth using the ® symbol beside a registered trademark3

Michał Ziółkowski

One of the entitlements resulting from a protective right to a trademark is the possibility of using a symbol attesting to the registration of the mark in trade. The symbol ® derives from the English word “registered”, and is universally recognized in international commerce. A right, not an obligation

The use of the ® symbol is not compulsory. It is an entitlement resulting from Article 151 of the Industrial Property Law Act of 30 June 2000 (hereinafter the “IPL”), pursuant to which an entitled party may indicate that its trademark has been registered by placing the letter “R” inscribed in a circle in the vicinity of the mark. In practice, the ® symbol is found in the upper right corner of a trademark, and is usually written in a smaller font than the mark itself. Consumer and competitor awareness

The symbol is used as both information and a guarantee. A purchaser of goods identified with a trademark of a business and with the ® symbol is aware that the producer of the goods has obtained particular protection on the basis of the provisions of the IPL, and that the goods bearing that symbol have a hallmark of legality. The use of the ® symbol by a trademark may mean that products bearing the symbol are perceived by consumers as being of high quality. An aware consumer is willing to pay more for a product that he or she believes to derive from a legal source and from a producer whose position on the market is well established.

The use of the ® symbol in commerce is also preventive in nature. First of all, it constitutes a kind of warning to other businesses. Every market participant is aware that a trademark bearing the symbol is protected by law. By referring to the register of trademarks, anyone can easily obtain information on when the mark became protected and who has the right to the mark.

Under a ruling by the Court of Appeal in Krakow on 18 March 2008 (case file No. I ACa 149/08), the purpose of using the ® symbol is to announce that the trademark bearing the symbol enjoys protection. No extraordinary rights are associated with the symbol to strengthen the market position of the goods identified by the trademark. The symbol contains no information on the product itself, but constitutes a signal to any entities that would like to infringe the protective rights to the trademark that, in the case of such an infringement, the entitled party will be able to bring certain claims against the infringing party.

Abuse penalized

The use of the ® symbol is prohibited on designations for which the Polish Patent Office (PPO) has not granted a protective right. This concerns designations which (i) were submitted to the PPO but for which no protective right was granted, (ii) were submitted to the PPO and the application proceeding is pending, (iii) are no longer protected due to the invalidation or expiry of the protective right, or (iv) are used in trade as a trademark, but where the entity using the mark did not apply for protection.

The unlawful use of the ® symbol is a misdemeanor that can only be committed willfully with a direct or eventual intention. Pursuant to Article 308 IPL, an entity that markets goods bearing a trademark together with the symbol where this is intended to cause the mistaken supposition that the entity enjoys protection is subject to a fine. It is irrelevant whether the perpetrator succeeded in misleading buyers into believing that the goods concerned are protected.

3) This article appeared in the daily newspaper Rzeczpospolita on 5 March 2014 under the title: “It’s worth using the ® symbol”

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The aim of the protection resulting from Article 308 IPL is the guarantee of a transparent market. A customer to which goods are addressed must not be misled with regard to the existence of actual protection of the trademark. The ® symbol in EU commerce

The issue of the use of the ® symbol has not been regulated in EU trademark law by either directives or regulations, but has been left to be determined by each member state. Because of the free movement of goods within the EU, this subject was considered by the EU Court of Justice (case file No. C-238/89 Pall Corp. vs. P.J. Dahlhausen & Co.). The result of that ruling was the establishment of the view that the ® symbol may be used beside a trademark on goods found in commercial trading within the EU if the trademark is protected in at least one member state. Since the free movement of goods only concerns trade among EU member states, the issue of imports of goods from outside the EU remains to be considered. Other symbols

In countries in which industrial property law permits the protection of unregistered trademarks (including the USA), the symbol TM is also widely used. It is an abbreviation of the term “trade mark”. The symbol SM is also used in commerce, and is an abbreviation of the term “service mark”, where the mark refers to services. In Great Britain, it is permissible to use the symbol RTM instead of ®.

Obtaining a protective right to a trademark and using the ® symbol can be helpful in developing a brand and avoiding it becoming degenerated. The use of the ® symbol is not an obligation, but an entitlement of the entity, which has obtained formal protection for a certain distinctive designation. That use is prohibited for entities that cannot demonstrate that they enjoy legal protection.

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.

Information on the activities of the K&L Gates Warsaw intellectual property team

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This publication is for information purposes only and should not be used in order to make binding decisions. The topics raised herein are the result of a subjective selection made by the authors of the bulletin, and do not constitute an exhaustive discussion of all issues. The information contained herein only concerns selected aspects of the law. The content of the bulletin cannot be treated as legal advice.

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Oskar Tułodziecki

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Marta Wysokińska

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Michał Ziółkowski

Michal.Ziolkowski@klgates.com

Alexandra Bernard

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Claude-Etienne Armingaud

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