A. Intellectual property in designs – Poland

 

I. Protecting intellectual property in designs in Poland

 

As with other modern legal regimes, Poland recognizes and protects the value of intellectual property in designs and of the work put into creating a design and giving it value, during the initial or later stages, through quality production, advertising or marketing.

 

Legal protection in Poland is gained through creation (copyright law), registration (industrial property law) or market and consumer recognition (unfair competition law), sometimes on the basis of all of above.  Poland does not have a strict registration regime and in many cases it will be possible to protect a design without formal registration.

 

II. The laws and history

 

Poland has a long history of protecting design innovation.  On 4 February 1919, a Decree on Patents on Inventions, a Decree On The Protection Of Trademarks and a Decree on the Protection of Designs and Models were passed and in the same year Poland joined the Paris Convention for the International Protection of Industrial Property. This was only a year after regaining independence from the Prussian, Austrian and Russian empires.  Previously, design issues had been covered by the legislature of the empires which had carved up Poland 120 years previously.  A Patent Office for the Republic of Poland had already been created in 1918.

 

In 1924 a sophisticated and modern, by contemporary standards, Act of 5 February 1924 On The Protection Of Inventions, Designs and Trademarks was passed[1] which was replaced by an equally sophisticated President’s Ordinance Of 22 March 1928 On The Protection Of Inventions, Designs and Trademarks which covered inventions, utility models, ornamental designs (industrial designs) and trademarks which was in force until 1962.  In 1928 Poland also joined the Madrid Agreement for the Repression of and Deceptive Indications of Origins of Goods and the Hague Text of the Paris Convention. 

 

After the Second World War, Poland’s legal system became distorted by communist innovations introduced by the Act of 20 December 1949 On Inventions and Industrial Designs Relating To State Security, the Decree of 12 October 1950 on Employee Inventions and the Act of 31 May 1962, the Invention Law. which covered inventions, utility models and ‘rationalization proposals’[2]. A Regulation of the Council of Ministers of 29 January 1963 on the Protection of Ornamental Designs was also passed.

 

Poland acceded to the Convention Establishing the World Intellectual Property Organization on 23 March 1973. 

 

After the fall of communism, a modern Industrial Property Law (“Industrial Property Law” for the rest of this chapter) was passed on 30 June 2000 to bring Polish law into line with modern standards[3].  The appropriate European Directives and Regulations and European jurisprudence and practice, are a useful guide to the Industrial Property Law.  It would be useful to note Polish legal theory and jurisprudence generally has a heavy German influence. 

 

The harmonization and adaptation process for industrial property law has finished for the time being with Poland’s deposition on 30 December 2003 of the instrument of accession to the Convention of 5 October 1973 on the Grant of European Patents and Poland joining the EU in 2004. With Polish EU membership, intellectual property law in Poland will probably develop in line with general European trends.  Intellectual property is not a serious political issue in Poland, being the subject of debate mostly among academics, rather than politicians, the public or businesses, though some issues connected with national interests[4] or with a humor factor or familiar participants[5] do gather some public and media attention.

 

Unfair competition law was understandably sidelined during the communist era due to a lack of competition, fair or unfair, between companies.  On 2 August 1926, an Act on the Combating of Unfair Competition was passed covering acts of unfair competition, including copying of appearance of products. It is clear that the currently binding Act on the Combating of Unfair Competition of 16 April 1993 was heavily based on this Act, similar provisions even have the same article numbers.  The previous Act had been in force, basically unused and unnoticed, for 67 years.  Since 1993, the new Unfair Competition Act has been modified to bring it into line with European law, especially as relates to comparative advertising and consumer protection. Once again, European and especially German legal theory and jurisprudence will be a good starting point for comparison.  Unfair competition law has a heavy overlap with intellectual property law in Polish legal practice and is often used where protection under the Industrial Property Act is unavailable or doubtful.

 

On 4 February 1994 a new Copyright And Neighboring Rights Law[6] replaced the previous Copyright Law of 10 July 1952, which had previously replaced the Act of 29 March 1926 on Copyrights. 

 

In summary, the key acts to bear in mind are:

1)    The Act of 4 February 1994 on Copyright And Neighboring Rights Law;

2)    The Act of 16 April 1993, on the Combating of Unfair Competition;

3)    The Act of 30 June 2000 on Industrial Property Law.

 

III. Specific laws - Industrial Property Act

 

The Industrial Property Act aims to protect innovation in designs of a technical, aesthetic or marketable nature.  It covers patents, utility models, industrial designs, circuit board topography and geographic indicators.  We will deal with utility models and industrial designs below.

