PreprintPDF Available

Abstract

Forthcoming in GRUR International (2020) Abstract: The protection of unregistered distinctive signs is essentially non-standardised at the international and EU level. The purpose of the paper is to provide an overview of the legal framework relating to the protection of trade names, unregistered trade marks and geographical indications from the perspective of Polish law in which protection of unregistered distinctive signs is predominantly available based on unfair competition law. The analysis takes account of the respective EU legislation, notably the Unfair Market Practices Directive and its impact on combatting unfair competition caused by use of distinctive signs under Polish law, as well as interactions with the national and EU legislation in other areas, such as trade mark law and protection of registered designations of origin and geographical indications. Comparative remarks are occasionally included. The paper also examines the issue of the nature of civil law protection of unregistered distinctive signs under Polish unfair competition law, which is the subject of divergent views among Polish scholars. With regard to the perplexing question of whether provisions of unfair competition law could constitute a basis for distinguishing exclusive rights to unregistered distinctive signs or whether they provide 'merely' tortious protection that does not presuppose the existence and infringement of such rights, the paper puts forward arguments in support of the latter qualification.
!
1!
Łukasz Żelechowski1
Protection of unregistered distinctive signs within unfair
competition law: the Polish perspective
This is the author’s original version (preprint)
Original final version will be published in GRUR International (forthcoming) /
Year: 2020
Abstract: The protection of unregistered distinctive signs is essentially non-
standardised at the international and EU level. The purpose of the paper is to
provide an overview of the legal framework relating to the protection of trade
names, unregistered trade marks and geographical indications from the
perspective of Polish law in which protection of unregistered distinctive signs is
predominantly available based on unfair competition law. The analysis takes
account of the respective EU legislation, notably the Unfair Market Practices
Directive and its impact on combatting unfair competition caused by use of
distinctive signs under Polish law, as well as interactions with the national and EU
legislation in other areas, such as trade mark law and protection of registered
designations of origin and geographical indications. Comparative remarks are
occasionally included. The paper also examines the issue of the nature of civil law
protection of unregistered distinctive signs under Polish unfair competition law,
which is the subject of divergent views among Polish scholars. With regard to the
perplexing question of whether provisions of unfair competition law could
constitute a basis for distinguishing exclusive rights to unregistered distinctive
signs or whether they provide ‘merely’ tortious protection that does not
presuppose the existence and infringement of such rights, the paper puts forward
arguments in support of the latter qualification.
Keywords: Unfair competition, Distinctive signs, Trade names, Unregistered trade
marks, Geographical indications, Misleading practices
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
1 Dr, Assistant Professor, University of Warsaw, Faculty of Law and Administration. This
publication was prepared in the course of a research project funded by the National Science Poland
Centre, Poland (project no 2014/13/D/HS5/01450). A wider examination of the topic of this paper
is presented in the monograph in Polish - Łukasz Żelechowski, Ochrona oznaczeń odróżniających
w prawie zwalczania nieuczciwej konkurencji. Zagadnienia konstrukcyjne (C.H. Beck, 2019),
[Title in English: Protection of distinctive signs in unfair competition law. Constructional issues]. !
!
2!
I. Introduction
National laws on the protection of unregistered distinctive signs are very strongly
embedded in the traditions of particular legal systems. This is demonstrated by a
diversity of types of distinctive signs in a comparative perspective, as well as a
lack of standardisation of the regimes of protection that may - depending on the
legal system – take the form of explicitly established exclusive rights or be
provided by respective domestic instruments of combatting unfair competition.
The purpose of this paper is to provide an overview of the legal framework in this
area from the perspective of Polish law in which protection of unregistered
distinctive signs is predominantly available based on unfair competition law.
While harmonisation of protection of unregistered distinctive signs on the EU
level, which could be a desirable development2, has not taken place so far, the
analysis undertaken from the perspective of domestic law must, however, take
account of the Unfair Commercial Practices Directive 2005/29 (UCPD)3 and its
national implementation. Furthermore, interactions with EU legislation in other
areas, notably trade mark law contained in the Trade Mark Directive 2015/2346
(TMD)4 and EU Trade Mark Regulation 2017/1001 (EUTMR)5, as well as
legislation concerning the protection of geographical indications, notably
Regulation No 1151/2012 on quality schemes for agricultural products and
foodstuffs (Reg. 1151/2012)6, cannot be ignored.
Concise introductory remarks concerning the general legal framework of
combatting unfair competition in Poland (part II) and the notion of distinctive
signs (part III) provide a setting for further analysis. Part IV contains an
examination of misleading practices concerning the use of various distinctive
signs. Part V discusses the possibilities of providing protection of distinctive signs
within unfair competition law beyond the limits of misleading practices. Part VI
examines the issue of the nature of civil law protection of unregistered distinctive
signs under Polish unfair competition law, and specifically the perplexing
question of whether provisions of unfair competition law could constitute a basis
for distinguishing subjective rights to unregistered distinctive signs or they
provide ‘merely’ tortious protection that does not presuppose the existence and
infringement of such rights. This issue is the subject of divergent views among
Polish scholars and the polarisation of opinions in this regard has grown in recent
years. Part VII examines the issue of interrelations between the regime of
protection under Polish unfair competition law and the regime of exclusive rights
to registered trade marks. Part VIII concludes.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
2 Study on the Overall Functioning of the European Trade Mark System presented by Max Planck
Institute for Intellectual Property and Competition Law, Munich, 15.2.2011,
https://publications.europa.eu/en/publication-detail/-/publication/5f878564-9b8d-4624-ba68-
72531215967e (Access 1.9.2019), 230-231.
3 Directive 2005/29/EC concerning unfair business-to-consumer commercial practices in the
internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and
2002/65/EC and Regulation (EC) No 2006/2004, OJ L 149, 11.6.2005, p. 2239.
4 Directive 2015/2436 to approximate the laws of the Member States relating to trade marks, OJ L
336, 23.12.2015, p. 126
5 Regulation 2017/1001 on the European Union trade mark, OJ L 154, 16.6.2017, p. 199
6 OJ L 343, 14.12.2012, p. 129.
!
3!
II. Dualism of the legal framework in Polish unfair competition law: Act
on Combatting Unfair Competition (AUC) and Act on Counteracting
Unfair Market Practices (AUMP)
There are two fundamental pieces of domestic legislation in Poland in the field of
broadly understood unfair competition law, the first being the Act on Combatting
Unfair Competition of 1993 (AUC)7 and the second the Act on Counteracting
Unfair Market Practices of 2007 (AUMP)8 which contains the domestic
implementation of the UCPD.
Introducing this dualism was motivated by the desire to display a different
orientation of interests that are primarily to be protected under each of these acts,
i.e. the AUC as directly oriented at protecting the interests of entrepreneurs, and
the AUMP, as directed in the first place at protecting the interests of consumers9.
It is, however, hardly possible to strictly separate in unfair competition law
protection of interests of traders or consumers, as reflected in recital 8 UCPD,
which indicates that a direct protection of consumer interests also indirectly
protects legitimate businesses from the unfair conduct of competitors. Against this
background, the dual model adopted by the Polish lawmaker is an object of
criticism10.
The purported separation is at least reflected in the shape of the entitlement to
claim civil liability under both acts. In the light of the AUC claims can be raised
only by an entrepreneur whose interest has been threatened or violated (Art. 18(1)
AUC) or – in most instances – also an organization whose statutory objective is to
protect the interests of entrepreneurs (Art. 19(1)(2) AUC). The model of civil law
enforcement was adopted by the Polish lawmaker also in the AUMP, which, by
contrast, does not give traders and their organizations rights to raise claims, but
gives such an entitlement to an individual consumer whose interest has been
threatened or violated (Art. 12(1) AUMP) and authorities or organisations
operating in the interest of consumers, listed in Art. 12(2) AUMP. It ought to be
further stressed that while the provisions of the AUC are very frequently applied
in disputes resolved in civil proceedings by courts, triggering civil law liability
under the AUMP is a marginal phenomenon. The sphere in which legal measures
against unfair market practices are employed in practice are administrative
proceedings concerning violation of collective consumer interests conducted
before the President of the Office of Competition and Consumer Protection.
The issue of the mutual relationship between the two legal acts – the AUC and the
AUMP - is a complex problem that goes beyond the very issue of protection of
distinctive signs. De lege lata the question arises whether the normative dualism
implies a differentiated assessment of (un)fairness of competition in the light of
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
7 Ustawa o zwalczaniu nieuczciwej konkurencji, 14.4.1993, consolidated text (2019) Dziennik
Ustaw, item 1010.
8 Ustawa o przeciwdziałaniu nieuczciwym praktykom rynkowym, 23.8.2007, consolidated text
(2017) Dziennik Ustaw, item 2070.
9 Igor B. Nestoruk, ‘§19 Poland’ in Frauke Henning-Bodewig (Ed), International handbook on
unfair competition (C H. Beck 2013), 423, 426-427.
10 Ryszard Skubisz, in Marian Kępiński (Ed) System Prawa Prywatnego, vol. 15 (C.H. Beck
2014), 408-414; Monika Namysłowska, ‘To B2C or not to B2C. Some Reflections on the
Regulation of Unfair Commercial Practices from a Polish Perspective’ (2013) JCP, 329, 335-339.
!
4!
both acts or despite this dualism assessments should be integrated within the
broadly understood notion of unfair competition law. While this paper does not
purport to provide a global solution to the above dilemma, it does examine,
however, the possibilities of integration of assessments made in the light of the
AUC and the AUMP concerning the use of distinctive signs (see IV, 3 and V).
III. Notion of distinctive signs
The collective notion of distinctive signs does not have a uniformly construed
scope or a legal definition in Polish law. The undisputed ‘core’ of this category
includes trade marks, designations of entrepreneurs or their businesses and
geographical indications11.
As far as designations of entrepreneurs and their businesses are concerned Polish
law adopts a normative separation of the entrepreneur’s name (firma) which has
its autonomous regime of protection in the Civil Code (CC)12, and the business
designation (oznaczenie przedsiębiorstwa) which is protected by provisions of
unfair competition law (see IV, 1.2.).
