Bialystok Legal Studies vol. 27 nr 1
The Concept of Intellectual Property Cases. Selected Issues
Abstract: This article relates to the concept of intellectual property cases, which has recently been added to the Polish Code of Civil Procedure (CCP). The introduction of this concept has to do with changes in the CCP, which have been in force in Poland since 1 July 2020. From that date, intellectual property cases are dealt with by the courts under a new special procedure. Classification of a particular case as an intellectual property case has important practical consequences: an intellectual property case is heard in distinct proceedings; otherwise, general regulations will apply. The definition of intellectual property cases which is in the CCP is not obvious and raises doubts. The aim of the article is to analyse this definition and to propose certain directions of interpretation.
Keywords: civil proceedings, copyright, industrial property law, intellectual property cases, protection of intellectual property, rights in intangible assets
Page range: 11-23
Abstract: The aim of this article is primarily to analyse the norms of the opposition procedure to a final decision on granting a patent, a utility-model protection right or a registration right, contained in Art. 246–247 of the Industrial Property Law (IPL), taking into account both the provisions of substantive and procedural law as well as legal effects resulting from the adopted normative solutions regarding Art. 247 of the IPL in the amendment to the IPL of 16 October 2019. The model of opposition procedure ad- opted in Poland with the objection procedure in force in the Munich Convention is assessed. The pre- sentation of the regulation of the opposition in the Munich Convention allows for a comparative legal analysis of the solutions contained therein with the relatively modest regulation provided for in Art. 246–247 of the IPL. The legal nature of the opposition, its subject and substantive legal grounds, as well as the inconsistently defined nature of the opposition period, are addressed. The controversial nature of the opposition proceedings is also discussed. The considerations made allowed for the formulation of de lege lata and de lege ferenda conclusions.
Keywords: examination of admissibility of the opposition, grounds for opposition, opposition proce- dure, revocation or maintenance of the patent or other industrial property rights, time limit for filing an opposition
Page range: 25-36
Abstract: The changes in the audiovisual media services market that have taken place in recent years have resulted in quite intensive work in the European Union (starting in 2015) on the revision of certain directives concerning this economic area. One of the pieces of EU law that was decided to be updated was the Audiovisual Media Services Directive. This is because it was pointed out that since the last amendment of this directive, there had been a significant and rapid development of the audiovisual media services market due to the progressive convergence of television and internet services. The advancement of technology has allowed the emergence of new types of services and new ways of using them. In addition, it has been stressed that viewing habits have changed considerably, especially among younger viewers. New types of messaging, such as short forms of video and user-generated content, have grown in importance, and new entrants, including video-on-demand providers and video-sharing platform providers, have already established their position. This media convergence has called for an updated legal framework in the EU to take account of market developments and to strike a balance in access to content in online services, as well as to ensure consumer protection and competitiveness. Directive 2018/1808 was to be implemented by the EU Member States by 19 September 2020 but Poland did not meet this deadline; it was not until 11 August 2021 that the relevant amendments to the Broadcasting Act and the Cinematography Act were enacted. Most of its provisions came into force on 1 November 2021, while others entered into force on 1 January 2022. Considering the way in which most of the provisions of Directive 2018/1808 have been implemented into Polish law, one can defend the view that it was done rationally from the perspective of Polish media service providers. The liberalisation of quantitative advertising limits may contribute to raising more funds in the advertising market by broadcasters. It has been pointed out that leaving the existing regulations unchanged would place broadcasters under Polish jurisdiction in an unfavourable competitive position in relation to broadcasters of programmes available in Poland who are under the jurisdiction of other EU Member States. The intention to put providers of on-demand media services on an equal footing with providers of video-sharing platforms also seems reasonable, as the main objective of Directive 2018/1808 is to ensure proper competition between different categories of entities competing in the electronic media sector.
