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PROCEDURES IN

INDUSTRIAL
PROPERTY
INFRINGEMENTS
Ewelina Sotysiak
Piotr Bartenbach
Bartomiej Staszczyk
Dominik Wolski

AGENDA
What is industiral property?
Industrial property protection.

Legal grounds

Regulations pertaining to trademarks

Trademark protection

Community and international trademark

What is classified as industrial property infringement?

Expamples and penalties

Procedures

WHAT IS INDUSTIRAL PROPERTY?


Signs transmitting information, in particular to consumers, as

regards products and services offered on the market.


Protection is directed against unauthorized use of such signs

likely to mislead consumers, and against misleading practices in


general.
Industrial property applies to industry, commerce, agriculture,

extraction, naturally manufactured products.

Industrial property also covers trademarks, service marks,


layout-designs of integrated circuits, commercial names and
designations, as well as geographical indications, and
protection against unfair competition.
Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

INDUSTRIAL PROPERTY
PROTECTION
Legal grounds
Issues concerning industrial property in Poland are
regulated under the Industrial Property Law Act of 30 June
2000
One of the fundamental functions of IPL is to stimulate
economic development and to protect the rights and
interests of author's rights
Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

INDUSTRIAL PROPERTY
PROTECTION
IPL regulations pertaining to trademarks

Any sign capable of being represented graphically =

possible trademark
For registration = Patent Office of the Republic of Poland

in Warsaw
Right for trademark valid for 10 years

Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

INDUSTRIAL PROPERTY
PROTECTION
Trademark protection (1)
A breach of a trademark protection right consists of the illegal
use in business trade of:
mark identical to a registered trademark (identical goods)
mark identical or similar to a registered trademark

(identical or similar goods)


mark identical or similar to a renowned trademark registered

for
(any goods)
Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

INDUSTRIAL PROPERTY
PROTECTION
Trademark protection (2)
The person (entity) whose trademark protection right has been breached
may demand:
Cessation, remedying of consequences
Transfer of benefits gained
Remedying of damages
Licence fee payment
Rulling publishment
Payment of compensation for invetion usage

Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

INDUSTRIAL PROPERTY
PROTECTION
Community and international trademark
In EU - Council Regulation (EC) No 2007/2009 of 26 February 2009
on the Community trademark
10 years with the possibility of its extension
Possibility for international trademark protection

Registration = World Intellectual Property Organization


(WIPO),Geneva, Switzerland by hand of Patent Office of the
Republic of Poland

Source:
http://www.paiz.gov.pl/polish_law/industrial_property_protect
ion

WHAT IS CLASSIFIED AS
INFRINGEMENT?
Pirating and counterfeiting
Infringement of:

patents,

industrial designs,

marks,

geographical indications,

Source:http://www.wipo.int/freepublications/en/intproperty/895/wip
o_pub_895.pdf

INFRINGEMENT OF PATENTS
An infringement of patent of invention or utility model is

committed by any person who:

I -manufactures a product which is the subject matter of a patent of


invention or utility model without the authorization of the owner of
the patent; or

II -uses a means or a process that is the subject matter of a patent


of invention, without the authorization of the owner of the patent.

Penalty -imprisonment from one (one) to three (three)

months, or fine
Source:http://www.wipo.int/freepublications/en/intproperty/895/wip
o_pub_895.pdf

INFRINGEMENT OF INDUSTIRAL
DESIGNS
Manufacturing, without consent authorization of the owner, a

product that incorporates a registered industrial design, or a


substantial imitation thereof that is likely to mislead or cause
confusion as well as any person who:

I -exports sells exhibits or offers for sale, holds in stock, conceals or receives
for use for commercial purposes, an object that unlawfully incorporates a
registered industrial design or substantial imitation thereof that is likely to
mislead or cause confusion; or

II -imports a product that incorporates an industrial design registered in the


Country, or a substantial imitation thereof that may mislead of lead to
confusion for the purposes referred to in the preceding item, and which still has
not been placed on the external market directly by the owner or with the owner
consent, shall commit an infringement of the registered industrial design.

Penalty -imprisonment, from 1 (one) to 3 (three) years, or fine.

Source:http://www.wipo.int/freepublications/en/intproperty/895/wip
o_pub_895.pdf

INFRINGEMENT OF MARKS
An infringement of a registered mark is committed by

any person who:

I -reproduces, in whole or in part of a registered mark, without the


authorization of the owner, or imitates it in a manner that may
cause confusion; or

II -alters the registered mark of another person already affixed to a


product that has been placed on the market.