As far as trade mark protection is concerned, under Polish law the source of an
exclusive right is essentially the registration, except for well-known trade marks
within the meaning of Art. 6bis of the Paris Convention for the Protection of
Industrial Property, protected without registration (Art. 301 of the Industrial
Property Law, IPL13). Unregistered marks which are used but cannot be classified
as well-known marks, can only be protected based on unfair competition law (see
IV, 1.3.).
Geographical indications are protected under respective registration procedures
provided by EU law instruments 14 , in particular the Reg. 1151/2012, and
corresponding national legislation. There is also an autonomous system of
registration of geographical indications by the Patent Office of the Republic of
Poland introduced in 200115; its practical significance is, however, non-existent, as
there are currently no registrations in force. Protection of geographical indications
without registration is, however, possible also based on unfair competition law
(see IV, 1.4.).
Consequently, unfair competition law remains the main basis for protection of the
aforementioned types of distinctive signs, if they are unregistered.
There are naturally questions about the inclusion of other signs in the category of
distinctive signs. Such dilemmas concern in particular titles of works and press
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
11 Ryszard Skubisz, in Ryszard Skubisz (Ed) System Prawa Prywatnego, vol. 14A (2nd edn, C.H.
Beck 2017), 85.
12 Kodeks cywilny, 23.4.1964, consolidated text (2019) Dziennik Ustaw, item 1145, as amended.
13 Ustawa - Prawo własności przemysłowej, 30.6.2000, consolidated text - (2017) Dziennik Ustaw,
item 776, as amended.
14 Roland Knaak, ‘Geographical Indications and Their Relationship with Trade Marks in EU Law’
(2015) IIC, 843, 844-856.
15 For a presentation of the system see - Marian Kępiński, ‘Geographical Designations Under
Polish Industrial Property Law’ (2003) IIC, 751.
!
5!
titles, as well as domain names. Press titles and titles of works are not a subject of
any specific protection regime, like, for example, in German law in which the title
of the work (Werktitel) is a category of the commercial designation (geschäftliche
Bezeichnung) within the meaning of the German Markengesetz 5(1) and (3))
and in this capacity is a subject of an exclusive right 15(1)). In particular the
court system for registering press titles in Poland does not create any subjective
rights16. There are also no provisions in the area of unfair competition law that
would directly address the protection of titles. Despite a lack of a separate regime
of protection titles of works and press titles are sometimes classified as a separate
category of distinctive signs17; it is pointed out, however, that these are not
distinctive signs in a ‘classic’ sense18. In the absence of a sui generis regime, the
protection of titles may be provided by various existing regimes, e.g. by copyright
law, trade mark law (in the case of registering a title as a trade mark), or by unfair
competition law as unregistered trade marks19 or also – in the case of press titles -
business designations20.
Domain names are not considered under Polish law as a subject of any sui generis
exclusive rights and legal relations arising from the registration of a domain are of
a purely contractual character 21 . At the same time, domain names allow
determining the origin of a given information available on a website. If this
information contains a commercial offer, the domain name may begin to perform
functions typical of classic distinctive signs, in particular trade marks or business
designations, provided a domain name is not purely descriptive22. It can be argued,
however, that in a situation in which a domain has been registered as a trade mark
or granted deformalized protection under unfair competition law based on mere
use of it as unregistered trade mark or business designation, the subject of
protection is rather not the domain name ‘as such’, but a domain name as already
another kind of a distinctive sign, i.e. a trade mark or a business designation.
Nonetheless Polish unfair competition law does not contain provisions directly
aimed at protecting the domain names as such.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
16 Supreme Court, judgment of 5.2.2010, III CSK 120/09 (Legalis, No 350655).
17 Marian Kępiński and Igor B. Nestoruk, in Marian Kępiński (Ed) System Prawa Prywatnego, vol.
15 (C.H. Beck 2014), 215 ff; notably 232; Supreme Court, judgment of 16.4.2009, I CSK 24/09
(Legalis, No 255324)
18 Grzegorz Tylec, Ochrona tytułu utworu w prawie polskim (Lexis Nexis 2006), 123 ff.
19 Supreme Court, judgments: of 22.10.2002, 'III CKN 271/01 (Legalis, No 56450), of 5.2.2010, III
CSK 120/09, (Legalis, No 350655).
20 Marian Kępiński and Igor B. Nestoruk, ‘(n 17)’, 220-221.
21 Justyna Ożegalska-Trybalska, ‘Poland ‘.pl’’, in Torsten Bettinger and Allegra Waddell (Eds),
Domain name law and practice. An international handbook (2nd edn, OUP 2015,), 729, 731, and
Justyna Ożegalska-Trybalska, ‘Polen ‘.pl’’, in Torsten Bettinger (Ed), Handbuch des
Domainrechts. Nationale Schutzsysteme und internationale Streitbeilegung (2nd edn, Carl
Heymanns 2017), 863.
22 Justyna Ożegalska-Trybalska, ‘Poland ‘.pl’’, ‘(n 21)’, 729-730, and ‘Polen ‘.pl’’, ‘(n 21)’, 863.
!
6!
IV. Misleading use of distinctive signs
1. Legal framework under the AUC
1.1. General
The historical and comparative background, as well as the general structure of the
AUC, have been presented in publications of international scope23, which allows
focusing in these remarks on elements indispensable for further analysis.
The AUC regulates, according to its Art. 1, the prevention and combatting of
unfair competition in economic activity and, in particular, in industrial and
agricultural production, building industry, trade and services - in the public
interest, the interest of entrepreneurs and customers. Those three categories of
interests indicated in Art. 1 AUC are equivalent and should be balanced against
each other in the process of interpretation and application of the provisions of the
AUC, even if only entrepreneurs and their organisations are entitled to raise
claims under the AUC (see II). Next, the provision of the greatest significance in
the AUC is its so-called general clause in Art. 3(1) which defines an act of unfair
competition as an activity in violation of law or good practices that threatens or
infringes the interest of another entrepreneur or customer. In the light of this
flexible definition actions not covered by provisions on ‘specified’ acts of unfair
competition (those beings acts specifically regulated in Chapter 2 AUC) can still
be classified as ‘non-specified’ acts of unfair competition as long as they meet the
general criteria set out in Art. 3(1) AUC. This mechanism is referred to as the
supplementing function of the general clause24. Another important function of the
general clause is the corrective function which can be employed when despite
conditions of a given ‘nominated’ act of unfair competition from Chapter 2 AUC
being fulfilled, it would not be appropriate to establish unfair competition in the
light of the general requirements of Art. 3(1) AUC, in particular, if an examined
conduct could be not considered as violating good practices25. In the course of
further analysis references will be made to the supplementing function (see V) as
well as the corrective function (see IV, 1.3. and 3).
‘Specified’ acts of unfair competition in Chapter 2 AUC relating to the use of
unregistered distinctive signs are regulated in Arts. 5-7 AUC with regard to
business designations (see IV, 1.2.), Art. 10 AUC with regard to unregistered
trade marks (see IV, 1.3.) and Arts. 8-9 AUC (also to some extent Art. 10 AUC)
with regard to geographical indications (see IV, 1.4.). The general notion of
distinctive signs can also be found in Art. 16(3) AUC which lists (in its points 4-
8) conditions of permissible comparative advertising that relate to the use of
competitor’s distinctive signs and implements in this respect the standards of the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
23 Notably Ryszard Skubisz, Das Recht des unlauteren Wettbewerbs in Polen, (1994) GRUR Int.,
681; Janusz Szwaja, Die Genese der Generalklausel des neuen polnischen UWG (1996) GRUR
Int., 484; Ryszard Skubisz and Janusz Szwaja, ‘Poland: Unfair Competition Law’ in Reto M. Hilty
and Frauke Henning-Bodewig (Eds) Law Against Unfair Competition Towards a New Paradigm
in Europe? (Springer 2007), 231; Igor B. Nestoruk, ‘(n 9)’, 423.
24 Ryszard Skubisz, ‘(n 23)’, 684.
25 Ryszard Skubisz, ‘(n 23)’, 684.
!
7!
Directive 2006/11426. Art. 16(3) AUC concerns, however, all registered or
unregistered distinctive signs and does not introduce any specific regime of
protection of the latter; it is not therefore a subject of direct interest in this paper.
According to the prevailing view the existence of a competition relationship
between two entrepreneurs is not a requirement for the application of the AUC 27.
Neither Art. 3(1) AUC nor any other provisions of the AUC contains such a
requirement. With regard to some specified acts of unfair competition it is raised,
however, that the competition relationship must be present. For instance in the
light of Art. 5 AUC requiring a likelihood as to the identity of a business views
are expressed that two traders must remain in a competition relationship28. This
position can, however, be challenged, in the absence of such a stipulation in Art. 5
AUC29. Not without significance is also the lack of a normative definition of the
competition relationship, which in the view of various possible interpretations of
this notion would not contribute to the clarity of assessments, if the application of
the AUC was to be contingent on the existence of such a standalone preliminary
requirement. It appears that explicit normative requirements in Art. 3(1) AUC or
further provisions such as Art. 5 AUC constitute a sufficient barrier to too
excessive liability for unfair competition.
1.2. Businesses designations
In Polish law there is a juridical separation of, first, the entrepreneur’s name
(firma) whose function is merely the individualisation of an entrepreneur as a
legal subject and, second, the business designation (oznaczenie przedsiębiorstwa)
whose function is the individualisation of a business run by the entrepreneur. Both
types of designations are considered to be covered by the notion of 'trade name'
within the meaning of the Paris Convention (Art. 8)30.
The entrepreneur’s name has its own protection regime in Arts. 432–4310 CC.
Article 432 CC stipulates that the entrepreneur operates under firma (without any
reference to entrepreneur’s business). The personal scope of firma is very wide
because the entrepreneur as defined in Art. 431 CC is any natural person, legal
person or a so-called 'deficient’ legal person (a unit that has no legal personality
but has been granted legal capacity by law) who conducts commercial or
professional activity on its own behalf. Firma of an entrepreneur being a natural
person must obligatorily contain her or his forename and surname. It may also
include other arbitrarily chosen elements such as e.g. a pseudonym, elements
referring to the object of the entrepreneur's activity or to the locality in which she
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
26 Directive 2006/114 concerning misleading and comparative advertising, OJ L 376, 27.12.2006,
p. 2127.
