YDP-TOMATIS®

INFORMATION ON SELECTED LEGAL ACTIONS
- TOMATIS® BRAND PROTECTION IN THE TERRITORY OF POLAND
prepared for Tomatis Developpement SA

1. On 8 March 2016, a court dispute between Tomatis Developpement SA, represented by DZP, and Young Digital Planet (YDP) SA with its registered office in Gdansk, Poland, was ended in a final and non-revisable way. The Appellate Court in Warsaw, 1st Civil Division issued its judgment of 8 March 2016, case no. I ACa 793/15, in which it dismissed Young Digital Planet (YDP) SA’s appeal against a judgment of the Regional Court in Warsaw, 22nd Division of Community Trademarks and Industrial Designs of 27 February 2015, case no. XXII GWzt 40/13. Prior to these proceedings, injunction proceedings were conducted, as a result of which injunctive relief was granted to Tomatis Developpement SA: Young Digital Planet (YDP) SA was prohibited from continuing infringements during the trial.
2. During the court dispute, Tomatis Developpement SA based its claims on registration of the international word trademark “TOMATIS” (IR-0891321), recognised as protected in the territory of the European Union by the European Union Intellectual Property Office, and charges concerning acts of unfair competition.
3. Having conducted extensive evidence proceedings, the Regional Court found that Tomatis Developpement SA’s action was reasonable and decided inter alia as follows: “it orders YOUNG DIGITAL PLANET (YDP) S.A. in Gdansk to stop infringing the claimant’s rights arising from registration of the international word trademark TOMATIS (IR-0891321) protected in the European Union, by using the markings “Metoda Tomatisa”, “Produkt Metoda Tomatisa” and “eduSensus Metoda Tomatisa” [“Tomatis Method”, “Tomatis Method Product” and “eduSensus Tomatis Method”] for the system, devices and software for diagnosis and training of listening attention and training services related to listening attention diagnosis or training”. The defendant was also required to reimburse the costs of court proceedings.
4. The Regional Court had no doubt that:
   • “The main defendant’s contested marks are undoubtedly associated with trademark IR-0891321, as people interested in buying the devices may conclude that the main defendant has business ties with Tomatis Developpement SA, and thus it is entitled to use the mark TOMATIS. Therefore, the main claimant is right in accusing Young Digital Planet (YDP) S.A. of violation of its exclusive rights. The main defendant’s actions may also adversely affect the distinctive power of the mark TOMATIS. They adversely affect the correct fulfilment of the indication of origin, qualitative, advertising and investment functions thereby.”;
   • “According to the Court, the charge raised against the main defendant, that it has committed an act of unfair competition characterised in article 10 of the Act on Suppression of Unfair Competition, i.e. that it has marked goods or services so that customers may be misled about their origin ([article 10] item 1), is reasonable because the main claimant has priority of using the word mark TOMATIS in the Polish market. The contested marks used by Young Digital Planet (YDP) S.A. on packaging, in commercial information and advertising may mislead buyers about the origin of the devices offered. The indications of the risk of consumer confusion are assessed in the way presented in section III. of the reasons [for the judgment].”;
   • “One should also share the main claimant’s opinion that the use by the defendant of the business and product reputation (indisputable) and market position achieved by Tomatis Developpement SA (indisputable) meets the criteria of an act of unfair competition defined in article 3.1 of the Act on Suppression of Unfair Competition. Young Digital Planet (YDP) S.A. violates the good practice of not using the business name and reputation of a competitive enterprise deceptively, and not adversely affecting the competitor’s attractiveness and its impact on the group of recipients (cf. Supreme Court resolution of 23/02/1995, case no. III CZP 12/95). Such actions harms the business interest of the main complainant, limiting its benefits from financial and personal expenditure made to build the reputation of the entrepreneur and its market offer. It is also contrary to the interests of potential customers, who are being persuaded about the quality of goods and services of the main defendant by reference to the achievements of its competitor and not its own business effort.”.
5. The appeal of Young Digital Planet (YDP) SA against the said Supreme Court’s judgment was dismissed as a whole by the Appellate Court in Warsaw, which found the Regional Court’s judgment to be correct.
   
   Significantly, the Appellate Court emphasised in particular that the reputation of the TOMATIS brand was confirmed during the trial. Owing to such status, the trademark TOMATIS® is granted a much wider legal protection than “regular” registered trademarks.
6. The judgment is a warning for entrepreneurs against using registered trademarks or similar marks without right holders’ consent. Prior consent of Tomatis Developpement SA. is required to use the registered trademark TOMATIS®. No third party may license that registered trademark without Tomatis Developpement SA’s consent.
7. This case is an example of effective legal actions aimed to protect a reputable brand against its illegal use in business dealings by an entity that has decided to use the reputation of a registered brand of another entrepreneur rather than building up the position of its product on its own.