The current  use of social networking sites still on the increase raises more and more questions as regards personal data protection. It refers not only to Facebook, but to numerous other popular sites as well. Most of the companies that run social networking sites are based outside the European Union, hence  data processing takes place outside  as well. According to the current text of Directive 95/46/EC, such a conduct is generally not covered by the European personal data protection law (if the data is not processed within the EU) and therefore these companies have only to abide by laws  of the countries where the data is actually processed. Usually such laws are far less strict for data processing enterprises to the European ones, which may be detrimental to EU citizens, generally used to higher standards of protection.

 The plan of the European Commission has  to change this situation and  strengthen protection of consumers’ personal data in Europe. The outcome of those efforts is supposed to be a new law on data protection that would replace a slightly outdated Directive 95/46/EC, which does not fit sufficiently to the current digitalized world anymore. The new draft is hoped to be announced in early 2012. The Commission has not made it  explicit yet, whether it will take a form of a regulation or of a directive, however it is declared to be uniform and not subject to 27 different interpretations.

The new law is planned to cover new aspects of personal data protection that are arising due to modern technology and globalization.  Precise points of the reform may be so far derived only from some press releases such as a recent Viviane Redding’s speech given at a conference “New frontiers for Social Media Marketing” (you may find the full text here). t The reform may include :

-          Resignation from a general requirement for companies to notify data processing to data protection authorities;

-          Covering by European law all companies that operate within the European Union (even if they process personal data in other places of the world);

-          Facility and consistency for entreprises – introduction of one law applicable and one single authority responsible for companies operating in several Member States;

-          Customer protection enhancement: creation of a right to be forgotten (to have all data on oneself deleted), creating obligations for entrepreneurs to specify, what personal data will be collected,  obligation for companies to inform customers about incidents of stealing/leaking of their personal data.

 The Commission until today has not published any draft of the law that is planned to be introduced. We shall watch and come back to this topic once we see the long awaited draft of the law to check whether it will keep all of the mentioned objectives.

 For more information from the European Commission: click here and here.

Author: Rafal Kloczko

For any questions on this article contact: Rafal Kloczko

The latest legal monograph by Grzegorz Rząsa explores the problem of the cassation appeal which is a remedy against verdicts issued by Voivodeship Administrative Court, and in principle, decisions closing proceedings. The subject of the work is an analysis of the institution of invalidity of court-administrative proceedings understood as a basis of the cassation appeal.  

Invalidity of proceedings belongs to the most essential institutions of two-instance court-administrative proceedings. The book contains a thorough analysis of causes of invalidity  most frequently formulated  in cassation appeals, such as an offence against powers of a representative and as regards panel of the court, and –  most importantly –  an offence against the right to be heard.

A vast case-law quoted in this publication makes it particularly interesting for practitioners and useful for solving day-to-day problems of their clients. (source: C.H. Beck Publishing House)

 Polish life-science-related patent litigation has been on the increase for some years. In this time the courts have tackled a number of substantive legal issues such as equivalents, contributory infringement, validity problems, damages for wrongful preliminary injunctions, etc. The outcome of proceedings is now much more predictable than 10 years ago. The enforcement system is longer inexperienced and would better be termed in transmission, with some aspects quite advanced and others lacking. The area in which significant progress is still required is length of proceedings. Whereas trade mark or unfair competition cases tend to proceed more smoothly than a decade ago, patent enforcement with its reliance on court-appointed experts and complex factual-technical patterns still takes a while. The outcome of a large market and lengthy main action proceedings is the increased importance of preliminary measures.

 Contrary to the main action, preliminary measures are imposed quite swiftly. There is, however, a great specificity to the way they are handled making the factors relevant quite different from main EU jurisdictions. To play the patent litigation landscape it is important to understand these factors in order to use them to your advantage or minimize the negative impact they can have on you.

 This article is not intended to fully analyze particular provisions on preliminary injunctions under the Polish law. The purpose of this article is rather to indicate some general directions which can be expected on the part of Polish judicial bodies, when requesting injunction for the duration of the patent infringement proceedings.

 General issues

 The statutory criteria for obtaining a PI order are: (a) likelihood of claims being secured and (b) legal interest in obtaining a preliminary injunction. The level of proof in PI proceedings is much lower than in case of the main proceedings. The party seeking infringement is only obliged to make the facts supporting a PI action probable.