27 Ryszard Skubisz, ‘(n 23)’, 682; Ewa Nowińska, in Ewa Nowińska and Krystyna Szczepanowska-
Kozłowska, Ustawa o zwalczaniu nieuczciwej konkurencji. Komentarz (Wolters Kluwer 2018), 64;
differently - Beata Giesen, in Marian Kępiński (Ed) System Prawa Prywatnego, vol. 15 (C.H.
Beck 2014), 6774.
28 E.g. Supreme Court, judgment of 17.6.2004, V CK 550/03, (Legalis No 63691).
29 Ewa Nowińska and Michał du Vall, Ustawa o zwalczaniu nieuczciwej konkurencji. Komentarz,
(Lexis Nexis 2013), 110.
30 Marian Kępiński and Jakub Kępiński, in: Janusz Szwaja (Ed) Ustawa o zwalczaniu nieuczciwej
konkurencji. Komentarz (5th edn, C.H. Beck 2019), Art. 5, para 27.
!
8!
or he operates (Art. 434 CC). Firma of an entrepreneur being a legal person
includes its name (Art. 435 § 1 CC), which might essentially be chosen arbitrarily.
Firma in this case must also indicate the legal status of the entrepreneur as a legal
person which may be abbreviated; other expressions may be included optionally
(Art. 435 § 2 CC). The structure of firma of specific types of entrepreneurs might
be subject to further requirements outside of the CC. A new firma should differ
sufficiently from other entrepreneurs’ names already present on the same market
(Art. 433 § 1 CC). It may not be misleading, in particular as regards the
entrepreneur's characteristics, the object and location of her/his or its activity,
place and supply sources (Art. 433 § 2 CC).
Further, Art. 4310 CC employs the notion of ‘a right to an entrepreneur’s name’
(prawo do firmy) and regulates remedies available in the case of infringement of
this right. The catalogue of these remedies, including injunctive relief, allows
concluding that the right to the entrepreneur’s name is an absolute right, effective
erga omnes31. The moment of the first actual, public and commercial use of firma
is relevant for the creation of this right and not the moment of recording firma in
the register of entrepreneurs or - in the case of entrepreneurs being natural persons
- in the Central Register and Information on Commercial Activity (Centralna
Ewidencja i Informacja o Działalności Gospodarczej)32.
The protection of the business designation is, on the other hand, guaranteed by
unfair competition law, specifically Arts. 5-7 AUC. Pursuant to Art. 5 AUC an act
of unfair competition is designating a business that may mislead customers as to
its identity through the use of an entrepreneur’s name (firma), emblem,
abbreviation or other characteristic symbol previously used, in accordance with
law, for the designation of another business. The fact that Art. 5 AUC refers to the
entrepreneur’s name as an example of a business designation raises questions as to
the consistency of the legal separation between those two types of distinctive
signs, to which I shall revert. There are no formal requirements concerning the
representation of the business designation. In particular, unlike the entrepreneur’s
name, the business designation does not have to be a word sign. Next, Art. 6 AUC
contains rules that are aimed at securing every entrepreneur the right to
commercially exploit her or his surname as a business designation while
simultaneously it provides tools allowing avoiding conflicts between designations
containing surnames. Finally, Art. 7 AUC concerns the issue of indicating the
entity authorized to use the business designation in the event of liquidation,
division or transformation of an enterprise.
The introduction of the current juridical dichotomy between the entrepreneur’s
name and the business designation in 2003 constituted a departure from the
approach under the Commercial Code of 1934 (no longer in force), whose
provisions modelled on German law shaped firma as a designation with a dual
function: first, being a designation of a ‘registered merchant’ and, second, as a
designation of merchant’s business33. The present legal distinction between the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
31 Marian Kępiński, in Marian Kępiński (Ed) System Prawa Prywatnego, vol. 15 (C.H. Beck
2014), 192.
32 Supreme Court, judgment of 5.3.2010, IV CSK 371/09 (Legalis, No 358161).
33 As of 1.1.1965 until the 2003 reform only commercial law companies had an entrepreneur’s
name (firma).
!
9!
entrepreneur’s name and business designation resembles the French model
differentiating between a company name (dénomination sociale) as
individualising a company and separate categories of, first, a business name (nom
commercial), which serves the purpose of individualising the business of a trader
(fonds de commerce) and, second, a shop sign (enseigne) which designates
business premises of the trader (l’établissement commercial) in its location34.
The change introduced in 2003 was being justified by the need to provide more
legal transparency in the sphere of designations of entrepreneurs and their
businesses35. The appropriateness of the solution adopted by the lawmaker in 2003
is, however, questioned. It has been mainly pointed out that in a situation in which
an entrepreneur uses firma also as a business designation the purported juridical
dichotomy of both categories of signs does not function without problems,
because, from the clientele's point of view, distinguishing when a specific act of
use is undertaken to individualise the entrepreneur and when the business can be
difficult (e.g. in the case of use of a sign in advertising, correspondence or bills)36.
In the context of the AUC, the question arises whether the protection of firma
under Art. 5 AUC is precluded in the light of the purported autonomy of the
regime of firma protection under the CC emphasised in the grounds of draft bill of
the 2003 reform. It is worth noting that the same amendment was not
accompanied by a parallel change of Art. 5 AUC already in force at that time
which until today invariably states that firma could, among others, constitute an
earlier business designation within the meaning of that provision. This
inconsistency of the lawmaker has been raised as an argument that also de lege
lata Art. 5 AUC applies to the entrepreneur’s name when the latter is used in the
capacity of a business designation37.
Despite the above dilemmas it is not possible to undermine the current legal
separation of the entrepreneur’s name and the business designation. Therefore the
only type of designation protected by Art. 5 AUC is the business designation and
the unchanged wording of Art. 5 AUC should be understood as meaning that
when an entrepreneur’s name is also used to designate a business, protection
under Art. 5 AUC concerns not the entrepreneur’s name as such, but the business
designation that coincides entirely or in a major part with the entrepreneur’s
name38. In such a situation infringing actions undertaken by another entrepreneur
may amount to an infringement of the right to the entrepreneur’s name in the light
of the CC, as well as simultaneously to an of unfair competition regulated in Art.
5 AUC39.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
34 Paul Mathély, Le droit français des signes distinctifs (Journal des Notaires et des Avocats 1984),
801, 806, 850; Frédéric Pollaud-Dullian, La propriété industrielle: propriété intellectuelle
(Economica 2011), 679-680, 694.
35 See. Explanatory summary of the government draft bill of 2.7.2002 on the amendment the Act
of the Civil Code and other acts, Sejm print No 666, available at:
http://orka.sejm.gov.pl/proc4.nsf/opisy/666.htm (Access 1.9.2019).
36 Joanna Sitko, ‘Dualizm oznaczeń przedsiębiorcy i przedsiębiorstwa obrzeża prawa własności
przemysłowej’, (2008 no 4) Przegląd Prawa Handlowego, 18, 22.
37 Arkadiusz Michalak, in: Małgorzata Sieradzka and Marian Zdyb (Eds), Ustawa o zwalczaniu
nieuczciwej konkurencji. Komentarz (2nd edn, Wolters Kluwer 2016), Art. 5, paras 11-12.
38 Marian Kępiński and Jakub Kępiński, ‘(n 30)’, Art. 5, para 34.
39 Supreme Court, judgment of 7.10.2008, III CSK 192/08 (Legalis, No 358161)
!
10!
There are several spheres in which the juridical separation of the entrepreneur’s
name and the business designation is clearly manifested. First, the entrepreneur’s
name can only have a verbal form, while the range of possible representation
forms of the business designation is potentially unlimited, provided they are
capable of distinguishing a business. Secondly, an entrepreneur has only one
firma40, whereas it might have several organized parts of its business (e.g. several
restaurants or hotels) each of which may be distinguished with a different
designation. Third, the business designation is an element of the business (the
latter being a complex of tangible and intangible elements serving the purpose of
conducting commercial activity - Art. 551 CC), expressly mentioned in Art. 551
point (1) CC. As such it is transferable at least with the transfer of the business
(Art. 552 CC) or an organized part thereof in which the designation is used, while
the entrepreneur’s name is not an element of the business, its assignability is
excluded by law (Art. 439 § 1 CC) and it can only be the subject of a license (Art.
439 § 2 CC).
In the light of Art. 5 AUC an act of unfair competition can be established when
the following conditions are satisfied. First, an entrepreneur seeking protection
must prove earlier use of the business designation. Second, this use must be
undertaken in accordance with the law, which means that it cannot infringe third
parties’ rights or legal provisions, in particular, regulatory provisions prohibiting
or restricting the use of certain signs41. Third, the use made by a third party must
result in the risk of customers being confused as to the identity of the business
(see IV, 3).
The protection of a business designation is not constituted by the mere first act of
use, but it is contingent on such an intensity of use that ensures actual contact of
customers with the designation, enabling it to acquire a certain degree of
recognition in the marketplace. It does not seem, however, justified to require a
territorially wide, especially nationwide, use42. Such a requirement is not laid
down in Art. 5 AUC. The essence of protection granted by this provision is to
prevent the risk of confusion which might also occur (even on a small territorial
scale) in the case of purely local prior use43.
The duration of protection of the business designation remains in relation to the
temporal extent of its use44. Lapse of protection is caused only by permanent
discontinuation of use, not by temporary discontinuation caused for example by
economic difficulties. Depending on the circumstances of the case, an additional
lapse of time after the permanent discontinuation of use might be necessary to
ensure that the use of an identical or similar designation by another entrepreneur
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
40 Art. 436 CC allows, however, the use of a branch name of an entrepreneur being a legal person
which must include the full entrepreneur’s name and the word „oddział” (‘branch’) along with the
indication of the locality where the branch is seated.
41 Supreme Court, judgment of 19.6.2002, II CKN 1229/00 (Legalis, No 57037).
42 Ryszard Skubisz, in Ryszard Skubisz (Ed) System Prawa Prywatnego, vol. 14B (2nd edn, C.H.
Beck 2017), 1279; Marcin Trzebiatowski, ‘Nabycie prawa do nazwy jako przeszkoda w rejestracji
znaku towarowego’ (2007 no 9) Przegląd Prawa Handlowego, 16, 17 and 19.
43 In a similar vein Jakub Kępiński and Marian Kępiński, in Marian Kępiński (Ed) System Prawa
Prywatnego, vol. 15 (C.H. Beck 2014), 215.
