Trade mark law, case II GSK 265/06

May 7th, 2007, Tomasz Rychlicki

On 1 December 2003, Telekomunikacja Polska S.A, filed an opposition against the decision of the Patent Office of 26 March 2003 granting the right of protection for word-figurative trade mark Teleaudio R-143563 for Teleaudio Sp. z o.o. for services in classes 38 and 41 such as line and/or phone numbers renatal, audio-text services, organization of entertainment and education competitions.


TP S.A. stated that it is the owner of AUDIOTELE R-101622 trade mark and word-figurative trade mark AUDIO TELE R-101623, registered with the earlier priority, which are used in trade from 19 March 1995 for audio-text services. TP S.A. argued that it was the first company that lanched on 19 March 1995, a national audio-text system under the “audiotele” brand name. TP S.A. argued also that TELEAUDIO Sp. z o.o. entered the market of audio-text services almost a year later, and deliberately chose imitating sign for its firm (company name) and the trade mark, and copied the graphic which depicts a phone. According to TP S.A. such actions violated its property rights and might mislead the public as to the origin of services.

The PPO ruled that the differences between the trade marks were not sufficient to eliminate the similarity between the compared signs. The essential elements of those marks – the words AUDIOTELE and TELEAUDIO were confusingly similar. According to the PPO the figurative elements of marks perform only a supporting role, as they will be perceived by the public as a decoration, not as the most significant elements that identify the source of the services. The PPO has indicated that the average customer will focus on the words AUDIOTELE and TELEAUDIO because in assessing the similarity of characters as a whole, the dominant and convergent elements of the sign are of crucial importance.


Teleaudio Sp. z o.o. decided to file a complaint. The Voivodeship Administrative court in Warsaw in its judgment of 25 April 2006 case file VI SA/Wa 2082/05 dissmissed the case. In the opinion of the VAC, the PPO has properly analyzed the similarity of TELAUDIO R-143563 trade mark and opposing AUDIOTELE sign. Both signs had to be compared, given the verbal, aural and semantic similarity. The VAC held that the case in question concerns the similarity of signs in verbal, aural and semantic aspects. The Court considered these factors as affecting the risk of confusion. The VAC noted that the PPO has analyzed the sign as a whole, and rightly presented the idea about the possible characteristics that may affect the ability to distinguish one trade mark from another. Teleaudio Sp. z o.o. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 265/06 dismissed the case. The SAC ruled the VAC accurately assessed the similarity of signs as an integral whole. The SAC noted also that the case-law of the Supreme Court established the rule that the legal assessment on the basis of Article 7 and Article 9(1)(i) and (ii) of the TMA with regard to word-figurative trade mark should be based on an integral whole of a trade mark, and not only one of the words, which is only one of its components (see the judgement of the Supreme Court of 11 March 1999, case file III RN 136/98, published in OSN, 2000/1/2).

The Court ruled also that the issue of similarity of trade marks is both the factual and legal category. See also “Trade mark law, case II GSK 36/05“. The Court ruled that the VAC rightly pointed out that the similarity of signs is examined and assessed based on common elements of marks, not by the differences. Thus, the differences do not preclude the similarity of the signs. The examination of the similarity should thus lead to the objective similarities and differences, and their sum should be related to the average attention of a reasonable consumer (see U. PromiƄska, Naruszenia praw na dobrach niematerialnych, PIRzP, 2001, p. 95 and literature cited therein).