Szymon Gogulski joined SK&S in 1994 and became partner in 2002. He specializes in industrial property law, unfair competition law and copyrights. He has advise on disputes concerning trademarks (e.g. leading car producers, leading world’s software producers, a Far East producer of watches and many more), unfair advertising (e.g. leading multinational chain of stores, leading national wholesaler), and industrial designs (e.g. leading regional building materials industry, FMCG producers). He led the first biotech patent disputes in Poland. A part of his practice is advisory on general IP matters, including IP transactions and restructuring, and in developing advertising campaigns (e.g. to a leading sportswear producer). Recently, he has also assisted a couple of clients with respect to copyright infringements of architectural designs. He has also a broad experience in contract law and company law, as in the 1990s, he was a member of M&A practice.
He is a co-author of 3 chapters of the Polish leading commentary on Unfair Competition Law (Szwaja, Warsaw 2013), which deal with protection of trade secrets as well as protection of designs based on slavish imitation claims. He is also an active domain name arbitrator at Polish and European panels.
The Act of 27 October 2017 amending the Personal Income Tax (PIT) Act, the Corporate Income Tax Act and the Flat Income Tax on Certain Revenues Performed by Individuals Act amended the PIT Act to introduce categories of creative activity which entitle authors to settle 50% of their tax deductible expenses and doubled the annual limit of tax deductible expenses. Following doubts over the shortcoming of the amendments, the legislature decided to remedy their scope.
The Supreme Court recently issued a notable judgment concerning the work of a deceased artist and the alleged infringement of his moral copyright. The decision underlines that it is difficult to limit the activities of people who have been gifted the work of an artist even after the artist's death, especially in the case of a close personal relationship between the artist and the beneficiaries.
The Constitutional Tribunal recently found that the information claim mechanism provided for in the Industrial Property Law does not comply with the Constitution. Following the tribunal's ruling, the scope of the legal mechanisms to obtain information to determine the scale of an IP infringement has been reduced. However, the decision also makes it possible to protect entrepreneurs from the unjustified and unnecessary disclosure of business secrets.
Andrzej Sapkowski, a well-known Polish writer and author of The Witcher fantasy saga, recently requested additional remuneration of at least Z60 million from CD Projekt for a video game based on his work. Following the game's worldwide success, Sapkowski claimed under Article 44 of the Copyright Act that the remuneration granted to him was too low relative to the benefits derived from the exploitation of his work.
The Copyright Law provides no legal definition of what constitutes an 'audiovisual work', which has resulted in problems regarding the remuneration of authors and the role of collective management organisations in this context. The practical issues concerning remuneration for the use of audiovisual works underline the need to amend the Copyright Law, as the existing legislative gaps cannot be resolved by case law alone.
The Polish legislature is in the process of implementing the EU Trade Secrets Directive. The new legislation is considered to be generally compliant with the directive and is likely to come into force on June 9 2018. While the legislature should be praised for its attempt to implement the directive on time, work appears to be progressing too quickly in order to discover and eliminate possible deficiencies and guarantee the directive's full implementation.
There is an urgent need to improve the collective management system in Poland. The recent proposed introduction of the extended collective licensing model offers a chance to solve the existing legal and practical problems, but any such change should be considered and consistent with the whole collective management system in order to avoid further complications and the creation of new weaknesses in the legal framework.
There is a need for Polish patent law to provide for an explicit procedure that allows for the amendment of patent claims during invalidity proceedings. Although two theoretical options exist, the lack of well-established case law means that their viability remains uncertain. However, it is hoped that the admissibility of these options will be assessed by the Patent Office and the courts in the near future, as patent holders have become more interested in exploiting less obvious means of defending their patents.
The legislature recently adopted changes that could be of major importance for entities that provide IT systems to the courts and judicial authorities. According to the Act amending the Act on the Common Court System, the minister of justice will acquire the right to decide unilaterally whether judicial authorities can use software if an important state or justice interest requires an efficiency of performance or continuity of operation and an agreement with a copyright holder is troublesome.