44 Marian Kępiński, ‘(n 31)’, 160.
!
11!
will no longer be confusing45. If, however, the discontinuation is caused by the
end of existence of the entrepreneur with no succession, the prospect of claiming
civil liability for the act of unfair competition under Art. 5 AUC is illusory due to
an absence of the party directly interested in bringing an action46.
1.3. Unregistered trade marks
The basis for the protection of unregistered trade marks is Art. 10(1) AUC which
regulates an act of unfair competition consisting in such labelling of goods or
services (or absence thereof) that might mislead customers as to origin, quantity,
quality, components, production methods, usefulness, repair, maintenance or other
important features of goods or services, or conceal risks connected with use
thereof. As this provision does not expressly refer to unregistered trade marks
decoding protection thereof requires interpretational manoeuvres. First, protection
against a likelihood of confusion as to the origin of goods or services is only a
part of the wide scope of this provision and only it this aspect Art. 10(1) AUC can
serve as a basis for the protection of unregistered trade marks. Second, the word
‘origin’ employed in Art. 10(1) AUC is not limited only to commercial origin,
which opens up the possibility of protecting to a certain extent geographical
indications under this provision (see IV, 1.4).
The scope of protection of unregistered trade marks pursuant to Art. 10(1) AUC is
shaped in a similar way as that of business designations in Art. 5 AUC. It is
necessary to demonstrate prior use of the mark that has been sufficient for it to
obtain a certain recognition on the market (even if prior use is not explicitly
required by Art. 10(1) AUC, unlike in Art. 5 AUC). This should not mean,
however, that a mark must be used nationwide or at least in a larger area of the
country and signs used locally may also be protected47. The temporal scope of
protection is linked to the temporal scope of the actual use, allowing, however, in
justified cases a certain additional margin after the permanent discontinuation of
use, so that an identical or similar mark can be used by another trader without
causing a likelihood of confusion. The latter circumstance is the key requirement
for the protection of unregistered trade marks under Art. 10(1) AUC (see IV, 3).
A lack of a legal definition of unregistered trade mark encourages an ancillary
reference to the definition of a registered mark (Art. 120(1) and (2) IPL
implementing Art. 3 TMD) as interpreted in case law48. Two requirements of the
latter definition being, first, the existence of a perceptible designation and, second,
the ability of that designation to distinguish goods and services, are of universal
nature and remain relevant also for unregistered marks. The third requirement
concerning a representation on the register which enables the competent
authorities and the public to determine the clear and precise subject matter of the
protection (replacing the previous requirement of graphic representation), is,
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
45 Marian Kępiński, ‘(n 31)’, 160.
46 Krystyna Szczepanowska-Kozłowska, in Ewa Nowińska and Krystyna Szczepanowska-
Kozłowska, Ustawa o zwalczaniu nieuczciwej konkurencji. Komentarz (Wolters Kluwer 2018),
129-130.
47 Differently Ryszard Skubisz, ‘(n 42)’, 1277-1279.
48 Case C-321/03 Dyson Ltd v Registrar of Trade Marks [2007] ECR I-00687, para 28.
!
12!
however, linked with the registration system and does not apply to unregistered
marks.
With no doubt, conventional word or figurative marks may be protected as
unregistered trade marks under the AUC. Non-conventional marks such as shape
marks or colour marks and combinations of colours are potentially eligible for
protection as unregistered trade marks, problematic could be, however, their
distinctiveness and presence of a likelihood of confusion49. Furthermore, a lack of
legal requirements concerning the representation of an unregistered mark opens
up a potential possibility of protection of further unconventional marks, such as
smell or taste marks. It should, however, be observed that in court litigation it is
necessary to evidence the form actually used by the claimant as an unregistered
mark, which with regard to smell or taste marks might encounter similar
difficulties as these present in registration proceedings. Symptomatic of such
difficulties could be the position of the CJ in case Levola Hengelo in which the
Court denied the possibility of a sufficiently precise way of expressing the taste of
a food product enabling it to be recognized as a work eligible for copyright
protection50.
Trademark protection under the AUC raises, however, dilemmas, especially
concerning non-conventional marks, similar to those existing under trade mark
law with regard to permanent exclusions set out in Art. 4(1)(e) TMD and
respectively in Art. 1291(1)(5) IPL. Those exclusions concern signs which consist
exclusively of the shape or – following the EU trade mark law reform – also
another characteristic which 1) results from the nature of the goods themselves, 2)
is necessary to obtain a technical result and 3) gives substantial value to the
goods. A sign that is subject to any of these exclusions cannot be registered even
if it de facto possesses an inherent or acquired distinctiveness51. The question
arises whether such signs could be protected as unregistered trade marks within
national unfair competition laws. The Court of Justice did not rule out such a
possibility 52. In the context of Art. 10(1) AUC it is the question whether use by a
third party of a sign identical or similar to an earlier sign excluded from
registration under Art. 1291(1)(5) IPL that nevertheless amounts to a likelihood of
confusion, could be considered as unfair competition.
When considering this issue it is worth pointing out that the rationale
underpinning indicated exclusions has been defined by the CJ as resting in
competition concerns and specifically in the public interest in avoiding creating
potentially perpetual monopolies resulting from a trade mark registration that
would effectively prevent other traders from exploiting signs covered by these
exclusions53. These are concerns not unfamiliar to the AUC which is oriented at
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
49 Supreme Court, with regard to shape marks judgments: of 14.10.2009, V CSK 102/09
(Legalis, No 288309); of 9.1.2008, II CSK 363/07 (Legalis, No 491897); with regard to a
combination of colours - judgment of 3.6.2009, IV CSK 61/09 (Legalis, No 218273).
50 Case C-310/17 Levola Hengelo BV v Smilde Foods BV, ECLI:EU:C:2018:899.
51 Case C-371/06 Benetton Group SpA v G-Star International BV, [2007] ECR I-07709, para 28.
52 Case C-48/09 P Lego Juris A/S v OHIM, [2010] ECR I-08403, para 61.
53 Case C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd.,
[2002] ECR I-05475, paras. 7879; Case C-205/13 Hauck GmbH & Co. KG v Stokke A/S and
Others, ECLI:EU:C:2014:2233, paras 18-19.
!
13!
the balancing of interests set out in Art. 1 AUC, i.e. the public interest, the interest
of traders and the interest of clients (see IV 1.1.). It might imply that signs
covered by the aforementioned exclusions should not be granted protection in the
light of the AUC. This appears arguably justified with regard to the first two
exclusions the first one resulting from the nature of the goods themselves and
the second one - the technical functionality exclusion. Consequently, signs that
would be subject to these two exclusions in trade mark law should not be
protected as unregistered trade marks on the basis of the AUC, even if they
possessed distinctiveness and a likelihood of confusion could be established. This
assertion finds additional support in Art. 10(2) AUC which explicitly rules out an
act of unfair competition when the use of a packaging of a product by a third party
is justified by technical reasons. This provision can be perceived as a
manifestation of a general concern about possible anti-competitive effects of
protection of distinctive signs in the scheme of the AUC. In the absence of a
general provision to that effect in the AUC (apart from Art. 10(2)) protection
under Art. 10(1) AUC could nevertheless be denied with the employment of the
corrective function of the general clause in Art. 3(1) AUC (see IV, 1.1) by
accepting a lack of violation of ‘good practices’ in a situation when a third party
exploits a form that should be left in the public domain unless it is protected by
some other relevant IP right (e.g. patent). It is dubious, however, if the same
outcome could be achieved in the light of provisions on misleading practices in
the AUMP which implements the UCPD, for reasons set out in IV, 3.
A different approach is justified with regard to the impact of the ‘substantial
value’ exclusion on assessments made in the light of the AUC. This exclusion
(concerning in the light the pre-reformed EU law only shapes) has the purpose of
separating objects that should be protected under trade mark law from those that
should be protected by design law or copyright law54. It proved, however, not to
constitute any significant barrier to the cumulative protection of shapes as trade
marks and also designs or works, which gave rise to postulates for its deletion and
allowing registration of shapes determining the commercial value of goods
contingent on acquired distinctiveness55. In view of the continued presence of this
exclusion, the question remains valid whether it is not a too restrictive tool in the
area of trade mark law, given that it cannot be overcome by the distinctiveness of
even a very attractive sign56. Its rationale also appears to be less driven by
competition concerns than in the case of two previous exclusions57. There is,
therefore, no apparent reason for refusing protection under Art. 10(1) AUC
against confusing use of signs identical or similar to those falling under the said
exclusion in trade mark law.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
54 Annette Kur, in Annette Kur and Martin Senftleben, European Trade Mark Law. A Commentary
(OUP 2017), 168; in Polish literature - Anna Tischner, Kumulatywna ochrona wzornictwa
przemysłowego w prawie własności intelektualnej (C.H. Beck 2015), 340.
55 Study, ‘(n 2)’, 7274.
56 Annette Kur, ‘Too Common, Too Splendid, or ‘Just Right’? Trade Mark Protection for Product
Shapes in the Light of CJEU Case Law’, (2014) Max Planck Institute for Innovation &
Competition Research Paper No 1417, 2425.
57 Anna Tischner, ‘(n 54)’, 340.
!
14!
1.4. Geographical indications
The issue of the protection of geographical indications under the AUC has little
practical significance, which is to a large extent caused by developments in the
case law of the CJ regarding the determination of the relationship between
respective EU legal instruments in the field of protected designations of origin
(PDOs) or protected geographical indications (PGIs) and national laws of Member
States.
Specific acts of unfair competition pertaining directly to the use of geographical
indications are regulated in Arts. 8 and 9 AUC. The first provision concerns false
or misleading use of so-called simple geographical indications, conveying merely
a message about the geographical origin of products where there is no specific
link between their characteristics and their origin. Art. 9(1) AUC protects, in turn,
against false or misleading use of protected geographical indications or protected
designations of origin which relate to goods that owe their special characteristics
or properties to their geographical origin. This provision protects therefore
qualified geographical indications. Art. 9(1) AUC requires further that goods or
services labelled with protected geographical indications or designations of origin
must enjoy protection in their ‘place of origin’ in order to benefit from the
protection based on Art. 9(1) AUC. This implies its applicability only to foreign
qualified geographical indications, since requiring domestic qualified indications
to have already been granted protection in Poland by some other regime, in order
to enjoy protection under Art. 9(1) AUC, would not be a reasonable and
acceptable solution58. National qualified geographical indications may, however,
be protected under Art. 10(1) AUC which due to its very broad scope can
accommodate also cases of false or misleading use concerning the geographical
origin and/or characteristics of goods or services (see IV, 1.3.)59. Additionally,
Art. 9(2) AUC stipulates that the use of protected geographical indications or
designations of origin even with the added words ‘variety of’, ‘type of’, ‘method’
or synonyms thereof, also amounts to an act of unfair competition.
