The Patent Office of the Republic of Poland referred the case for consideration under the contentious proceedings procedure, as a case for the invalidation of the right arising from the registration of the design in question.
In examining the case, the authority indicated that the similarities of the designs raised in the opposition determine that the overall impression created on the informed user by the contested design does not differ from the prior design “Bilonownica,” which was previously made public. The informed user was defined as “a person who orders a batch of promotional coasters from a manufacturer in order to supply them with advertisements for their own company’s products and distribute them to the places where they will be used.” Furthermore, during the assessment, the authority paid attention to and took into account the scope of creative freedom in the development of the design, which, due to the nature of the design, is very broad and is limited only by the functional purpose of the coasters. All of the above issues were confirmed by the evidence attached to the opposition. In light of the above, in a decision of November 2009, the Patent Office of the Republic of Poland invalidated the right arising from the registration of the industrial design “Promotional coaster Star base.”
The entitled party, disagreeing with the above decision, filed a complaint with the Voivodeship Administrative Court in Warsaw, in which it alleged that the challenged decision violated substantive law, which had a significant impact on the outcome of the case, i.e., the finding that the contested design does not have an individual character, and violated procedural rules, which had a significant impact on the outcome of the case by failing to adequately clarify the facts and failing to conduct evidentiary proceedings, as well as failing to indicate the evidence on which the decision was based.
In response to the complaint, the Patent Office of Poland requested its dismissal.
The Voivodeship Administrative Court, when considering the case, stated that the body reviewing the case had correctly established the facts and indicated the grounds for invalidating the disputed design. The Patent Office of Poland pointed out not only the similarities but also the differences, which were discussed when describing the lack of novelty. Furthermore, the complainant agreed with the body that an informed user should be considered a person who orders a batch of promotional coasters from a manufacturer to supply them with advertisements for their own company’s products and distribute them to the places where they will be used.
Regarding creative freedom, the court stated that the scope of creative freedom is determined by the functional characteristics of the object and by prior designs. In the case of designs that must primarily meet the functional requirements of the object, the scope of creative freedom is smaller than in the case of designs in which aesthetic considerations prevail. Where the scope of creative freedom is greater, the differences between designs should be more easily noticeable than in the case of a narrow scope of this freedom. An informed user must have sufficient knowledge of the subject to assess the scope of creative freedom and be able to notice even relatively small differences that are important in the case of designs with limited creative freedom.
The above issues were also noted by the Patent Office of Poland, which only confirms that the body conducted a comprehensive assessment of the compared designs and correctly established the facts and drew the final conclusions.
In view of the above, the Voivodeship Administrative Court in Warsaw, in its judgment of May 11, 2010 (VI SA/Wa 504/10), dismissed the complaint.
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