 

The Polish Patent Office reviews utility model and industrial design applications and registers them.  Its decisions are subject to appeal to administrative courts, which form a separate arm of the judiciary from civil and criminal courts.  Administrative courts are however also independent from administrative and governmental influence.

 

A. Utility Models

 

Utility models are a form of design that be registered and granted a protection right in Poland.  Any novel and useful solution of a technical nature affecting shape, construction or durable assembly of an object may constitute a utility model under Polish law.

 

A utility model under Polish law has a technical character and brings benefits other than aesthetic or recognition ones.

 

A utility model is novel if it does not form part of the state of the art, with the state of the art being everything made available to the public, by use, displaying or disclosure in any other way, before the date according to which priority is decided. Applications which enjoy earlier priority, even if not made available to the public, are in the state of the art.  Novel does not necessarily mean that novel materials or production techniques have been used to make the model[7].

 

A utility model is considered a useful solution if by means of that solution a practical effect is attainable, expedient in the process of manufacturing[8] or exploitation of the product.

 

Utitity models are granted protection rights upon registration with the Polish Patent Office.

 

Utility models are subject to the same registration procedure as patents, with a publication, chance for opposition and approval after review by the Patent Office. The registration procedures do not differ significantly from international standards.

 

Granted protection rights are registered and listed in a separate utility model right register.

 

A protection right gives exclusive right to exploit the utility model for profit or for professional purposes throughout the territory of the Republic of Poland for 10 years from the date of filing of a utility model application with the Patent Office.  The extent of protection is determined by the claims contained in the utility model specification.

 

The rights holder has the right to prevent any third party not having his consent from exploiting his invention for profit or for professional purposes by way of performing the acts consisting of making, using, offering, putting on the market a product that is utility model or importing the product for such purposes.

 

However, the rights holder may not abuse his rights, in particular by preventing the design from being exploited by a third party, if such exploitation is necessary for the purpose of meeting home market demands and is particularly dictated by public interest considerations, and consumers are supplied with the product in insufficient quantity or of inadequate quality, or at excessively high prices – however prevention of the above for three years from the date of grant of the registration is not treated as abuse, regardless of the following.   The Patent Office may question the rights holder or licensee about whether the patent is being abused.  These provisions have not been used since their introduction. 

 

The rights holder may not stop attempt to stop:

• the usage of items used in transport which are passing through Poland,
• the exploitation of a design for state purposes where it is has been found indispensable to prevent or eliminate a state of emergency relating to vital interests of the State, in particular to security or public order – however compensation will be payable. These emergency provisions have not yet been used.
• the employment of the design for research and experimental purposes as relates to evaluation, analysis or education
• the exploitation of design for purposes of registration or authorisation, needed to put products onto the market.

 

The protection rights conferred by registration do not extend to acts concerning a product embodying the design, in particular its offering for sale or further putting on the market, if that product has been put on the market on the territory of the Republic of Poland or the European Economic Area by the patent holder or with his consent.

 

Utility models are subject to compulsory licensing by the Patent Office if

·      it is necessary to prevent or eliminate a state of national emergency, in particular in the field of defence, public order, the protection of human life and health, as well as the protection of natural environment, or

·      it has been established (by the Patent Office) that the protection rights have been abused, or

·      it has been established that the rights holder prevents, by refusing to conclude a license contract, the meeting of home market demands through the exploitation of a latter registered design, which use the earlier design; but in this case, the holder of the earlier registration may also demand that an authorisation be given to him for the exploitation of design that is the subject matter of the dependent design (cross-license).

 

A compulsory license is non-exclusive.  Royalty determined fairly by the Patent Office is payable on a compulsory license.  Compulsory licenses have not been issued recently.

 

Rights can be sold transferred, inherited or licensed through a written license agreement as well as jointly held. Transfer of rights come into affect towards third parties at time of entry of transfer into the model rights register.

 

B. Industrial designs

 

Industrial designs may be registered and protected in Poland.  A novel and unique appearance of the whole or a part of a product resulting from the features of, in particular, the lines, colors, shape, texture or materials of the product and its ornamentation, constitutes a registerable industrial design in Poland.  This may cover industrially or handmade items, including packaging, graphic symbols and typographic typefaces and products composed of multiple elements but excluding computer programs.

 

The key element to understanding industrial designs under Polish law is that they have a decorative, not technical, function and bring aesthetic and recognition benefits.

 

An industrial design is novel if, before the date according to which priority to obtain a right in registration is determined and no identical design has been made available to the public, i.e. used, exhibited or otherwise disclosed. Designs are deemed to be identical with those made available to the public if their features differ only in immaterial details. Designs are deemed to have been made available to the public if the design was not known to circles of persons specialised in the product sector.  Despite disclosure, registration may be granted if a design has been disclosed to a third party under explicit or implicit conditions of confidentiality or if it has been disclosed during 12-month period preceding the date according to which priority to obtain a right in registration is determined, by the designer, his successor in title or a third person with the right holder’s consent, as well as if the disclosure has occurred as a consequence of an abuse.

