Poland: Overlapping protection

As in many jurisdictions around the world, the overall appearance of or impression created by a product may be protected in Poland under industrial design, trademark, copyright or unfair competition law.

Registration of an industrial design or a trademark is the most popular form of obtaining protection for the overall appearance of a product, as in case of infringement there is no need to prove earlier rights. However, copyright and unfair competition law are also useful and commonly used instruments, particularly where no registered right exists. This article takes a brief look at how the industrial design, copyright and unfair competition laws work in Poland.

Design protection

In principle, industrial design protection in Poland is harmonised with the EU Community Design Regulation. To obtain protection, an industrial design must be new and have individual character.

A design is considered ‘new’ if no identical designs have been made available to the public prior to the application anywhere in the world. However, novelty remains intact if the design was disclosed:

• in such a way that it could not have become known to those specialising in the sector concerned;
• to a third party under conditions of confidentiality; or
• as a consequence of an abuse in relation to the designer or his or her successor in title.

In addition, an industrial design will still be regarded as new if it was disclosed 12 months before the application by the designer, his or her successor in title or a third party with the rights holder’s consent.

A design has ‘individual character’ if it evokes a different overall impression on the informed user from any other publicly available design. A designer’s degree of freedom is taken into consideration when assessing the design’s individual character.

Designs dictated solely by their technical function or designs which must be reproduced in their exact form and dimensions are excluded from protection. In addition, designs whose use would be contrary to public order or morality, or that include official signs or emblems, are excluded from protection.

Polish law limits the right conferred by an industrial design registration to the kinds of product for which protection is being sought, even though this is contrary to the EU Community Design Regulation. As a result, under Polish law the use of an industrial design for a different product from that for which protection was sought will not infringe the right, even if it does not give a different overall impression to an informed user.

Polish law does not provide for multiple applications, which are allowed under the EU Community Design Regulation. However, anyone seeking protection for an industrial design may include up to 10 forms of the design in the same application, provided that these have essential features in common. The number of design forms covered by one application may exceed 10 if these comprise a whole set of products.

The scope of protection of an industrial design is defined both in the illustrations and in the description of the design. The description must clearly designate the essential features of the design which distinguish it from other known designs and enable it to be identified. The description and illustrations constitute an integral part of the certificate of registration.

Protection for industrial designs is granted for 25 years from the filing date, divided into five-year periods. An industrial design registration gives the rights holder the exclusive right to exploit the industrial design for profit or professional purposes throughout the territory of Poland.

In particular, the rights holder may 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.

Copyright protection

Designs of industrial products may also enjoy copyright protection. Polish copyright law protects any expression of a creative activity that has individual character, regardless of the form in which it is expressed, its value, intended purpose or manner of expression.

The individual and unique character of a product is decisive when it comes to whether it qualifies for copyright protection in Poland.

Under copyright law, the rights holder has the exclusive right to use the creative work and to decide on all aspects of its commercial exploitation, as well as to receive compensation for its use. Unlawfully encroaching on someone’s copyright constitutes infringement.

No formal requirements apply in order to enjoy copyright protection. Polish law makes no provision for copyright notes or for registration of a creative work in order for copyright protection to be acknowledged.

However, in order to enforce copyright in an infringement case, it is necessary to prove the exact subject of protection, the work’s creative character, the date of creation and author, and the actual copyright holder entitled to enforce claims against the alleged infringer. In addition, the rights holder must specify all creative and distinguishing features of the copyrighted work which have been copied and incorporated into the copied products.

The term of copyright protection is 70 years, although this is calculated from a different point in time for individuals and for corporations. In the case of individuals it is calculated from the date of the author’s death, while for corporations it is calculated from the date of publication.

In case of infringement the rights holder can generally demand that the alleged infringer:

• cease the infringing activities;
• make reparation for the unfair practices;
• surrender any unlawfully obtained profits;
• pay compensation for damages if the infringement was wilful;
• publish an appropriate statement or the court’s decision in the press; and
• make a payment to a foundation that encourages artistic activities.

Unfair competition

A product’s appearance may also be protected under the Unfair Competition Law. The provisions of this law can be particularly helpful in situations where, for any reason, the rights holder has failed to register the product’s appearance as an industrial design or a trademark.

According to a general clause set out in Article 3 of the Unfair Competition Law, any act that contravenes law or decent practice and at the same time threatens or infringes the interests of another enterprise or consumers will be regarded as an act of unfair competition.

Some acts – such as misleading indications of products or services, imitation of products, slander or dishonest praise, blocking access to the market and dishonest advertising – are directly defined in the law. Others may be interpreted on the basis of the general clause in Article 3. For example, taking unfair advantage of the intellectual value and efforts of another company and of its reputation may constitute an act of unfair competition on the basis of the general clause.

In practice, the general clause is used to support claims deriving from an act of unfair competition, as defined by the law.

Pursuant to the Unfair Competition Law, any labelling of products or services – or lack thereof – which might mislead consumers as to the origin, quantity, quality, ingredients, manner of manufacture, usability or application, maintenance, conservation or other essential features of the goods or services constitutes an act of unfair competition. The introduction to the market of a product in packaging that may cause such confusion is also considered an act of unfair competition, unless the use of such packaging is justified by technical reasons.

Pursuant to the Unfair Competition Law, a single imitation of a product does not constitute an act of unfair competition. Only multiple imitations of a product which consist of copying its outward appearance using technical means will constitute unfair competition, provided that this is also likely to mislead customers as to the identity of the producer or the product.

Consequently, in order to seek protection under the Unfair Competition Law, the priority on the market and similarity of the products, as well as the risk of confusion, must be taken into account.

The scope of protection provided by the Unfair Competition Law in case of copying is extremely narrow. It covers only situations in which it is most unlikely that the average consumer will be able to distinguish an imitated product from the original one (slavish imitation), and where this similarity may mislead customers as to the identity of the producer. This misleading character is difficult to prove, since if a distinct indication of the producer and/or trademark has been placed on the product’s packaging or the product itself, this may exclude any risk of confusion.

The rights holder may demand that the unfair competitor:

• cease the unfair practices;
• make reparation for the consequences of the unfair practices;
• publish an appropriate statement in the press;
• pay compensation for damages;
• surrender any unlawfully obtained profits; and
• make a charitable donation for social purposes.

Anyone that copies the outward features of a product using technical means and then puts these copies on the market may be also liable to a fine or imprisonment if this behaviour could mislead customers as to the identity of the producer or the product and cause serious damage to another company.

Joanna Piłka
Attorney
[email protected]

Joanna Piłka has been a patent and trademark attorney since 2011. She has an MA in economics from Lazarski University in Warsaw and a diploma of postgraduate IP studies from Warsaw University. Her key areas of practice cover all issues relating to the protection of industrial designs, trademarks and domain names. She represents clients in administrative and litigation proceedings before the Polish Patent Office and the Office for Harmonisation in the Internal Market and is also experienced in handling court-administrative proceedings.