Keywords: audiovisual commercial communications, audiovisual media services, EU law, media service providers, video-sharing platform providers
Page range: 37-54
The Offence under Article 305 of the Industrial Property Law and the Limitations of Protection Law for a Trademark (in Particular Due to Tolerance): Comparative Legal Remarks in the Context of the Planned Amendment of the IPL Provisions
Abstract: Among the rights that precede rights in the registration of a trademark, Polish law does not take into account the rights to signs acquired as a result of their use in trade. It also does not take into account such rights in regard to excluding the effectiveness of the right from registration due to the tolerance of such rights arising later. Meanwhile, the aforementioned rights are raised not only in cases of infringement of the protection right for a trademark but also in criminal cases concerning a counterfeit trademark (Art. 305 of the Industrial Property Law). In connection with the proposed deregulation of the Industrial Property Law Act, a question arises about the need for a more comprehensive amendment of the relevant provisions. This question also concerns the provisions on criminal liability, namely whether they should not directly – as is the case with the provisions on civil liability – condition the claim for protection of the right to a trademark from its (full) effectiveness in a given case, including in the context of fulfilling the requirement of genuine use of the mark. These questions become all the more justified in the light of the comparison of the above-mentioned legal status with the solutions in this regard in other EU Member States (e.g. in German law) – in terms of the competitive legal position of enterprises using trademarks belonging to them in these countries, respected on the basis of national legislation.
Keywords: counterfeit trademark, criminal liability, deregulation,exclusions of protection rights, tolerance of use
Page range: 55-73
Abstract: In this text, I put forward the thesis that the taste of a dish or food product may be protected under intellectual property law. As is known, intellectual property law protects the creations of human intellect. Culinary, perceived by recipients mainly through the prism of taste, is undoubtedly one of the many areas in which human ingenuity is manifested. Therefore it is not surprising that the protection covers various intangible goods related to the taste of dishes and culinary products, such as quality labels, trademarks, works and legally protected secrets; one can and should ask about the ‘saturation’ of culinary issues with intellectual property. This study is an attempt to indicate the legal institutions applicable to the protection of culinary arts. It is disputed whether taste can be considered an object of copyright protection (in a work). This is due to the difficulty in identifying the elements of creativity in cooking. These elements can be indicated in the taste as being a derivative of the composition of the ingredients of the dish, their proportions and the harmony between them. There is no doubt that taste can be protected under the Protected Designation of Origin, Protected Geographical Indication and Traditional Speciality Guaranteed institutions, and as a sign of secrecy, be it by a cook or an entrepreneur employing a cook. On the other hand, the possibility of registering a taste as a trademark should be rejected.
Keywords: flavour as a trademark, legal protection of the quality of taste, taste as a piece of work, taste as a trade secret
Page range: 75-93
Abstract: European Union case law has in recent years brought to the surface numerous decisions that shed new light on the interpretation of bad faith in trademark law. The aim of this article is to present and discuss the premises that, pursuant to the judgments of the European Courts and decisions of the European Union Intellectual Property Office (EUIPO), are perceived as circumstances that may deem an application for a trademark as one made in bad faith. A close examination of the judicial decisions aims at determining how the approach to the concept of bad faith has been shaped in EU case law over the years since the preliminary ruling on the trademark application concerning the Easter bunny (Chocoladefabriken Lindt & Sprüngli). Initially, bad faith was identified with those unfair applications for trademarks aiming at harming a third-party interest that had used a given mark before. The rulings issued in subsequent years clearly indicate that the application for a trademark made in bad faith does not have to be connected with a similar designation used by a third party beforehand. Such an application may derive from an unfair strategy of protecting the applicant’s own designations. What is unfair here is an attempted use of the system of protection of trademarks for purposes other than those for which it serves, through making an application for a trademark for purposes other than the functioning of that trademark.