 

An industrial design is unique, if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available before the date according to which priority is determined[9]. In assessing the uniqueness, the degree of freedom of the designer in developing the design should be taken into consideration – i.e. if technical constraints force certain solutions to be made.

 

Industrial designs are protected by registration rights registered with the Polish Patent Office and listed in a separate industrial designs register.

 

The registration right confers the exclusive right to exploit the industrial design for profit or for professional purposes throughout the territory of the Republic of Poland. The holder enjoys the right to prevent any third party from making, offering, putting on the market, importing, exporting or using a product in which the design is incorporated or to which it is applied, or stocking such a product for those purposes. This right covers any design which does not produce on the informed user a different overall impression to the registered design, however the registration rights only covers the kind of products, in respect of which the protection has been applied for[10].  Rights are for 25 years from filing of a registration application.

 

Registration rights are not granted for industrial designs whose exploitation would be contrary to public order or morality; however exploitation of an industrial design will not be considered to be contrary to public order merely because it is prohibited by law. Registration rights are also not granted for designs containing geographical indications protected under law.

 

Registration rights do not cover features which are solely dictated by the technical function of in item or which must necessarily be reproduced in their exact form and dimensions in order to permit the product to be mechanically connected to, or to interact with, another product (i.e. a port or plug).  However an industrial design may be registered to serve the purpose of allowing multiple assembly or connection of mutually interchangeable products within a modular system.

 

The rights holder may not prevent any third party from making use of the design:

·      for private and for non-commercial purposes,

·      for experimental purposes,

·      reproduction for citation or educational purposes, provided that such usage is fair and does not unduly prejudice the normal exploitation of the design, and that mention is made of the source,

·      applied in or incorporated in the equipment on ships and aircraft registered in another country when these temporarily enter the territory of the Republic of Poland or by way of importation of spare parts and accessories for the purpose of repairing these craft or through their repair,

·      by way of execution, on an individual order, of repairs intended to reproduce a component part of a complex product so as to restore its original appearance.

 

The law clearly states that products manufactured by means of an industrial design and put on the market after the lapse of the right in registration granted for such a design do not benefit from the protection of author’s economic rights in a work under the provisions of the copyright law. However a design which is not registered may benefit from protection under copyright law[11].

 

Unlike utility models, industrial designs are not subject to compulsory licensing or provisions regarding emergency use.

 

Industrial designs are licensed and transferable in the same way as utility designs.

 

Registration of an industrial design follows a simplified procedure as compared to utility designs and patents, a key aspect is that the Patent Office does not provide public information on the application, before its registration.

 

C. Joint provisions regarding infringement

 

The Industrial Property Act contains joint provisions regarding prevention and punishment of infringement of registered rights.

 

Civil and criminal protection for utility models and industrial designs under the Industrial Property Act is dependent on prior registration.  However the Act makes clear that protection under different provisions, specifically the Act on the Combating of Unfair Competition, may provide additional protection – this is particularly relevant for unregistered designs.

 

1. Civil protection

 

A holder of an industrial design registration right or an utility model protection right, whose right has been infringed, may demand the cessation of the infringement, the redress of its consequences, the surrender of the unlawfully obtained profits, compensatory damages and an apology by filing a suit with a civil court.  Poland’s legal system does not award punitive damages.

 

Infringement actions may be brought after the right has been registered, not before, but may concern activities prior to date, however there is a good faith defence for industrial designs since the infringing party may not have been aware of the design – since there is no application publication.  The statute of limitations is three years since the infringement date, however time needed for registration.

 

Polish law allows for temporary injunctions to be granted to protect claims for the time of the trial.  Injunctions are granted by the courts if the claims are found to probable and if irreparable damage was to occur or an eventual verdict would become unenforceable through a lack of an injunction.  In practise, injunctions may be granted within days of filing or after almost a year.

 

Civil trials take on average 3 or 4 years to wind through the first instance of courts, with further instances (appeals and eventual cassation at the Supreme Court) taking another 2 or 3 years.  Expert witness opinions often decide the case with judges relying on the opinions to decide whether the law had been infringed or not, since they often lack the technical or even legal expertise to decide the issue themselves – there is no separate circuit for industrial property, unfair competition or copyright cases.

 

Litigatious cases may end up in administrative courts if appeals and objections are brought during the registration process or even after it, if a decision of the Patent Office is appealed by one party and upheld by another.