 A PI motion can be filed and achieved during the pending trial or prior to filing the main action. A motion should be decided promptly, not later than within 7 days of its submission. The above terms are not binding on a court, however, they are usually abided by judges and decisions are issued in a matter of days, sometimes weeks.

 Generally, preliminary injunction motions in Poland are decided ex parte. In some cases, it can happen that a judge handling the matter will organize a hearing instead of deciding the motion at an in camera session (e.g. it can happen when a judge has serious doubts with respect to facts supporting the injunction request). These are, however, relatively rare situations.

Once a decision on preliminary injunction is issued, parties to the proceedings are entitled to appeal the court’s decision to the court of higher instance. The deadline for filing the appeal is 7 days from official receipt of the injunction order. In the appeal the defendant party can also apply for a stay of enforcement of the court decision.

 Where the preliminary injunction order is granted but the claims are subsequently dismissed or the entitled party decides to withdraw the court action before the verdict, the alleged infringer is entitled to demand compensation for the damages arising from the preliminary injunction granted.

 Expert opinion

 One of the main evidence sources to be used in PI proceedings is an expert opinion (usually even more than one) making probable the patent infringement. Judges in Poland have no technical background so that they are unable to assess the likelihood of patent infringement on their own. For that reason, in the vast majority of cases they defer to private expert opinion filed with the motion, only assessing whether the opinion appears reliable.

 As it was mentioned above, the preliminary injunction proceedings are usually ex-parte. However, sometimes it happens that the defendant becomes aware of the PI motion filed (usually by systematic monitoring of court dockets) and manages to take part in the proceedings. In such a situation, the defendant can present the court a contrary expert opinion confirming lack of patent infringement. The fact that a decision is usually taken at an in camera session does not mean that the party against which the motion is directed cannot intervene in the proceedings. This only means that a judge will not communicate the defendant party that such a motion has been filed. However, if the obliged party manages to find out that the proceedings are pending, it can produce its own submission and evidence to refute the motion and the judge will be obliged to consider them.

 Tackling-the-“two contradictory opinions” problem

 The above tactics usually decreases the chances of obtaining a PI order. In the situation where a court has “two contrary opinions” which it cannot reconcile, it usually comes to the conclusion that this raises sufficient doubts and the claims are not made sufficiently justified to use such a far-reaching remedy like a preliminary injunction. An analogous approach is often taken by courts of higher instance, at the stage of appeal from the PI, which also do not analyze the technical aspect of infringement case in details. When faced with two contradictory opinions (eg. on the issue of equivalency) the patentee has to be extremely diligent in choosing the arguments and the strategic approach to still prevail. Filing further opinions usually doesn’t work, resulting in similar response and a subsequent inflation of the opinions, which the courts have been known to indicate as adding to their dubts. It is better for the patentee to try and keep things simple attempting to disqualify the adverse opinion on formal or legal (wrong question asked) grounds.

 The alleged infringer

 Another difficulty to be taken into account is the necessity to determine who a PI motion should be directed against. This can be easily illustrated by the example of pharmaceutical patent disputes.

 It is common that pharmaceutical concerns have complex organizational structures which divide regulatory, marketing and sales competences among different, legally separated, entities. This structural organization is usually difficult to assess by third parties. An effort needs to be made to identify the defendant as a PI, even if granted may prove useless.  

 Threat of infringement – MA holder as defendant?

 Usually, there is no difficulty to evidence who is the marketing authorization holder of an infringing medicinal. Indeed, most legal actions are taken against that entity. However, it is worth remembering that marketing authorization holder is not always the entity which sells the products and first of all, that the Bolar (very broad in Polish law) exception allows pharmaceutical companies to file and obtain a drug registration before the expiration of the existing patent term. PI action can theoretically be based on threat of infringement, but the practicalities of showing such threat are daunting. Therefore, PI actions are rather not recomended (at least) some declaration of intent to produce, distribute or import patented pharmaceutical products is made. This requires careful market monitoring and creative work with whatever tiny hints of evidence one is capable of obtaining.

 Contributory infringement

 Under certain circumstances , the claim should better be based on the of contributory infringement concept. Admittedly, the Polish Patent Law only regulates direct patent infringement. However, there are arguments to derive the liability of a contributory infringer from the general civil rules dealing with tort liability of an accessory.