The scope of possible protection under the AUC is significantly limited in the
light of the case-law of the Court of Justice regarding the relationship between
national laws and protection of PDOs and PGIs for agricultural products and
foodstuffs currently governed by the Reg. 1151/2012. The conclusions based on
this case law are considered as, in principle, valid also with regard to the
relationship between protection based on the AUC and protection regulated in
other EU regulations concerning PDOs and PDIs60.
First, the existence of the EU system for the protection of PDOs and PDIs for
agricultural products and foodstuffs does not preclude protection under Art. 8
AUC of simple geographical indications as such indications remain outside of the
scope of the Reg. 1151/201261. Second, names registered as PDOs or PDIs at the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
58 Ryszard Skubisz, in Ryszard Skubisz (Ed) System Prawa Prywatnego, vol. 14C (C.H. Beck
2017), 165-166.
59 Ibid.
60 Ryszard Skubisz, ‘(n 58)’, 170171.
61 Case C-312/98 Schutzverband Gegen Unwesen in der Wirtschaft eV v. Warsteiner Brauerei
Haus Kramer GmbH & Co KG. [2000] ECR I-09187, paras 43-46.
!
15!
EU level cannot benefit from national protection save for instances permitted by
respective EU instruments, such as transitional protection referred to in Art. 9
Reg. 1151/2012 granted at the national level to a name applied for registration62.
Such names are therefore excluded from protection as either qualified indications
under Art. 9 AUC, or as simple indications under Art. 8 AUC63.
Third, product names that have not been registered or filed for EU protection, but
meet the conditions of eligibility for protection as PDOs or PDIs cannot be
protected on the basis of bilateral agreements between Member States or
provisions of domestic acts because of as per CJ’s case law - the exhaustive
nature of protection under Reg. 1151/201264 (also under the Regulation No
1308/201365 with regard to wine names66). Since PDOs and PGIs protected under
the EU law are qualified geographical indications, the above rule means that
names eligible for protection on the EU level may not be protected under Art. 9
AUC (or under Art. 10 AUC). They can, however, benefit from protection as
simple indications under national laws of Member States on two conditions (as
per CJ’s judgment Assica)67 . First, the application of national law must not
undermine the objectives of the Reg. 1151/2012, namely respective provisions of
national law can only protect such names as simple geographical indications.
Second, the application of national law must not contravene the principle of the
free movement of goods (Art. 34 TFEU, ex 28 EC), i.e. it cannot lead to
promoting the marketing of products of domestic origin to the detriment of
imported products. With regard to Polish law, it appears that Art. 8 AUC complies
with both of these conditions, as it exclusively serves the purpose of protecting
simple geographical indications and it has no built-in discriminatory effect that
could impede the principle of free movement of goods68.
2. Legal framework under the AUMP
Among provisions of the AUMP (which implements the UCPD see II)
provisions on misleading practices are relevant with regard to protection against
unfair practices concerning the use of distinctive signs. First, Art. 5(2)(3)
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
62 Case C-87/97 Consorzio per la tutela del formaggio Gorgonzola v Käserei Champignon
Hofmeister GmbH & Co. KG and Eduard Bracharz GmbH [1999] ECR I-01301, para 18. In Polish
law transitional protection is regulated in Arts. 35-38a of the Act of 17.12.2004 on the registration
and protection of names and designations of agricultural products and foodstuffs as well as on
traditional products, consolidated text (2017), Dziennik Ustaw item 1168, as amended.
63 Edyta Całka, in Ryszard Skubisz (Ed) System Prawa Prywatnego, vol. 14C (C.H. Beck 2017),
100.
64 Case C-478/07 Budĕjovický Budvar, národní podnik v Rudolf Ammersin GmbH [2009] ECR I-
07721, para 129.
65 Regulation No 1308/2013 establishing a common organisation of the markets in agricultural
products and repealing Council Regulations No 922/72, No 234/79, No 1037/2001 and No
1234/2007, OJ L 347, 20.12.2013, p. 671854.
66 Case C-56/16 EUIPO v Instituto dos Vinhos do Douro e do Porto, ECLI:EU:C:2017:693, paras
83, 89-93.
67 Case C-35/13 Assica Associazione Industriali delle Carni e dei Salumi and Kraft Foods Italia
SpA v Associazioni fra produttori per la tutela del ‘Salame Felino’ and Others,
ECLI:EU:C:2014:306, paras 30-35.
68 Protection granted by the AUC is subjected directly to the principle of national treatment in the
Paris Convention for the Protection of Industrial Property in conjunction with Art. 4 AUC.
!
16!
(implementing Art. 6(2)(a) UCPD) pertains to practices connected with putting
products on the market, in particular comparative advertising, which might cause
confusion concerning products or packaging thereof, trade marks, trade names or
other signs distinguishing a trader and his products. Second, Art. 5(3)(2) AUMP
(implementing Art. 6(1)(b) UCPD) determines elements in relation to which the
misleading effect might occur, listing among them the geographical and
commercial origin of a product. It should be added that Art. 2(3) AUMP
(implementing Art. 2(c) UCPD) adopts a wide understanding of a product as
meaning any goods or services including immovable property, civil law rights and
obligations.
Furthermore, Art. 7 point 13 AUMP has a potential significance for the issue of
the use of distinctive signs. This provision qualifies advertising of a product
similar to the product of another manufacturer in a manner deliberately and falsely
suggesting to the consumer that the product is made by the manufacturer who
advertises it, as a ‘blacklisted’ misleading practice, considered as unfair in all
circumstances (Annex I point 13 UCPD)69. While this provision prohibits directly
advertising activities that may be misleading as to the commercial origin of the
imitated products themselves, this effect may be caused, among others, by the use
of misleading trade marks or other distinctive signs on the product.
3. Assessment of misleading use of distinctive signs in the light of the AUC
and the AUMP
The acts of unfair competition under the AUC and misleading market practices
under the AUMP discussed above (IV, 1 and 2) require establishing a misleading
effect of the use concerning various aspects the identity of the business in the
case of business designations, the commercial origin of goods or services in the
case of unregistered trade marks, the geographical origin and/or properties of
goods linked to this origin in the case of geographical indications.
The appropriate reference point for making these assessments is the perception of
the average consumer. The legal definition of this notion contained in Art. 2 point
8 AUMP refers to the model of a reasonably well-informed and reasonably
observant and circumspect person in line with recital 18 UCPD and earlier case-
law shaping this notion70. This provision simultaneously stresses the necessity to
take into account social, cultural, linguistic factors, as well as relying on recital
19 UCPD – perspective of ‘vulnerable’ consumers, being a clearly identifiable
group of consumers, particularly susceptible to the impact of a market practice or
a product to which the market practice relates, due to specific characteristics such
as age, physical or mental disability. Recital 18 UCPD emphasizes that the
average consumer test is not a statistical test. There are, however, questions
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
69 Art. 7 point 13 AUMP employs the term 'advertising' instead of a wider term 'promoting' used in
Annex I, point 13 UCPD. This discordance could, however, be eliminated by a wider
understanding of the term 'advertising' in order to provide a coherence with the UCPD Katarzyna
Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności
intelektualnej (Wolters Kluwer 2010), 329-330.
70 Case C-210/96 Gut Springenheide GmbH i Rudolf Tusky v Oberkreisdirektor des Kreises
Steinfurt – Amt für Lebensmittelüberwachung [1998] ECR I-04657, para 31.
!
17!
connected with a potential relevance of empirical data showing actual consumer
reactions or use of behavioural economics in the light of the UCPD 71 or in other
areas where consumer perceptions are relevant, such as trade mark law72. It should
be noted that the case law permits at least use of evidence such as surveys or
experts’ opinions in a situation where the court has a particular difficulty in
assessing the misleading character of a given practice from the perspective of the
average consumer73. Applying the so-called concrete method of assessment of a
misleading practice in unfair competition law (see remarks below) might arguably
encourage making use of the latter possibility in court practice.
Furthermore, there is a tendency in case-law to refer to the average consumer
within the meaning of the AUMP also for the purpose of making assessments in
the light of the AUC in respect of acts of unfair competition relating to the risk of
confusion or otherwise misleading practices74. It can be argued that also the
vulnerability of certain groups of consumers could be taken into account when
applying the provisions of the AUC75. Justification for this integrating approach
rests upon the fact that despite the dualism of both acts, i.e. the AUC as directly
oriented at B2B relations and the AUMP – at B2C relations (see II), a strict
separation of interests protected under each of both acts is not possible, which is
particularly evident in the sphere of misleading practices that do harm the interests
of both traders and consumers. In this very sphere the integration of the goals
pursued by unfair competition law, consisting in the protection of interests of
consumers, professional purchasers, traders-competitors, as well as the protection
of the general public interest in maintaining undistorted competition, is
particularly visible; a uniform approach towards consumer perceptions should be
considered as a tool for integrating assessments in this respect76. One should add,
that features of the average consumer can also be useful in the light of the AUC
for determining the characteristics of a specialized purchaser taking into account
the level of attention appropriate to a given group of such purchasers to whom a
given commercial practice is addressed77.
The second aspect of integration of assessments made in the light of the AUC and
the AUMP can be seen in the so-called concrete method of assessing the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
71 Bram B. Duivenvoorde, The Consumer Benchmarks in the Unfair Commercial Practices
Directive (Springer 2015), 159 ff.
72 Jennifer Davis, ‘Revisiting the average consumer: an uncertain presence in European trade mark
law’, (2015) IPQ, 15.
73 Case C-210/96 Gut Springenheide ‘(n 70)’, paras. 3537.
74 Supreme Court, judgment of 14.10.2009, V CSK 102/09, (Legalis, No 288309); judgment of
4.3.2014, III SK 34/13, (Legalis No 994606). Already prior to the entry into force of the AUMP -
judgment of 3.12.2003, I CK 358/02 (Legalis, No 62807) concerning misleading advertising.
