Implementation of Directive 2015/2436 in Poland Dr. hab. Ewa Skrzydło-Tefelska

1. Implementation of Directive 2015/2436 in Poland • Dr. hab. Ewa Skrzydło-Tefelska • AIPPI Trilateral Seminar – Paris, 4-5 April 2019

2. Implementation process in Poland • trademark law in Poland is set out in Act of 30 June 2000 Industrial Property Law (IPL) • on 20 February 2019 amendments to the IPL, which implements Directive 2015/2436 (TMD), were passed by the Parliament • on 16 March 2019 amendments to the IPL entered into force

3. Overview of main changes • definition of a trademark • absolutegroundsrelated to signs consistingexclusively of the shapeoranothercharacteristic • lackof distinctive character or repute of earlier trade mark in invalidation proceedings • suspension of proceedings • duecausedefense • preparatoryacts • goods in transit • liability of intermediaries • criminalsanctions for infringment of trademarkrights

4. Definition of a trademark • definition from TMD almostidenticallyrepeated: • Article 120 IPL • A trademark mayconsist ofany sign that iscapable of distinguishinggoods of one company from another company's goods and being represented on the register in a manner which allows to determine the clear and precise subject matter of theafforded protection. • A trade markwithin the meaning set in Section 1 consistsinparticular of word, including surname, or design, letter, numeral, colour, spacial form, includingshape of goods or packaging, as well as sounds.

5. No changes to the civil procedure • the bill onlyamends IPL, no changesareintroduced to the civilprocedure • effectiveprotection of trademarks, whichhave no graphicalrepresentation (olfactory, taste) requiresspecialarrangements for infringmentproceedings • problems with retention of evidencerelated to olfactory and tastetrademarks • how to describeaninfringingsign (smellortaste) in a courtdecision? • a courtdecisionmust be precise in particular for the purposes of enforcement – a courtbailiffshould be able to easilyidentifythe infringingsign • if a trademarkisused for goods a court order couldrefer to a name of goods / packaging • itismoreproblematic in cases of trademarksused for services (smell in a storeor in a hotel lobby)

6. Signs consisting exclusively of the shape or another characteristic • the absolutegroundrepeatedin IPL wordfor word (onlyshortergramaticstructure): • signs‚ which consist exclusively ofthe shape, or another characteristic, which results from the nature of the goods themselves, which is necessary to obtain a technical result, which gives substantial value to the goods (Art. 1291 (1) (5) IPL) • anothercharacteristic (feature) can be in particular: colourorpattern of goodsoritspackaging, sound, smell, taste

7. C-163/16 Louboutin and Christian Louboutin • Description:‘The mark consists of the colour red (Pantone 18‑1663TP) applied to the sole of a shoe as shown (the contour of the shoe is not part of the trade mark but is intended to show the positioning of the mark)’

8. C-163/16 Louboutin and Christian Louboutin Question from the District Court in Hague: Is the notion of “shape”, within the meaning of Article 3(1)(e)(iii) of [Directive 2008/95] (respectively referred to in the German-, [Dutch-] and French-language versions of [that directive] as “Form”, “vorm” and “forme”), limited to the three-dimensional properties of the goods, such as their contours, measurements and volume (expressed three-dimensionally), or does it include other (non-three-dimensional) properties of the goods, such as their colour? • AG Szpunar (twoopinions): • Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks is to be interpreted as being capable of applying to a sign consisting of the shape of a product and seeking protection for a certain colour. The concept of a shape which ‘gives substantial value’ to the goods, within the meaning of that provision, relates only to the intrinsic value of the shape, and does not permit the reputation of the mark or its proprietor to be taken into account. • the provision is designed to prevent the monopolization of external features of goods which are essential to their market success, and thus to prevent the protection conferred by the mark being used to gain an unfair advantage; that is, an advantage which does not result from competition based on price and quality • no clearconclusions as to the trademarkbeingsubject of the proceedingsbefore the referringcourt

9. C-163/16 Louboutin and Christian Louboutin • The CJ: Article 3(1)(e)(iii) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that a sign consisting of a colour applied to the sole of a high-heeled shoe, such as that at issue in the main proceedings, does not consist exclusively of a ‘shape’, within the meaning of that provision. • the concept of ‘shape’ – a set of lines or contours that outline the product concerned • while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product. • description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour • the markcannot be regarded as consisting ‘exclusively’ of a shape • not necessary to interpret the concept of a shape which ‘gives substantial value’ to the goods’ • unusually,the CJ analyzed the trademark in proceedings before the referring court • The role of description of the trademarkevenmore prominent in T-101/15 Red Bull / EUIPO - Optimum Mark (Combinaison des couleurs bleue et argent)