 

2. Criminal protection.

 

Under the Industrial Property Act, anyone who usurps authorship or misleads another party as to the authorship of a utility model or industrial design, or otherwise infringes rights to a registered project, i.e. produces and sells a product utilising the model or design, is liable to a fine, limitation of freedom or imprisonment for a period of up to a year.  If the act was committed for material profit or personal gain may be imprisoned for two years.  This protection is identical to the one granted to patents.

 

Most utility model and industrial design cases end up in civil, rather than criminal courts, with companies prefer to bring civil cases against their rivals in cases of infringement.

 

3. Customs protection.

 

Import of infringing products may be blocked through cooperation with customs officials in special procedures were provided for by the Regulation of the Council of Ministers of 2 February 1999, on the procedure and operating principles for Customs Authorities for withholding goods in case of suspected violation of provisions of intellectual, commercial and industrial property.  As a result of European accession, European customs laws, specifically, Council Regulation (EC) 1383/2003 of 22 July 2003 concerning customs action against goods suspected of infringing certain intellectual property rights and the measures to be taken against goods found to have infringed such rights, applies directly in Poland.

 

 

IV. Specific laws – Unfair Competition

 

The Act on the Combating of Unfair Competition aims to protect enterprises from the affects of unfair acts in business.  It applies to relations between companies and entrepreneurs, though it does cover issues of consumer protection, where consumer interests are being infringed, the infringing companies may be sued by other, more honest, companies.

 

This regulation has a general clause stating that an act of unfair competition is an act which is illegal or contrary to good practises[12]. Note that an act does not have to be illegal under a different provision (for instance bribery) for it to an act of unfair competition – it just has to be against good practises.  The regulation further gives examples of acts of unfair competition, which includes two key provisions relating to designs and their authors:

1)    it is an act of unfair competition to sell products in packaging which may mislead clients as to the origin of the products;

2)    it is an act of unfair competition to copy a product through technical means, so that its external look may mislead clients as to the identity of its producer or the product itself.  However it is not act of unfair competition to copy the functional and useful features construction and form of the product.  If this copying of functional and useful features may lead to the clients being misled, then the copying party must appropriately mark the product[13].

 

The second provision encourages producers to register their utility models – since functional and useful features are not covered by unfair competition law. This unfair competition law provision however fulfils a similar role to that of industrial designs and trademarks in industrial property law but for unregistered designs.  Unfair competition law is often used by parties without registered rights and is often effective, however the results are less predictable than in cases under industrial property law and more evidence needs to be gathered to ensure success.  Market research is often required since a key element of an act of unfair competition is the chance of misleading of clients, rather than simple similarity under industrial property law.

 

Polish jurisprudence is that a granted utility model right makes impossible an unfair competition claim on the grounds of product similarity against the holding party[14].  The registration right is a defence against unfair competition claims.  However a registration right may be overturned in separate proceedings.

 

The civil and criminal liability for acts of unfair competition is similar to that for utility models and industrial designs. 

 

V. Specific laws – Copyright

 

The Copyright and Neighboring Rights Law states that copyright exists in any expression of creative activity having an individual character and manifested in any material form, regardless of the value, intended purpose and manner of expression thereof.  This expression is referred to as a work.  Protection is specifically extended to three-dimensional artistic works but is excluded for descriptions of patents and other protection titles.  The author is eligible for protection independently of compliance with formalities of any kind. Derived works made from the work of another, in particular translations, transformations and adaptations, will be protected by copyright without prejudice to the rights in the original work and a work inspired by another’s work is not be considered a derived work.   The manner of disposal of the derived work and the use thereof is subject to the consent of the author of the original work (dependent copyright), except where the economic rights in the original work have expired.  Copyright belongs to the author, except specific provisions of law provide otherwise (i.e. employee or joint works).

 

The author has personal (indication of authorship, inviolability of content, first public performance or availability, supervision of usage) and economic rights (commercial exploitation).  Personal rights may not be sold, transferred or given up, economic ones may be disposed of fairly freely through sales, licenses or other mechanisms.  Economic rights lapse after 50 years from the death of the author[15].

 

Copyright law protects authors from the copying of their work or exploitation of derivative works.  Therefore, in some cases, where protection under industrial property law and unfair competition law is uncertain or weak, an attempt may be made to protect a design through copyright.  However most lawyers use registered designs or unfair competition law to protect their clients designs, since the provisions of law are clearer and ‘artistic’ defence arguments, i.e. exactly what is a derivative, cannot be brought in those fields of law.

 

Infringement of personal and economic rights brings civil and criminal liability similar to the ones previously discussed, with the note that infringement of economic rights gives ground compensation for triple the amount that would have been paid if the rights had been legally granted and an additional payment to an independent fund for the protection of artistic rights may also be awarded.