Recent Polish case law on industrial designs

The District Administrative Court, which has the authority to hear complaints against decisions made by the Polish Patent Office in the field of industrial designs, has recently confirmed several important rules in this area.

The court agreed with the doctrine that an industrial design’s novelty is determined by the disclosure of a design’s forms. Although the Polish Industrial Property Law does not express this explicitly, it must be assumed that a design is deemed novel if a previously undisclosed design or an earlier non-identical design does not exist.

Any new design that has individual character in its appearance, as a whole or as part of a product, that results from the features of, in particular, the lines, colours, shape, texture or materials of the product and its ornamentation, shall constitute an industrial design. A component part can be considered as a product and its design can be protected as an industrial design, but it must meet the conditions of protection required for each design—novelty, individual character and visibility.

An industrial design shall have individual character if the overall impression it makes on the informed user differs from the overall impression made on such a user by any design that is available before the priority date.

The court has ruled that ‘overall impression’ refers to the design as a whole and not to its individual characteristics. It is therefore a general effect—a general feeling that is caused by compared designs on an informed user— whether it is a different impression or the same. The informed user is a person that has a good understanding and level of knowledge of a given field.

The informed user uses certain items or groups of items with more practical or theoretical knowledge of the products than the average user. The informed user is also more capable of perceiving the characteristics of the object than the average user. This is because the informed user understands the state of the industrial design in the given field and is capable of distinguishing between industrial designs.

The scope of creative freedom is determined by the functional characteristics of the object and the earlier state of designs. The informed user must possess sufficient knowledge to assess the scope of creative freedom in an industrial design and be able to see even relatively small differences that are important to designs displaying low creative freedom.

"AN INDUSTRIAL DESIGN SHALL HAVE INDIVIDUAL CHARACTER IF THE OVERALL IMPRESSION IT MAKES ON THE INFORMED USER DIFFERS FROM THE OVERALL IMPRESSION MADE ON SUCH A USER BY ANY DESIGN THAT IS AVAILABLE BEFORE THE PRIORITY DATE."

The court has also ruled on who is entitled to file a request for an invalidation of an industrial design. An owner of an industrial design registration with an earlier priority date may be entitled if the existence of this design is an obstacle to the novelty or individual character of a later design.

The entitled person may also be a product manufacturer with a solution that is covered by a later industrial design when the design interferes with the manufacturer’s freedom to establish and operate a business.

As for the authenticity of evidence supplied in invalidation cases, it is assumed—in accordance with European law—that for the purpose of assessing the probative value of a document, such as a commercial contractor declaration, the reliability and accuracy of information contained in it must first be examined.

In this regard, the origin of the document, the circumstances of its preparation and its recipient should be taken into account. It should then be asked whether, given its content, the document seems sensible and plausible.

The court ruled that electronic evidence is not sufficient for proving the novelty of an industrial design. A database print-out cannot be treated as a legal document with an unquestionable date because there are graphical tools that allow data to be easily modified. Such proof cannot be deemed valid evidence if it is not properly certified.

Also, a statement that is issued by a private company is not sufficient unless it is supported by invoices or official publications where the product at dispute is shown. A CD must also be certified by an expert to confirm when the information in it was burned to disc.