10. Lack of distinctive character or repute of earlier trade mark in invalidation proceedings • Article 165 (3) IPL • An application for a declaration of invalidity based on an earlier trademark may not be filed if, at the date of filing or the date of priority of a subsequent trademark: • an earlier trademark which did not meet the conditions specified in art. 1291 para. 1 points 2-4, has not yet acquired the distinctive character referred to in art. 130; • the earlier trademark has not yet acquired a sufficiently distinctive character in order to be able to determine the risk of confusingamongcustomers as referred to in art. 1321 par. 1 point 3, if this provision constitutes the basis for the application for annulment; • the earlier trademark has not yet gainedthe reputation referred to in art. 1321 par. 1 point 4, if this provision constitutes the basis for the application for annulment. • implementation of Article 8 TMD (only in invalidation, not oppositionproceedings) • onlyearliernationalregistrations • earlierEUTMsorIRsdesignating EU are not subject to thisprovision • no similarprovison in the EUTMR, presumption of protection of earlier trade marks in invalidity and oppositionproceedings

11. Suspension of invalidity proceedings • Article 166 (5) and (6) IPL • The right to a trade mark may not be cancelledon the ground that the mark is identical or similar to the earlier mark if proceedings for the invalidationof the protection of the earlier mark have been brought before the day the application was lodged. • In the case referred to in paragraph 5, the application for annulment of the protection right for a trademark may be considered after the decision on the annulment of the protection right on the earlier trademark becomes final. • Article 166 (8)IPL • Until the end of the proceedings for revocation or invalidation of the right of registration for the European Union trade mark, the Patent Office suspendsthe proceedings for annulment of the protection right for the trademark, initiated on the grounds that the mark is identical or similar to the European Union trade mark. • outside the scope of TMD • obligatory suspension, no exception (special grounds for continuing the hearing) • risk of torpedo fillings? • no similarprovision in relation to infringmentproceedings

12. Suspension of proceedings under EUTMR • Before EUIPO: • broaddiscretion: as regards opposition, revocation and declaration of invalidity and appeal proceedings, the competent department or Board of Appeal may suspend proceedingsof its own motion where a suspension is appropriate under the circumstancesof the case (Article 71 DelegatedRegulation 2018/625) • filling of a motion for invalidation of earlierrightonlyrarelyisconsidered as giving a basis for suspension • Beforecourts: • Article 132 (1) EUTMR „Alicante Torpedo”: An EU trade mark court hearing an action referred to in Article 124 other than an action for a declaration of non-infringement shall, unless there are special grounds for continuing the hearing, of its own motion after hearing the parties or at the request of one of the parties and after hearing the other parties, stay the proceedings where the validity of the EU trade mark is already in issue before another EU trade mark court on account of a counterclaim or where an application for revocation or for a declaration of invalidity has already been filed at the Office.

13. Non-use defence • Art. 157 IPL in infringmentproceedings • A rightholder may not prohibit another person from using the same or similar mark in trade, if the persondid not use the trade markwithin the meaning of Article 169 sec. 1 point 1 and paragraph 4. Atthe defendant's claim, a rightholder provides evidence that in five yearsyears preceding the filing of the claim, the trademark was used within the meaning of art. 169 sec. 1 point 1 and paragraph 4. • Art. 166 IPL - in invalidationproceedings: • At the defendant's claim, a rightholder provides evidence that in five years preceding the filing of the motion for invalidation. • If the five years period lapsedbefore the prioritydateof latermark, the proof of useshould be providedfor five yearsyearspreceding the prioritydate. • Thoserulesareapplicable to earlierEUTMs and IRsdesignating EU (assessment of useunder EUTMR).

14. Due cause defence • Article 296 (2) (2) IPL • The right holder of a trademark,for which a protective right with priority has been granted,may prohibit another person from unlawful use in the course of trade of an identical or similar trademark to a reputable trademark, for whichearlierrights was granted to that holder in respect of any goods, if the use of the mark without due cause brings an unfair advantage or is detrimental to the distinctive character or the reputation of the earlier mark • previouslythere was no duecausedefence in infringmentproceedings, only as a part of the relativegrounds • courtshad to interpret the law in line the EU law – the problem was no horizontaldirecteffect of the EU directives • the Supreme Court used a concept of abuse of rightsinstead

