The Supreme Administrative Court in its judgment of 23 November 2004 case file GSK 864/04 held that according to Article 4(1) and Article 7(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985 Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, an undefined trademark, i.e. a trade mark which is not represented in one form, does not possess any sufficient ability to distinguish goods. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks.

The trade mark IR-667827 owned by FERRERO S.p.A. is represented in the double color composition (the lower part is in white and the top part is in orange). The Court ruled that there was no justification for the argument that the composition or combination of colors, that could serve as a trade mark, has to meet other and additional requirements, such as novelty and originality of form or compositions of colors, i.e. it has to be a manifestation of creativity. However, an undefined sign, that does not exist in one and the same form, is not able to create and capture the consumer associations as to the origin of goods from one and the same entrepreneur. So, such a sign is not sufficiently distinctive. A simple composition of two or more colors, without shape or contour, or the combination of these colors in every possible configuration, does not meet the accuracy and uniformity that is required to perform the function of the trade mark in order to be registered. Such inaccurate representation of the sign which is the combination of colors presented in an abstract (no contours) may lead to many different variations, which in turn, will not allow the consumer to perceive and remember this sign, and thus re-purchase the goods originating from the same company.

Categories: absolute grounds for refusal | Art. 29 TMA | Art. 4 TMA | Art. 7(1) TMA | Directive 89/104/EEC | distinctive character | double color | non-traditional trade marks | Polish Act on Trade marks | Polish Supreme Administrative Court | trade mark examination | trademark law.