 Urgency

 Under the Polish law urgency is not considered a statutory condition for granting preliminary injunction as it is, for example, in German jurisdiction. Nevertheless, it is still important to undertake legal steps in the most urgent manner possible as this criterion might be assessed by Court together with the condition of legal interest in the injunction being granted. At the very least urgency have some bearing on the judge’s approach to the case and eg. likelihood that he will decide against deciding ex parte and serve the request onto defendant.

 Patent validity

 Patent validity issues are examined under separate proceedings before the Polish Patent Office or the European Patent Office and the general rule is that a patent is enforceable as long as a final decision on invalidation of the rights will be issued. The validity defense is thus not available in court. Indeed this division is so strong that even in preliminary injunction proceedings the courts usually refuse to consider invalidity defense. This greatly strengthens the patentee’s position but requires extreme efforts on behalf of the defendant in particular when making a squeeze-type argument.

 Forum shopping

 All of the above factors vary substantially between courts in various locations. Eg. the courts in the west of Poland have been found to take a particularly stringent position on the validity and infringement separation, this is further complicated by still different approaches to stay proceedings pending invalidity. The possibilities of forum-shopping also have a specific character as the courts in general try to avoid jurisdiction rather than embrace cases. Coupled with strict requirements to show cause for action (see threat of infringement above) establishing jurisdiction may require careful consideration.

Aurhors: Agnieszka Galazka, Marek Lazewski

For any questions on this article, contact: Agnieszka Galazka, Marek Lazewski

The application period will be open from 12 January to 12 April 2012. The change creates new possibilities for entrepreneurs as to their presence on the Internet: any company fulfilling ICANN requirements may now apply for an exclusive gTLD. ICANN requirements? In order to at least be taken into consideration, any company applying for its own gTLD will be required to pay an evaluation fee amounting to US$185,000.

Furthermore, the applications will be subject to a multistage and complex procedure that is presumed to last from 9 to 20 months dependent on specific circumstances (extended evaluation, filed objections, etc.). An applicant will be obliged to demonstrate technical, operational and financial capability and proposed registry service for DNS stability. Moreover, the application may be refused due to such reasons as infringement of third party’s exclusive rights, similarity to other gTLD strings, negative views of a government of any country, …

However, even taking into consideration the abovementioned facts, the registration of an own gTLD may prove to be fruitful for many companies. Especially big corporations interested in and willing to consolidate communication with consumers via one top level domain could be interested in applying for a gTLD. After registration of an own gTLD, a company may ensure consumers that all information given via this gTLD comes directly from the company.

Certainly introduction of a vast number of new gTLDs may (and presumably will) lead to a significant increase of cybersquatting attempts, especially that the change enables registration of gTLDs in local scripts. In order to avoid such instances, along with the “gTLD revolution”, ICANN has introduced the Trademark Clearinghouse. The Trademark Clearinghouse will serve for gTLD registry operators as a trademark database. It will be obligatory for gTLD registry operators to take the information in the database into consideration in course of registering domain names.

Firstly, in Trademark Claims service, at least for first 60 days that domain name registrations are open for general registrations gTLD, a registry operator will be obliged to provide domain name registrants with a clear notice of the scope of the mark holder’s rights. Secondly, the reform provides a Sunrise service for trademark holders for a minimum of 30 days during the pre-launch phase and the registrars will be obliged to notice all trademark holders in the Clearinghouse if someone is seeking a sunrise registration.

Along with the Trademark Clearinghouse, introduction of new gTLDs introduces also a widely discussed new system of domain name dispute resolution – Uniform Rapid Suspension System. The aim of the system is to speed up the proceedings before the panel in order to increase trademark/service mark protection. However, the URS system burden of proof standard requires presentation of clear and convincing evidence. Moreover, a trademark owner will be obliged to prove that the trademark is really in use.

We will be attentively observing how the new domain name registration system is operating in practice.

 Author: Rafal Kloczko

For any questions on this article contact: Michal Siciarek

In November 2006 the Polish Patent Office granted protection right to the company ‘ORION’ for the trademark COLUMBIA no. R-182641 intended to designate goods in class 34: among others, cigarettes as well as services in class 35 related to the sale of such goods. A notice of opposition against this decision was filed by the company IMPERIAL TOBACCO (hereinafter I.T.), holder of the international trademark COLUMBUS no. IR-613016 with priority, also intended to designate goods in class 34.