Keywords: bad faith, EU trademark, genuine use
Page range: 95-115
Abstract: On 16 June 2021, as a result of a cassation appeal, the Supreme Administrative Court (SAC) ruled that the reputation of a trademark is not determined by its qualitative aspects. This position should not come as a surprise, two decades after the judgment in the General Motors Corporation v. Yplon SA (Chevy) case. However, the justification of the SAC ruling indicates that in proceedings before the Patent Office of the Republic of Poland and Polish administrative courts, one cannot predict the exact interpretation these authorities will make. This article discusses the jurisprudence of the administrative courts in the field of the concept of trademarks with a reputation; it focuses on the quantitative and qualitative approach and refers to the scope of the binding of Polish courts by the interpretation of the law by the EU courts.
Keywords: administrative courts, ‘Chevy’ case, trademark with reputation
Page range: 117-129
Abstract: This article answers the question of whether trademark regulations and case law promote the aims of international and EU law regarding the inclusion of persons with disabilities in social and economic life, which includes the involvement of persons with disabilities as consumers of goods and services, or whether they generate a conflict between the principles of trademark protection and the accessibility of trademarks for persons with disabilities. Trademark law and its interpretation is developing in parallel with the development of the concept of access and the inclusion of people with disabilities in every sphere of life. Both the content of the legislation and, in particular, trademark decisions fail to take into account the disability perspective, thus the law perpetuates an approach that denies people with disabilities the possibility to be consumers and to distinguish the origin of products to the same extent as non-disabled people. It is possible to introduce changes through minor steps in order not to revolutionise but only to complement the trademark system with a disability perspective, and thus meet the requirements of including people with disabilities in social and economic life.
Keywords: average consumer, people with disabilities, tactile trademark, trademark, trademark in Braille
Page range: 131-142
Vito Rubino, Filip Tereszkiewicz
A Possible Exit Strategy from the ‘Halloumi Affair’: How to Solve Problems with CETA Ratification
Abstract: This article explores the importance of geographical indications within the new trade policy of the European Union, using the example of the CETA and the dispute over Cypriot halloumi cheese. The authors point out that geographical indications occupy an important place within the European Commission’s negotiating strategy primarily because of their significance for the EU economy. In negotiations with third countries, such as Canada, a crucial problem is the different approaches to the protection of typical regional products. Therefore, the Union is trying to transfer its internal solutions to the international level. The detail of regulations, combined with the mixed nature of new trade agreements, makes trade policy vulnerable to blackmail by individual EU Member States. According to the authors, a reasonable solution to this problem – which was highlighted by Cyprus’s veto of the CETA – is to rely on the treaty provisions and the judgements of the Court of Justice of the EU. These indicate the exclusive competence of the EU in this area and impose an obligation on EU Member States to cooperate sincerely.
Keywords: CETA, common trade policy, European Union, exclusive competences, geographical indications, sincere cooperation
Page range: 143-157
Abstract: The aim of this paper is to analyse critically the problems stemming from the current model of enforcing protection in cases of online copyright infringements. The Internet allows for the easy dissemination and exploitation of copyrighted works globally. Remote and immediate access to content may result in simultaneous infringement on a worldwide scale. There is a long history of disputes over the enforcement of protection with regard to online copyright infringement, and while new laws and judgments are passed there are still no effective remedies nor consensus regarding a common approach to the problem of the multiplicity of applicable laws and jurisdictions in the event of infringement – a problem that derives mainly from the principle of the territoriality of intellectual property rights. Throughout the years there have been many attempts to solve it, mostly in the form of soft law instruments. None of the recommendations are binding, therefore the obligation to reconcile the right to the protection of copyright with the limits of the jurisdiction falls on national courts. As a consequence, the current legal status quo does not provide sufficient predictability to the outcome of litigation.
Keywords: enforcement of copyright, extraterritorial scope of remedies, jurisdiction, online copyright infringement
Page range: 159-171
Abstract: This article focuses on the controversy in defining the scope of the right of communication to the public of works provided in Article 3 InfoSoc, especially in the ‘creative’ interpretations made by the CJEU. Based on these considerations, I justify a position qualifying Article 17 DSM, as a provision performing a statutory ‘balancing act’ between the premises determining the scope of the right to communicate a work to the public in the case of online content-sharing service providers. In this view, Article 17 DSM does not modify the concept of making works available to the public, and the premises for the scope of the right from the DSM were already available for ‘interpretation’ based on Article 3 InfoSoc.