75 Already prior to the entry into force of the AUMP - Supreme Court, judgment of 2.10.2007, II
CSK 289/07, (Legalis, No 87042), concerning misleading advertising in the light of 16(1)(2) AUC
with regard to vulnerability of perceptions of sick and elderly people purchasing medications.
76 Anna Tischner, Model przeciętnego konsumenta w prawie europejskim, (2006 no 1) Kwartalnik
Prawa Prywatnego, 199, 204. See also Jennifer Davis, ‘Exiling the unwary consumer from
unregistered trade mark law in the UK: the case for change‘ in: Graeme B. Dinwoodie, Mark D.
Janis (Eds), Trademark Law and Theory: Reform of Trademark Law (forthcoming), discussing
possibilities of adopting within the UK passing off claim (concerning unfair competition)
approaches allowing to import the average consumer test, especially regarding within the so-called
extended passing off.
77 Case C-112/99 Toshiba Europe GmbH v Katun Germany GmbH, [2001] ECR I-07945, para 52.
!
18!
misleading use of a distinctive sign from the perspective of the average consumer,
i.e. by taking into account all circumstances accompanying use a given sign,
including circumstances such as prices applied by both parties to the dispute or
overall presentation of the products. This method can be opposed to the abstract
method, relevant in the realm of trade mark law which is focused on taking into
account normative criteria of infringement, primarily the degree of similarity of
signs and goods or services (Art. 10(2)(b) TMD) and the recognition of the earlier
mark on the market (recital 16 TMD) without extraneous elements. The concrete
method due to its focus on the real market situation allows determining the
misleading character of a given practice in a more flexible manner than the
abstract method which on its part allows determining a relatively stable sphere of
exclusivity conferred by trade mark rights78. Despite instances of a concrete
assessment of trade mark confusion in infringement cases occurring in recent
years79, the above opposition should be still be considered as demarcating varying
approaches under trade mark law and unfair competition law. The need to use the
concrete method in unfair competition law is manifested by Art. 6(1) UCPD
which requires the overall presentation of the product to be taken into account
when assessing a misleading character of a given practice80. In Polish law this
principle is expressed in Art. 5(4) AUMP and should also be considered as
relevant in the light of the AUC.
In Polish domestic case-law the need to apply the concrete method when making
assessments under the AUC has not always been observed. In particular in cases
of simultaneous cumulative protection of registered trade marks under the IPL and
also under Art. 10 AUC (see section VII), rules for assessing the likelihood of
confusion under trade mark law have sometimes been quite mechanically applied
under the AUC, which has been described as turning the AUC into the IPL bis81.
Such practice is flawed and it justifies a postulate for greater attention given in
case law to differences between the methodology of assessment of a likelihood of
confusion in trade mark law and misleading practices in unfair competition law.
It cannot, however, be ruled out that despite the posited integration of assessments
with regard to misleading practices under the AUC and the AUMP, resulting
from, first, a common approach towards consumer perceptions and, second,
applying the concrete method of assessment, the outcome concerning the legality
of a misleading practice could be different under the current dual framework. An
example in that regard could the earlier described issue of protection within unfair
competition law of signs falling under the exclusions set out in Art. 4(1)(e) TMD
and Art. 1291(1)(5) IPL. As argued above, even if such signs possessed
distinctiveness and their use could lead to a likelihood of confusion, illegality of
the confusing use could still be denied under the AUC due to competition
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
78 Ryszard Skubisz, ‘(n 42)’, 12341235; Ansgar Ohly, ‘Interfaces between Trade Mark Protection
and Unfair Competition Law Confusion About Confusion and Misconceptions about
Misappropriation?’ In Nari Lee et al. (Eds), Intellectual Property, Unfair Competition and
Publicity. Convergences and Development (Edward Elgar 2014), 40-47.
79 Ansgar Ohly, ‘(n 78)’, 45-47.
80 Ansgar Ohly, ‘(n 78)’, 42, 46.
81 Tomasz Targosz, ‘Stosunek praw wyłącznych do ustawy o zwalczaniu nieuczciwej
konkurencji’, in Justyna Ożegalska-Trybalska and Dariusz Kasprzycki (Eds) Aktualne wyzwania
prawa własności intelektualnej i prawa konkurencji. Księga pamiątkowa dedykowana Profesorowi
Michałowi du Vallowi (Wolters Kluwer 2015), 742.
!
19!
concerns (save for instances of signs giving substantial value to goods), under the
corrective function of the general clause in Art. 3(1) AUC (see IV, 1.3.). A similar
outcome under the AUMP appears, however, dubious, since once a practice has
been qualified as misleading, it cannot be viewed through the lens of the general
clause of ‘professional diligence’ contained in Art. 5(2)(a) UCPD as per the CJ’s
position expressed in CHS Tour Services82. One should add that in line with this
judgment the possibility of viewing misleading practices through the general
clause in Art. 4(1) AUMP83 was expressly excluded in Polish law in 2014 by the
amended Art. 4(2) sentence 2, which consequently precludes the corrective
function of the general clause in Art. 4(1) AUMP, similar to the one performed by
Art. 3(1) AUC. This touches upon a more general question about the integration
of assessments with regard to functional, but distinctive signs under trade mark
law and unfair competition law, Concerns may arise about a possible lack of
consistency resting in introducing ‘through the back door’ via regulations
concerning unfair market practices protection that would be denied under trade
mark law 84. Regardless of the direction of possible future solutions to this
problem, it appears that in view of the existing dualism of the AUC and the
AUMP in Polish law use by a third party of signs falling under any of the said
exclusions in trade mark law could still be unlawful under the AUMP as long as it
could be qualified as a misleading practice, even though trade mark registration
and – arguably – protection under the AUC was to be denied (in the latter case
save for signs giving ‘substantial value’ to goods).
V. Protection of reputation of distinctive signs
The issue of protection of distinctive signs having a reputation beyond the scope
of misleading practices has had a particular relevance in Polish court practice with
regard to trade marks and business designations. Such a possibility has been
allowed as a ‘non-specified’ act of unfair competition contrary to good practices
based on the supplementing function of the general clause in Art. 3(1) AUC (see
IV, 1.1.)85. There are, however, dilemmas connected with the scope of such
protection. The question arises to what extent the model of the so-called extended
protection of trade marks having a reputation existing in trade mark law (Art.
10(2)(c) TMD, Art. 296(2)(3) IPL) should also be relevant in the light of the
AUC. This dilemma is especially present in the case of simultaneous cumulative
protection of registered trade marks having a reputation under both the IPL and
the AUC (see VII). It has been argued that in the latter case awarding protection
based on Art. 3(1) AUC that would go beyond the requirements set out in trade
mark law (e.g. by allowing other forms of infringement than those set out in Art.
296(2)(3) IPL or imposing less strict evidentiary requirements concerning
extended protection than in the light of the IPL) would lead to a violation of the
standards of the TMD, and thus a breach of EU law86. Formally this argument
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
82 Case C-435/11 CHS Tour Services GmbH v Team4 Travel GmbH, ECLI:EU:C:2013:574, para
48.
83 See remarks under ‘(n 92)’.
84 Annette Kur, ‘(n 54)’, 158 (in fn 387) highlighting the problem.
85 Supreme Court, judgments: of 12.10.2005, III CK 160/05, (Legalis, No 72857); of 23.10.2008,
V CSK 109/08 (Legalis, No 140193).
86 Ryszard Skubisz, ‘(n 11)’, 112.
!
20!
may raise doubts since the provisions of the AUC do not implement the TMD and
do not regulate issues of trade mark protection as such. The need to take account
of the model of extended protection in trade mark law when applying Art. 3(1)
AUC can be, however, justified by referring to the common goal of trade mark
law and unfair competition law which is the protection of undistorted
competition87. From this perspective protection of reputation of a distinctive sign
based on Art. 3(1) AUC should not - at least as a rule – extend beyond the
standard set by the scope of extended protection in trade mark law, the latter being
a concretised result of balancing of competing interests of market participants88.
This should equally apply to cases of cumulative protection of registered trade
marks, as well as protection of trade marks not registered at all and business
designations. The question could rather be posed whether the approach towards
granting protection to reputable signs under Art. 3(1) AUC should not be even
stricter, given that extended protection in trade mark law serves primarily the
interest of the trade mark holder89, whereas the AUC is oriented at the balancing
of equivalent interests set out in Art. 1 AUC. From this perspective, while the
types of interference provided for in Art. 10(2)(c) TMD consisting in the
detriment to the distinctive character or the repute of the trade mark do assume
some distortion of the relationship between the trader and his clientele90, and such
cases might thus be perceived as deserving protection also under Art. 3(1) AUC, it
could be questioned, however, whether the same might be said of another type of
interference set out in Art. 10(2)(c) TMD that consists in taking unfair advantage
of reputation or distinctive character. It is not a detriment-oriented interference as
it consists ‘purely’ in a third party benefiting from an investment made by the
right-holder91. This instance, therefore, fits rather into the model of protection
against misappropriation of a monopolistic position within an exclusive right,
rather than protection aimed at securing the fairness of competition in the name of
balancing of the interests indicated in Art. 1 AUC.
The optic changes even more radically in the light of the AUMP, where it appears
hard to accept that the use of distinctive signs with a reputation could be
considered as unlawful outside of the scope of misleading practices, based directly
on the general clause in Art. 4(1) AUMP 92 . In particular, as regards the
‘neighbouring’ issue of product imitations, recital 14 UCPD provides that it is
not the intention of this Directive to reduce consumer choice by prohibiting the
promotion of products which look similar to other products unless this similarity
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
87 The CJ enunciated on many occasions that trade mark rights constitute an essential element of
undistorted competition e.g. Case C-10/89 SA CNL-SUCAL NV v HAG GF AG. [1990] ECR I-
03711, para 13; Case C-517/99 Merz & Krell [2001] ECR I-06959, para 21.
88 In a similar vein Anna Tischner, ‘(n 54)’, 402-403.
89 Martin Senftleben, in Annette Kur and Martin Senftleben, European Trade Mark Law. A
Commentary (OUP 2017), 340, refers to the extended protection as a ‘selfish endeavour’.