15. Preparatory acts • Article 296 (12) IPL • Where there is a risk that the packaging, labels, tags, security features, elements or devices for verifying authenticity or any other means on which the trademark is affixed could be used in relation to the goods and such use would constitute a breach of the protection right, referred to in paragraph 2 and 21, entitled tothe right of protection toa trademark or a person authorized by law, may demand the cessation of: • the affixing of a sign identical with or similar to the trade mark on packaging, labels, tags, security or items or devices for verification of authenticity or any other means on which that mark may be affixed; • offering, placing on the market, importing or exporting or storing for the purpose of offering or placing on the market, packaging, labels, tags, safeguards, elements or devices for verifying the authenticity or any other means on which the mark is affixed. • before the amendmentprotectioncouldhavebeenprovided on the basis of Article 285 IPL whichgenerallyallowsactions in casethereis a threat of infringment • article296 (12) is much moreprecise, but also much morenarrow

16. Goods in transit situations • Article 296 (14) – (16) IPL • Without prejudice to rights acquired by third parties prior to the date of filing or the date of priority of a trademark, the proprietor of the right of protection toa trademark or a person who the law allows, hasthe right to prohibit third parties from entering goods as part of an economic activity tothe territory of the Republic of Poland, without being released tofree circulation, where these goods or their packaging come from third countries and bear, without the permission of the rightholder, a trademark which is identical to a trademark registered in respect of these goods or which can not be distinguishedin terms of its essential characteristics from that trade mark. • The right referred to in para. 14, shall expire if in proceedings aimedto determine whether the right to the registered trademark has been infringed (…) the declarant or possessor of goods proves that the beneficiary of the right of protection to a trademark is not entitled to prohibit the introduction of goods into commercein the country of final destination. • Specificrules for medicines: The right referred to in para. 14, shall not be granted if identity or similarity of trademarks appliedto medicines results only from the identity or similarity of the international non-proprietary name of the active ingredient of medicines (INN).

17. Prohibited acts of infringment • Article 296 (21) IPL • Infringment of a trademarkrightreferred to in paragraph 2 mayalsoinvloveuse of the trademark: • as a trade name or a company name or as part of these names, unless it does not affect the possibility of distinguishing goods on the market; • in an advertisement constituting an act of unfair competition pursuant to art. 16 sec. 3 and 4 of the Act of 16 April 1993 on Combating Unfair Competition (Journal of Laws of 2018, item 419 and 1637). • directivedefinestrademarkuse for the purpose of the infringmentclause in Article 10 (3) • Article 296 (21) IPL introduces a definition of trademarkuse for the purpose of infringmentclause, at the same timetrademarkuseisdefined in Article 154 IPL (introduction of goodsor services to the market, use in documents and advertising) a positivecontent of trademarkrights – inconsistentlawmaking • the provisionimplementsArticle 10 (3) and recital 13 of the preamble • the directive not onlycodifiedCJ case C-17/06 Céline, but alsotransformedanexceptioninto a principle

18. Liability of intermediaries • Article 296 (3) IPL • Theclaims referred to in paragraph 1may also be brought against a person who only places goods already marked with a trade mark on the market if they do not come from the rightholder or aperson who authorized him to use the trademark as well as against the person whose services were used to facilitatetrademarkinfringment. The provision does not apply to a person whose liability is excluded on the basis of art. 12-15 of the Act of 18 July 2002 on the provision of electronic services. • amendmentjustified by the governement as a consequence of CJ case Tommy Hilfiger Licensing and others (C-494/15) • until the introduction of the amendmenttherewereotherlegalregimesallowing to pursuesecondaryliability of suchentities (unfaircompetition law, tort law)

19. CJ case Tommy Hilfiger Licensing and Others (C-494/15) • The CJ: Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit branded products, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision • judgment does not considerthatsuchintermediariesusetrademarks and areliable for trademarkinfringment • ithoweverrequiresthatmemberstatesallow to bringanactionagainstsuchintermediary • IPL does not explicitlyconsider the intermediaries’ actions as trademarkuse, however, allows to instigateanaction for trademarkinfringmentagainstthem • exclusion of online intermediariesis in line with CJ joinedcases Louis Vuitton v. Google (joined C-236/08 to C-238/08)

20. Criminal sanctions for counterfeits • Article 305 (1) IPL • A person who, for the purpose of introducing to the market, placesgoods with a counterfeittrademark, including counterfeit trade mark of the European Union, registered trademark or trademark of the European Union, for which this person is not entitled to use or trade in goods marked with such marks, issubject to a fine, restriction of liberty or imprisonment up to 2 years. • before the introduction of the amendmentonlyPolishtrademarkswereprotected by criminalsanctionsunder the IPL • thisamendmentis not aneffect of the Directive, whichdoes not set out rules on remedies and sanctions • wording of the provisionisregrettable