Keywords: copyright, DSM, internet, hosting, service provider
Page range: 173-191
Abstract: In accordance with Article 79 (1)(3)(b) of the Polish Copyright and Related Rights Act, a right holder whose economic rights have been infringed may request the person who infringed those rights to remedy the loss caused by payment of a sum of money corresponding to twice the amount of the appropriate fee. The wording of the above provision indicates that the amount of the lump-sum compensation is not related to the damage sustained by the copyright holder. The ECJ has held that the regulation in question is in conformity with EU law. It follows from the ECJ’s judgment that Polish law permits reduction of a lump-sum claim in a situation where it exceeds the actual damage so clearly and substantially that such a demand would constitute an abuse of rights prohibited under Article 3(2) of Directive 2004/48. The possibility of mitigating damages is therefore a condition for the compatibility of the lump-sum compensation formula with EU copyright law. The aim of this paper is to examine whether the construction of abuse of rights allows for the reduction of the amount of a lump-sum compensation.
Keywords: abuse of rights, copyright law, Directive 2004/48/EC, lump-sum compensation in copyright law/p>
Page range: 193-207
Controversies Around the Concept of “Official Material”
Abstract: Art. 4(2) of the Act of Copyright and Related Rights (1994) excludes the texts mentioned therein from the protection provided for in the copyright law. The legislator makes use of the reference to the regulation of national law contained in the Berne Convention. Of the exclusions listed in Art. 4(2) ‘official materials’ are the most undefined conceptual category. In many judgments the administrative courts have placed all written studies which did not have the characteristics of an ‘official document’ in the category of ‘official materials’. This concerns materials produced by public authorities and studies submitted at the request of an office by external entities. The author analyses judgments of administrative courts in which the concept of official material appeared and the qualifications to this category. He points to the jurisprudence according to which the official material is a text which a) comes from a public authority, b) relates to an official case, and c) was created as a result of an official procedure. This approach is opposed by the Supreme Court in their judgment of 2009 and the bulk of copyright doctrine. In the final part the author discusses the status of the expert studies and justifies his own terminology proposals.
Keywords: administrative court judgments, expertise, exclusions from copyright protection, official documents, official material
Page range: 209-226
Sebastian Kwiecień, Wioletta Witoszko
The Right to Flat-Rate Compensation for an Employer’s Infringement of an Employee’s Economic Copyright
Abstract: The issue of determining the amount of flat-rate compensation for an employer’s infringement of an employee’s copyright of their own work remains disputed, particularly in practice. It is a claim for payment of a sum of money corresponding to twice the remuneration that at the time of its investigation would have been due by way of consent to the use of the work by the rightholder. The article presents a problematic issue regarding the award of compensation to an employee who proves copyright infringement but who is not obliged to determine the type of damage or its extent, nor to prove the fault of the employer.
Keywords: economic copyrights, flat-rate compensation, intellectual property
Page range: 227-242
Krzysztof Stefański, Katarzyna Żywolewska
Termination of the Employment Relationship of a Researcher Because of Plagiarism
Abstract: This article explains the concept of plagiarism and the legal regulations which result from the effects of plagiarism by a researcher. Compliance with copyright is undoubtedly a fundamental and extremely important duty of academics. The provisions of the Act on the Polish Academy of Sciences, on research institutes and on higher education and science are discussed. Depending on the basis for establishing the employment relationship and the unit in which the researcher is employed, the legislator has defined various effects in a situation where plagiarism is committed. If a researcher plagiarises, he or she may be disciplined, and the employment relationship may then be terminated. The analysis of the provisions and the relevant judgments of the courts show that the legislator has not clearly regulated these issues, hence the critical remarks and de lege ferenda conclusions.
Keywords: plagiarism, researchers, termination of employment
Page range: 243-258