In the notice of opposition the opponent represented by one partner at LDS raised that:

- Visually both marks have an identical component ‘COLUMB-‘ and addresses’ attention is strongly attracted to the distinctive elements ‘CO-‘, ‘LUM-’, whereas no notice is taken of the endings;

-  Phonetically both marks are similar;

- Semantically, the marks have a common element ‘COLUMB-‘ which is inextricably linked to the prominent figure of Christopher Columbus.

In his response to the notice of opposition, the holder of the mark COLUMBIA stated that the opposition is groundless due to the fact that addresses of goods and services are perfectly aware of the brands they select. Phonetically, the designations are also different as the endings ‘-IA’ and ‘-US’ render them such. Likewise, there is no similarity on the semantic level, as COLUMBIA refers to a city in the central part of the USA and the first American space shuttle, whereas COLUMBUS is a city in the eastern part of the USA. Additionally, the holder of COLUMBIA pointed to the fact that whereas the mark COLUMBIA serves to designate goods in class 34 and services in class 35, the mark COLUMBUS only serves to designate goods in class 34 other than cigarettes.

In March 2009 the Polish Patent Office dismissed the opposition and deemed that goods and services are indeed identical or similar, however, the marks themselves differ sufficiently to eliminate the likelihood of confusion.

This decision was immediately followed by an appeal filed to the Voivodeship Administrative Court  in Warsaw (“VAC”) . The court, however, dismissed the appeal on 25 January claiming that:

-  The PPO’s decision on lack of the likelihood of confusion was right, based on a comparison of both trademarks on all levels;

- The designations COLUMBIA and COLUMBUS are different owing to the difference of the two last letters ‘-IA’/’-US’;

- The sounds ‘-BIA’/’-BUS’ are sufficiently distinctive in pronunciation;

- The two first syllables are identical, however it’s insufficient for causing clients’ confusion;

- On the visual level, the final syllables are markedly different;

- Semantically, both marks refer to the names of two different American cities, the associations with the figure of Christopher Columbus cannot be a decisive factor for the likelihood of confusion.

The Court also pointed to the fact that smokers purchasing a packet of cigarettes or related goods are equipped with sufficient knowledge of the name of such products and sufficiently attentive when purchasing them to avoid confusion. Moreover, cigarettes or related goods are never purchased directly through being taken from a shelf by a customer himself/herself, yet he/she must request a shop assistant for a brand of his/her choice.

To sum up, VAC stated that the marks under comparison, assessed as a whole, are sufficiently distinctive so as to impress the customer differently and eliminate the likelihood of confusion.

I.T. did not concede and filed an appeal against the verdict of VAC and moved for overruling of the appealed verdict in its entirety and remanding the case for re-examination to VAC . The Supreme Administrative Court decided by the verdict of 15 June 2011, file no. II GSK 666/10 that the case deserves reconsideration and in the grounds pointed out that VAC entirely ignored the fact – widely acknowledged in the case-law and in the doctrine – that consumers’ attention is primarily focused on similarities and on the initial part of a trademark, and consequently decided that eight – letter marks in which six letters are identical and arranged in the same order are not sufficiently similar to result in confusion. Furthermore, VAC failed to explain why, in its opinion, the marks are associated with the American cities rather than with Christopher Columbus who in fact brought the custom of smoking tobacco to Europe. It is also unclear why VAC disregarded another significant fact that apart from the relevant marks of I.T., there was only one mark on the Polish market for goods in class 34 with the stem –‘COLUMB’- (the trademark COLUMBO R-136425), which was consequently taken over by I.T.  Thus, I.T. is the only competitor with a registered mark containing the stem –‘columb-’ for goods in class 34 on the Polish market.

Let us now wait how (and when)  VAC and the PPO will implement the guidelines of the Supreme Administrative Court

A (sad) conclusion can be drawn that though for some, things and associations they evoke might be evident, such as in this case where the role of Christopher Columbus as a promoter of the custom of smoking tobacco is unquestionable, it sometimes takes years to obtain a decision stating this fact.

Author: Magdalena Michalkiewicz

For any questions on this article contact: Marek Lazewski

The role of the new system is to considerably limit the time required to register a business activity by enabling such registration via Internet as well as to reduce the formalities connected with registration. CEIDG contains information about all entrepreneurs being a natural person and running business in Poland including information about franchises, licenses, and permits owned by them.