Under the Industrial Property Law, a rights holder may demand that an infringer surrender any benefits obtained unlawfully by way of trademark infringement. In practice, calculating the amount of profits can be challenging. While the amount of profits should be calculated on a case-by-case basis, there are some general principles that should be considered.
The Industrial Property Law does not explicitly mention the possibility of assessing patent infringement under the doctrine of equivalents. However, the doctrine seems to be gaining support among legal commentators and judges. The admissibility of the doctrine of equivalents in Poland has long been the subject of lively discussion, which may soon be concluded with definite answers.
Article 79(1)(3)(b) of the Copyright Act allows a rights holder to demand double the amount of damages for an infringement or, if the infringement was culpable, three times the amount of appropriate remuneration. This regulation was partly invalidated by the Constitutional Tribunal in mid-2015, and the European Court of Justice advocate general recently delivered an opinion that this provision may not agree with the EU IP Rights Enforcement Directive (2004/48/EC).
The commercial use of 'artistically processed' national symbols is allowed in Poland. However, it is recommended that any changes to such symbols are made visible, to comply with the law and that ensure their use is not disrespectful. Further, parties intending to use a national symbol in a commercial way should be aware that obtaining protection for a trademark that includes a reference to a national symbol will likely be impossible.
A judgment was recently delivered on the admissibility of using the SOLIDARITY sign in artistic activity. The figurative sign, which represents the trade union Solidarity, gained international recognition due to the crucial role that Solidarity played in the Polish transition to democracy. The court decided that the unauthorised use of this sign in the music video "I hate you, Poland" did not infringe Solidarity's copyrights or harm its interests and reputation.
In a recent judgment concerning an alleged industrial design infringement, the Supreme Court redefined the principles of protection of industrial designs in Poland. The court deliberately deviated from well-established case law and decided that the courts should not address the question of infringement of a Polish industrial design until the validity has been decided in administrative proceedings.
Recent amendments to the Industrial Property Law resulted in the Patent Office moving from a relative examination system to an absolute examination system for trademark applications. The decision to eliminate relative examination is an example of the ongoing harmonisation of EU trademark practice and it is hoped that it will shorten the trademark registration process significantly.
Significant amendments to the Industrial Property Law will enter into force in December, bringing important changes to the patent, trademark and industrial design regulations to ensure compliance with European standards. Among the patent regulation amendments are the introduction of a disclosure of inventions grace period, a clear and complete disclosure requirement and changes to biotechnological invention patent claims.
Establishing the boundaries of a trademark's protection is important for rights holders and parties that could be suspected of unlawfully using another party's exclusive rights. A recent Supreme Court case examined the restriction on trademark rights where it is necessary to indicate the intended purpose of a product or service and found that the word trademark was sufficient in this context.
The Industrial Property Law provides that a product's shape or packaging may qualify for trademark protection if it is capable of distinguishing the goods of one undertaking from those of another and the shape is not excluded from trademark protection. Recent decisions illustrate the criteria that the Patent Office applies for the registration of shapes and the protection offered by the courts.
Poland has recently become an important venue for European litigation in industrial property matters, as rights holders become increasingly conscious of the importance of protecting and effectively enforcing their rights in Poland. This update summarises the position of Polish courts regarding the methods for calculating the prescription period of infringement claims.
Polish courts have generally upheld Polish Patent Office (PPO) decisions refusing to validate European patents on software-related inventions in Poland. However, the Supreme Administrative Court recently departed from this approach in determining the technical character of inventions related to digital electronics. It will be worth watching carefully whether the PPO follows the court's judgments in the future.
International trademark practice has developed letters of consent to overcome a prima facie conflict between trademarks. The Polish Patent Office has accepted letters of consent in the past; however, a couple of years ago it changed its position and it now refuses to acknowledge them. Legislation has now been proposed under which they would once again be accepted if they fulfilled certain requirements.
The amount of compensation awarded for the infringement of personal rights is discretionally decided by the courts and has, to date, been rather moderate. However, a recent Warsaw Regional Court judgment suggests imminent change in this regard and should be considered an important step towards settling the conflict between personal rights and freedom of the press.