Penalty -imprisonment from 3 (three) months to 1 (one)

year, or fine.
Source:http://www.wipo.int/freepublications/en/intproperty/895/wip
o_pub_895.pdf

INFRINGEMENT OF GEOGRAPHICAL
INDICATIONS
Manufacturing, importing, exporting, selling, exhibiting or

offering for sale or having in stock a product that bears a


false geographical indication
Using in a product, container, case, tape, label, invoice,

circular letter or poster, or in any other means of


disclosure or advertising, indicative terms such as "type",
"species", "kind", "system", "similar", "substitute",
"identical" or the like, failing to clearly state the true
origin of the product
Penalty -imprisonment from 1 (one) to 3 (three)

Source:http://www.wipo.int/freepublications/en/intproperty/895/wip
months,
or fine.

o_pub_895.pdf

CLAIMS REGARDING
INFRINGEMENTS
Steps that need to be taken prior to submiting a notice:

An electronic or physical signature of the person authorized to act


on behalf of the owner;

A description of the work that you claim has been infringed;

A description specifying the location of the material that you claim is


infringing;

A statement by you that you have a good faith belief that the
disputed use is not authorized by the owner, its agent, or the law;
and

A statement by you, made under penalty of perjury, that the


information in your notice is accurate and that you are the owner or
authorized to act on the owners behalf.

PROCEDURES
Assessing the Scope of Patent Rights
Evaluating Validity and Infringement of a Patent
The Cost of Patent Litigation

Source: http://www.wipo.int/aboutip/en/iprm/pdf/ch4.pdf

INFRINGEMENT ACTIONS
Avoiding Litigation

It is up to a right-owner to act as his own policeman. He must


keep an eye on the industrial and commercial markets in which
he sells his products, or provides his services, or in which his
processes might be used

He should first contact the competitor to point out the


existence of his right.

A company affected by anothers right will carefully assess


what its scope is and whether or not it is valid.

Source: http://www.wipo.int/aboutip/en/iprm/pdf/ch4.pdf

AVOIDING LITIGATION
Negotiation

Negotiation is an important aspect of protecting and enforcing


rights. In negotiation, an infringer might well be persuaded to
change what he is doing.

During the attempts to negotiate, the supposed infringer may


claim that he is not infringing; or he may allege that the right is
of little value and does not justify significant royalties; or he
may argue against the proposed license terms.

It may well be worth suggesting that the services of a mediator


be used or that the issue should be decided by arbitration. Of
course, both sides need to agree to accept an arbitrators
decision and a contract to that effect may be needed.
Source: http://www.wipo.int/aboutip/en/iprm/pdf/ch4.pdf

ACTION BEFORE AN INDUSTRIAL


PROPERTY OFFICE
Opposition Procedures

as referring to all possibilities open to third parties to intervene before


the industrial property office both in proceedings leading to the grant of
a right and in proceedings for contesting the grant after it has
occurred.

The opposition should be a relatively straightforward, speedy and


inexpensive matter, handled as early as possible in the life of the right.

It can be important to bring post-grant opposition proceedings in good


time. If too long a delay occurs, the user of the later patent might
argue that the owner of the earlier one has acquiesced in the grant of
the later one and as a result should not be allowed to take action. This
might make it difficult to enforce the earlier patent against products or
processes covered by the later one.

Source: http://www.wipo.int/aboutip/en/iprm/pdf/ch4.pdf

CIVIL COURT PROCEDURES


Despite efforts to achieve friendly settlement, circumstances can and do arise where

the owner of a right feels that he must take action against an infringer in order to
protect his markets, present or future. In most jurisdictions this will be handled in the
civil courts.
The patent owner, acting through his immediate lawyers (solicitors), arranges for a writ

or complaint to be served on the alleged infringer.


In the writ the patent owner, as plaintiff, will specify the nature of the alleged

infringement and the remedy sought. Almost always, an injunction restraining the
alleged infringer, the defendant, from continuing with what he has been doing, will be
requested, as well as damages.
The defendant will usually acknowledge the writ and give notice that he intends to

defend. If he does not, the plaintiff may be entitled to a final or interlocutory ruling
(one which decides the issue but leaves open the question of damages, etc.) forthwith.
If the defendant does defend, and the issue is not settled out of court or dealt with

summarily, pleadings will be exchanged, on the one hand stating the material facts of
the claim and on the other the defenses or counterclaims.

Source: http://www.wipo.int/aboutip/en/iprm/pdf/ch4.pdf

REFERENCES
http://www.wipo.int/about-ip/en/iprm/pdf/ch4.pdf
http://www.wipo.int/freepublications/en/intproperty/895/wi

po_pub_895.pdf
http://www.paiz.gov.pl/polish_law/industrial_property_prot

ection

THANK YOU FOR ATTENTION.