Basic information about the entrepreneurs are to be published on CEIDG website. Such information will be public and free of charge. Such solution will make the access to the necessary information much easier. So far in order to obtain all the above one had to apply to the appropriate Community Office (where the entrepreneur has been registered).  

Access to CEIDG can be reached on www.firma.gov.pl or www.ceidg.gov.pl

For any questions contact: Grzegorz Rzasa

LDS Lazewski, Depo and Partners Law Office announce that in July 2011 Ms. Justyna Rasiewicz, Esq. has joined the Office as a Partner.

Justyna Rasiewicz is an attorney-at-law with long experience in handling contentious matters in the field of the intellectual property law as well as unfair competition. Justyna has handled dozens of litigations in that field, including patent cases, trademark, industrial design and plant variety right infringement cases and unfair competition cases. Justyna is advising clients also in contentious matters regarding validity of exclusive rights and preparing contracts on intellectual property rights.

Justyna is a co-author of The Commentary to the Law on Combating Unfair Competition published in 2011.

LDS  is a specialized law office offering comprehensive and strategic advice concerning obtaining, exploiting and enforcement of intellectual property rights and neighboring fields such as advertising law, unfair competition law and regulatory issues regarding food, drugs and cosmetics.

Marek Lazewski, managing partner at LDS:

We are glad that Justyna’s potential and experience will enhance our practice. We are convinced that it will reinforce our leadership in the field of intellectual and industrial property law litigation. We also expect that it will help us further expand our advisory and transaction practice.

For any questions contact Marek Lazewski

For any questions on this article contact Marek Lazewski

We are proud to announce that on Monday 20 June, our senior associate  Grzegorz Rząsa, successfully defended his PhD thesis on the nullity of proceedings before administrative courts as a ground for cassation to the Supreme Administrative Court  and has been awarded an academic degree of Doctor of Philosophy on the faculty of Law and Administration at Warsaw University, the best law faculty in Poland. Congratulations!

The Polish Act on Market Quality of Agricultural and Food products states that the labeling of food products should not result in consumer confusion, especially as to the characteristics of the product, including, inter alia, its ingredients, source or place of origin. 

Undoubtedly, the likelihood of consumer confusion should be assessed bearing in mind current European standards of a “reasonable customer” that is reasonably well-informed and reasonably observant and circumspect. However, in fact the situation is not crystal clear in this matter.

„Wódka Alpejska” – one of the prohibited products, as it does not originate from the Alps

Inspectors of The Polish Agricultural and Food Product Quality Inspection (IJHARS) issued recently several decisions in view of which according to the inspection, Polish consumers still seem not to comply with the abovementioned standards. This year IJHARS has contested sale of old Polish vodka “Wódka Alpejska” (“Alps’ Vodka”), claiming that the name may confuse consumers as to the origin of the alcohol (the mentioned vodka brand originates from Siedlce, a town in Poland, not from the Alps) . The decision was issued despite the fact that there was a clear indication on the bottle as to the origin of the alcohol (“Produce of Poland” and the manufacturer’s assertions that this is only a brand name). Currently “Wódka Alpejska” is out of the market in Mazovian region (the decision was taken by a regional part of IJHARS, competent for Mazovian region only).

A similar decision was taken as to the improper labeling of eggs. The package contained an image of a walking hen, which – in the eyes of the inspection –was misdescriptive suggesting  that the eggs were free range (despite the proper information contained on the package and eggs’ themselves). 

It seems, however, that at some point The Polish Agricultural and Food Product Quality Inspection’s vigilance is understandable as inventiveness of Polish producers knows no limits. One of the stories of the inspectors tells that one of the manufacturers of hare pate had to change the name of the product after the inspection had found out that the pate contained only around 5% of hare meat. The manufacturer found a food engineer whose name was Hare (Polish “Zając”) and changed the name of the product “Hare pate” to “Hare’s Pate”, as the product was  allegedly an original recipe of the mentioned Mr Zając. Therefore, we understand that anticipating the approach of the inspection demands high level of vigilance. Even if the consumer standard applied by IJHARS seems not to correspond to the current consumer-awareness, still their decisions are immediately enforceable by force of the law.

Author: Rafal Kloczko

For any questions on this article contact Michal Siciarek or Rafal Kloczko