Identical press titles and misleading the consumer

On 16 November 2016 the Supreme Court was resolving a dispute concerning the use of identical press titles in the context of conformity of such conduct with the principles of fair competition. The defendant was an owner of the weekly magazine issued in the paper and online version which was created after the breakup of the editorial staff of the magazine issued by the claimant. The claimant who had used and registered the title as a subdomain of his website of the same title, accused the competitor of committing an act of unfair competition within the meaning of art. 10 of the Act of 16 April 1993 on combating unfair competition.

According to art. 10 an act of unfair competition is such designation of goods or services that may mislead the consumer as to, inter alia, its origin. The risk of confusion may occur when a consumer acquired goods or services believing that they were produced by an entrepreneur of developed reputation while in reality he acquired goods produced by another entity. The designation of origin of goods may include not only the name of the product, in this case the press title, but also font, graphics or colouring of the name that an average consumer may associate with the specific producer or, as in the discussed case, with the publisher.

In the discussed case, the Court of Appeal stated that there is no risk of misleading the reader who is well-oriented in the press market. It was a common knowledge that the editorial staff of the new weekly magazine was created by journalists who were fired by the claimant. Additionally, not only the words of the press title but the whole headpiece should be compared which in this case differ, thus the risk of confusion is not significant. Due to the ‘lack of significant risk of confusion’ both the District Court and the Court of Appeal decided that there is no reason for prohibiting the use of the name of the magazine by the defendant. The claimant disagreed with the above and filed a cassation appeal.

The Supreme Court accepted objections raised in the complaint, stating that in the case it was not unequivocally determined that there was no risk of misleading the readers. The interpretation of art. 10 of the Act on combating unfair competition may not lead to gradation of the risk of confusion since it is not permissible either in Polish or EU law. If there is even the slightest risk of misleading the consumer, the Court should grant a protection against unfair competition. The Supreme Court indicated also that having own editorial staff or use of advertising are not enough to differentiate one press title from another. The judgment of the court of the second instance was set aside and the case was remitted for reconsideration.

• The Supreme Court judgment of 16 November 2016, file no I CSK 777/15