90 As per the ‘change of consumer behaviour’ requirement set by the CJ in Case C-252/07 Intel
Corporation Inc. v CPM United Kingdom Ltd [2008] ECR I-08823, para 77, concerning the
detriment to the distinctive character.
91 Case C-487/07 L'Oréal SA, Lancôme parfums et beauté & Cie SNC and Laboratoire Garnier &
Cie v Bellure NV, Malaika Investments Ltd and Starion International Ltd. [2009] ECR I-05185,
para 50.
92 It should be noted that the Polish lawmaker used in Art. 4(1) AUMP the clause of ‘good
practices’ (as in Art. 3(1) AUC) instead of ‘professional diligence’ used in Art. 2(h) and Art.
5(2)(a) UCPD; proper convergence could, however, be provided by interpreting ‘good practices’
in the AUMP in line with ‘professional diligence’ in the UCPD - Ewa Nowińska, ‘(n 27)’, 83-86.
!
21!
confuses consumers as to the commercial origin of the product and is therefore
misleading’. While imitations that do not lead to the risk of confusion might
threaten the interests of entrepreneurs, they do not threaten the interests of
consumers93 and requirements of misleading practices as to the commercial origin
of the product should, therefore, set the limits to the illegality of actions in the
case of imitations from the point of view of the AUMP94. It appears that similar
reasoning should be adopted with regard to the protection of distinctive signs, i.e.
protection against practices connected with use of such signs based on the AUMP
should only be limited to misleading practices95.
VI. Nature of the civil law protection of distinctive signs within Polish
unfair competition law
There seems to be little controversy nowadays that the general formula of the
unfair competition act in the light of Art. 3(1) AUC does not constitute a basis for
a general exclusive right of an entrepreneur, such as a right to an enterprise, but
instead it protects economic interests under the tort regime96 . Doubts arise,
however, as to whether provisions concerning some of the ‘specified’ acts of
unfair competition could constitute a basis for distinguishing IP rights. Some of
these provisions fairly precisely define the subject of protection and the sphere of
actions prohibited to third parties, thus resembling the way in which the scope of
exclusive intellectual property rights is shaped. Views arguing the existence of
subjective rights are presented with regard to business designations (Arts. 5-7
AUC), and unregistered, but used trade marks (Art. 10 AUC) where in both cases
the scope of potential IP rights could be seen as being determined by the
requirement of a likelihood of confusion97. With regard to business designations
the above dilemmas are reminiscent of similar dilemmas under French law where
despite the fact the business name (nom commercial) is not protected by the
infringement action (action en contrefaçon), but by the unfair competition action
(action en concurrence déloyale) based on the general tort formula (currently
Arts. 1240 and 1241 of the French Civil Code), it is argued that nom commercial
does constitute an object of an exclusive proprietary right98.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
93 Estelle Derclaye and Matthias Leistner, Intellectual Property Overlaps: A European Perspective
(Hart Publishing 2011), 107-108.
94 Anna Tischner, ‘(n 54)’, 389-390.
95 See Explanatory Memorandum to the Proposal for a Directive concerning unfair business-to-
consumer commercial practices in the Internal Market, document COM (2003) 356 final,
2003/0134 (COD), 10, para 40, expressly mentioning consumer confusion caused by use of
distinctive signs as harming interests of consumers and included in the scope of the UCPD.
96 Beata Giesen, ‘(n 27)’, 74-88; Ł. Żelechowski, ‘(n 1)’, 424-456.
97 This position was put forcefully with regard to business designations (Art. 5 AUC) in the
judgment of the Supreme Court of 7.10.1999, I CKN 126/98, (2001) GRUR Int., 639 (with a
commentary by Marian Kępiński). In the same vein in literature with regard to business
designations - Marian Kępiński, ‘(n 31)’, 162; Marcin Trzebiatowski, ‘(n 42)’, 16; with regard to
unregistered trade marks - Jakub Kępiński and Marian Kępiński, ‘(n 43)’, 200; Marcin
Trzebiatowski, ‘Prawo do niezarejestrowanego znaku towarowego jako składnik przedsiębiorstwa
(krytyka wyroków WSA i NSA w Warszawie)’ (2009 no 5) Rejent, 100.
98 Frédéric Pollaud-Dullian, ‘(n 34)’, 666667.
!
22!
A thorough examination of this issue is not possible within the framework of this
paper99. Taking as a starting point that the principle of numerus clausus of IP
rights remains valid100 and means that there must be a legal framework oriented at
protecting a specific intangible object where this framework if not expressly than
at least through interpretation could be considered as giving a basis for
distinguishing an IP right to this very object101, one can raise systematic doubts
whether Art. 5 or Art. 10(1) AUC could constitute such norms.
First, as indicated in IV.3, the relevant method of assessing the likelihood of
confusion in the light of the AUC is the flexible concrete method detached from
any predetermined normative criteria which remains in opposition to the so-called
abstract method, the latter being relevant - as a rule - in the area of trade mark law
as delimiting with a certain degree of precision the scope on an exclusive right.
From that perspective it is hard to accept that application of the concrete method
could delineate a sphere of exclusivity of any IP right that would have sufficiently
stable boundaries.
Second, that there are important arguments that a positive side embracing a sphere
of authority that can be actively exercised by a right-holder is an indispensable
structural element of exclusive rights, including IP rights. This assertion finds
support in the theory of allocation of goods (German: Theorie der
Güterzuordnung), namely the existence of the positive sphere allocating an
authority over a certain object to a certain right-holder and consisting of the right
to use this object and to dispose of it, is a manifestation that an IP right is a static
construction which exists independently of any instance of infringement 102 .
Requirements for acts of unfair competition, as stipulated in Arts. 5 and 10 AUC,
are, however, directed ‘only’ towards the determination of an unlawful conduct,
not towards the delineation of a static sphere of authority which the right-holder
could positively exercise over a business designation or an unregistered trade
mark regardless of any interference by third party’s action. Such a positive sphere
of exclusivity cannot also be deducted from the structure and content of these
provisions.
Third, there is a lack of normative catalogues of limitations of potential IP rights
to unregistered trade marks and business designations, which in the view of the
civil law tradition of such a manner of delimiting the sphere of IP rights instead of
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
99 A wider elaboration of this issue from the perspective of Polish unfair competition and civil law
is presented by Łukasz Żelechowski, ‘(n 1)’, 299 ff.
100 Against the validity of numerus clausus in German literature e.g. Ansgar Ohly, ‘Gibt es einen
Numerus clausus der Immaterialgüterrechte?’ In Ansgar Ohly et al. (Eds), Perspektiven des
Geistigen Eigentums und Wettbewerbsrechts. Festschrift für Gerhard Schricker zum 70.
Geburtstag (C. H. Beck 2005), 105; positively concerning judicial creation of IP rights - Moritz
Schroeder, Numerus clausus der Immaterialgüterrechte? (Logos Berlin 2017), 96, 321-331.
101 Łukasz Żelechowski, ‘Zasada numerus clausus praw na dobrach niematerialnych dylematy
dotyczące pojmowania i obowiązywania’ in Krystyna Szczepanowska-Kozłowska et al. (Eds)
Opus auctorem laudat. Księga jubileuszowa dedykowana Profesor Monice Czajkowskiej-
Dąbrowskiej (Wolters Kluwer 2019), 711.
102 Alexander Peukert, Güterzuordnung als Rechtsprinzip, (Mohr Siebeck 2008), 873 ff, notably
884-888, against the background of the opposition between the notions of the negative and
positive freedom.
!
23!
relying on an open-ended and flexible fair use system, speaks against the presence
of IP rights in the examined situation.
Consequently, there are no grounds for accepting that protection granted under
Arts. 5 and 10 AUC constitutes an exception from the general tortious model of
protection in Art. 3(1) AUC that, as indicated above, does not presuppose an
infringement of a pre-existing exclusive right.
As far as protection of geographical indications is concerned any legal exclusivity
based on the AUC would have to be a so-called collective exclusivity, conferred
on an unspecified circle of entrepreneurs who comply with conditions entitling
them to use a given geographical indication. Provisions of the AUC do not,
however, provide a normative basis for determining such a circle of ‘right-
holders’. This assertion is supported by the fact that the right to raise claims for
acts of unfair competition caused by the use of geographical indications regulated
in Art. 8, 9 (and to some extent in Art. 10 AUC see IV, 1.4) is subject to the
general rule in Art. 18(1) AUC which provides that claims can be raised by any
trader whose interests have been threatened or violated, thus not just to
entrepreneurs who comply with positive conditions for using a given geographical
indication. In that regard to situation is different as compared to the situation
under German Markengesetz, where although § 128(1) makes a general reference
to claims under Art. 8(3) of the German Unfair Competition Act in the case of an
unlawful use of geographical indications, § 128(2) Markengesetz stipulates that
the claim for damages can only be raised by a person entitled to use a given
geographical indication, which justifies the view that in the light of Markengesetz
there is an IP right to geographical indications held by legitimate users thereof 103.
Finally, there is also no basis for recognizing that provisions of the AUMP
provide a normative basis for distinguishing anyone's rights to distinctive signs,
especially given that traders cannot raise civil law claims under the AUMP (see
II). The regime of protection against unfair market practices is aimed at ensuring
compliance with generally accepted patterns of conduct in the field of market
practices in the B2C relations. The regime of civil liability adopted for this
purpose by the Polish lawmaker should be classified as the regime of tort liability
that does not presuppose a necessary infringement of anyone's civil law right.
VII. Relationship between the regime of protection of unregistered
distinctive signs in unfair competition law and the regime of
protection of registered marks
An important issue is the relation of protection of registered trade marks under the
IPL to unfair competition law (in court practice - to the AUC).
The first important aspect is the issue of cumulative protection in a situation
where the holder of a registered trade mark is seeking protection in the same
factual circumstances under both the IPL and the AUC. At present, case law
favours a full cumulative protection (not just supplementary protection to the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
103 BGH, judgment of 31.3.2016, I ZR 86/13, (2016) GRUR, 741, para 13.
!
24!
extent not covered by trade mark law)104, relying in support of this position, first,
on the wording of Art. 1(2) IPL which provides that the protection granted to
objects of industrial property under the IPL does not prejudice the possibility of
granting protection to them under other legal acts, and Art. 2 IPL providing that
combatting unfair competition is regulated in a separate act. The wording of these
provisions is invoked in case-law to stress the independence and equivalence of
both acts, which should justify the cumulative application thereof. Second, it is
raised case law that despite possible overlaps of protection under both acts, there
is a difference in their subject-matter, this being in the case of the IPL the
exclusive trade mark right and in the case of the AUC – the economic interests of
trading participants protected by tortious regime. Third, cumulative protection is
supposed to be justified by the fact that the catalogue of remedies in Art. 18(1)
AUC is wider than in Art. 296(1) IPL, because the former contains a general
claim for removing the effects of the violation and submitting a statement by the
perpetrator in the appropriate form and content (Art. 18 (1) point (2) - (3) AUC)
which is currently not present in the IPL. It should be added that in the case of the
cumulative protection, in order to establish an act of unfair competition the
defendant's designation should not be compared with representation of the mark
registered for the claimant, but with the representation factually used by the
claimant105. Moreover – in line with the concrete method of assessment of a
likelihood of confusion under the AUC (see IV.3) it is necessary to take into
account the overall presentation of the product, which usually means making a
subject of comparison a certain composition used by the claimant (e.g. appearance
of the packaging) in which the registered mark is normally only an element.
The second practically important aspect is the collision of regimes of protection in
a situation where one person is the holder of a registered trade mark while the
other person relies on earlier use of a similar or identical unregistered trade mark
(Art. 10(1) AUC) or business designation (Art. 5 AUC). At present, the clearly
prevailing approach in case law adopts the concept of the so-called ‘formal’
character of trade mark right according to which in the case of a collision of a
registered trade mark with an earlier business designation or an unregistered trade
mark, the court should grant protection to the earlier sign and prohibit the use of
the registered trade mark despite the existence of a valid registration106.
The above dominant approach gives rise to many doubts. First, the sole criterion
of temporal priority is the mechanism for resolving collisions of undisputed
exclusive industrial property rights. Therefore, using such a mechanism to solve
collisions between the IPL and the AUC leads to a paradox, if one takes the view
that the AUC does not create rights to unregistered signs (as argued in VI).
Furthermore, the fact that Art. 160 IPL already provides a defence against an
infringement action (permitted under Art. 14(3) TMD) in the case of a bona fide
local use on an insignificant scale, might manifest lawmaker’s will to regulate the
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
104 Supreme Court, judgment of 23.10.2008, V CSK 109/08 (Legalis, No 140193), summing up
earlier case law adopting this view. In a similar vein under German law - BGH, judgment of
15.8.2013, I ZR 188/11, GRUR 2013, 1161.
105 Supreme Court, judgments of: 20.10.2005, II CK 154/05, (Legalis, No 97114); of 7.3.2008, II
CSK 428/06, (Legalis, No 185372).
106 Supreme Court, order of 30.9.1994, III CZP 109/94, (Legalis, No 28863); judgment of
12.10.2005, III CK 160/05 (Legalis No 72857).
!
25!
position of an earlier user completely within the realm of trade mark law. The
above dominant approach in Polish case law can, therefore, be criticised. This
leads to recognizing the primacy of the trade mark law regime in conflicts with
earlier unregistered signs protected under the AUC unless the right to a registered
trade mark has been declared invalid. The latter possibility, however, may prove
difficult. A potential refusal (and invalidation) ground in this respect could prima
facie rest in Art. 1321(1)(1) IPL which prohibits registration of the mark when the
use of it violates personal or economic rights of third parties. As argued above, the
AUC cannot be, however, viewed as a source of rights to distinctive signs.
Perhaps the perspective would change if the Polish lawmaker made in an explicit
manner use of Art. 5(4)(a) TMD that allows rendering earlier unregistered signs
an obstacle to the registration of a trade mark. Introducing an explicit refusal
ground regardless of the legal nature of protection of earlier unregistered signs
would reduce current uncertainties, since a very generally framed Art. 1321(1)(1)
IPL cannot be considered as implementing Art. 5(4)(a) TMD107. One can find
respective examples that could be followed. For instance in the French Intellectual
Property Code designations that are protected by unfair competition claims (see
IV.1.2.) are clearly indicated as constituting a registration bar (with regard to
dénomination sociale - L711-4(b); nom commercial and enseigne - Art. L711-
4(c)). Next, the refusal ground in Art. 5(4)(a) of the UK Trade Marks Act 1994
refers to unregistered marks protected by the tortious common law passing off
claim. In the absence of a similar provision in the IPL the refusal ground that can
occasionally be relied on in such circumstances is bad faith. Finally, accepting
that a prohibition of use of a registered trade mark cannot be justified by a mere
fact of temporal priority of use of an earlier unregistered sign protected by the
AUC, one should consequently conclude that such earlier signs cannot constitute a
relative refusal ground for an EU trade mark in the light of Art. 8(4) EUTMR108.
Second, the above referred domestic case law concerning the ‘formal’ character of
the right to a registered trade mark may be considered incompatible with the
interpretation of the provisions of the TMD adopted by the Court of Justice in
case Martin Y Paz, in which the CJ found that exclusive rights to registered trade
marks cannot be limited in a manner that exceeds the limitations provided in the
TMD by employing national unfair competition laws or provisions on abuse of
rights.109 It should be stressed, however, that the strict position of the Court that
assumes a complete ‘self-sufficiency’ of trade mark law when it comes to solving
tensions between the scope of trade mark rights and considerations of fairness of
competition, is certainly debatable110. In the context of Polish law while the
approach in case law relying solely on temporal priority of earlier use protected
under the AUC over a ‘formal’ trade mark right appears as unjustified, it would
not seem, however, reasonable to exclude a priori in any circumstances a
possibility of viewing the exercise of a trade mark right through the lens of Art.
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
107 Ryszard Skubisz, ‘(n 42)’, 830. An earlier entrepreneur’s name (firma) is, however, covered by
Art. 1321 (1)(1) IPL, since it is protected by an exclusive right (see IV, 1.2.)
108 Differently Jakub Kępiński and Marian Kępiński, ‘(n 43)’, 214-215, authors consider, however,
designations protected under the AUC as objects of subjective rights.
109 Case C-661/11 Martin Y Paz Diffusion SA v David Depuydt and Fabriek van Maroquinerie
Gauquie NV, ECLI:EU:C:2013:577, paras 55 and 60.
110 Annette Kur, Trade Marks Function, Don’t They? CJEU Jurisprudence and Unfair
Competition Principles’ (2014) IIC, 434, 450.
!
26!
3(1) AUC, especially through the criterion of ‘good practices’, if some additional
individual elements of a given case, other than the mere temporal priority of use
of an unregistered sign, were present. Such a possibility would not, however, go
in line with the strict position taken by the CJ in Martin Y Paz.
VIII. Concluding remarks
In the absence of grounds for recognizing the existence of IP rights to distinctive
signs in Polish unfair competition law, the question may be asked whether it
would be desirable to explicitly introduce into the Polish legal order normative
grounds establishing appropriate types of rights, e.g. the right to a business
designation or the right to an unregistered trade mark. Considering such a
possibility would require a broad perspective taking into account not only the
legal context but also the social and economic consequences. Only against such a
background it would be possible to formulate respective proposals. This issue is
certainly not free of profound dilemmas. It would concern introducing exclusive
rights, manifested to the public only through the use of distinctive signs, and not
by an entry in a public register. Additionally, it should be noted with regard to
trade mark protection that recognising use as a source of an exclusive trade mark
right would constitute a radical departure from the settled concept of trade mark
protection in Polish law, based essentially (save for the case of well-known trade
marks) on registration.
ResearchGate has not been able to resolve any citations for this publication.
Article
Intellectual property rights, conventionally seen as quite distinct, are increasingly overlapping with one another. There are several reasons for this: the expansion of IPRs beyond their traditional borders, the creation of new IPRs especially at EU level, the exploitation of gaps in the law by shrewd lawyers, and the use of unfair competition as an alternative when IPRs are either not available at all or expired. The convergence of several IPRs on the same subject-matter poses a problem. As they are normally envisaged as water-tight categories, there are very few rules which cater for the sort of regime clash and overprotection that many overlaps of IPRs entail. This book's aim is to find appropriate rules to regulate overlaps and thereby avoid regime conflicts and undue unstructured expansion of IPRs. The book studies the practical consequences of each overlap at the international, European and national levels (where the laws of France, the UK and Germany are reviewed). It then analyses the reasons for the prohibition or authorisation of overlaps. This analysis enables the determination of criteria that can be used to (re)map the overlaps to achieve appropriateness and legitimacy. The overarching principle which guides this mapping exercise, and which is common to all IPRs, is that of free competition; IPRs are an exception to this principle, though a public domain must exist.
In the same vein in literature with regard to business designations -Marian Kępiński
This position was put forcefully with regard to business designations (Art. 5 AUC) in the judgment of the Supreme Court of 7.10.1999, I CKN 126/98, (2001) GRUR Int., 639 (with a commentary by Marian Kępiński). In the same vein in literature with regard to business designations -Marian Kępiński, '(n 31)', 162; Marcin Trzebiatowski, '(n 42)', 16; with regard to unregistered trade marks -Jakub Kępiński and Marian Kępiński, '(n 43)', 200; Marcin Trzebiatowski, 'Prawo do niezarejestrowanego znaku towarowego jako składnik przedsiębiorstwa (krytyka wyroków WSA i NSA w Warszawie)' (2009 no 5) Rejent, 100.
Zasada numerus clausus praw na dobrach niematerialnych -dylematy dotyczące pojmowania i obowiązywania
  • Łukasz Żelechowski
Łukasz Żelechowski, 'Zasada numerus clausus praw na dobrach niematerialnych -dylematy dotyczące pojmowania i obowiązywania' in Krystyna Szczepanowska-Kozłowska et al. (Eds) Opus auctorem laudat. Księga jubileuszowa dedykowana Profesor Monice Czajkowskiej-Dąbrowskiej (Wolters Kluwer 2019), 711.
An earlier entrepreneur's name (firma) is, however, covered by Art
  • Ryszard Skubisz
Ryszard Skubisz, '(n 42)', 830. An earlier entrepreneur's name (firma) is, however, covered by Art. 132 1 (1)(1) IPL, since it is protected by an exclusive right (see IV, 1.2.)