Non-traditional trademarks in Polish case law
April 30th, 2008, Tomasz RychlickiLast updated on 11 January 2010.
This post was inspired by a question and request I have recieved from my nice friend. I must admit that the Polish case law is not too rich in decisions regarding the issue of non-traditional trade marks, however some judgments are worth mentioning.
- Three-dimensional marks
- Trade dress
- Single colour
- Composition of colours
The judgment of the Supreme Administrative Court (SAC) of 29 June 2005, case act signature II GSK 92/05.
The interpretation of articles 4 and 7 of the Act on Trademarks should be made in accordance with article 3(1)(e) of the First Directive 89/104. According to this article, signs which consist exclusively of the shape which results from the nature of the goods themselves shall not be registered or if registered shall be liable to be declared invalid. This regulation should be interpreted in the manner that signs which consist exclusively of the shape of goods shall not be registered if it is proven that basic, functional features of such shape are assigned only to technical characteristics.
This judgment concerned
The judgment of the Provincial (Voivodeship/District) Administrative Court (VAC) in Warsaw of 2 March 2006, case act signature VI SA/Wa 1705/05.
I. According to article 30 of the Act on 31 January 1985 on Trade marks (Journal of Laws No 5, item 17 with later amendments), a legal interest to demand the invalidation of a trademark registration is afforded to an entity which derives such right from a competence to fill for trademark registration, use of a trademark or to demand the invalidation of a trademark registration for the sake of the collision with its own rights.
II. There is a presumption of good faith and bad faith has to be proven. There is an assumption that someone is acting in bad faith if he or she has the awareness of discrepancy of the situation with the law or as a result of his or her negligence in knowledge about the legal situation.
III. In accordance with the well established doctrine, practice and case law, a trade mark according to article 7 and article 9 sec. 1 pt 1 and 2 of the Act on Trade marks, should be examined as a whole. It is not allowed to test only one element of the complex sign, for instance the graphic, without taking into the consideration of the word elements of the sign, or doing it insufficient way. Therefore, if the Polish Patent Office examines individual elements of a sign, it should in next, to put them together and to draw the final conclusions.
and the judgment of the Supreme Administrative Court of 20 February 2007, case act signature II GSK 247/06, in which the SAC rejected a cassation complaint brought by the K. Company.
It can not be assumed that in case of word-graphic signs, a word element of such sign has a decisive character because it is easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer.
This judgment concerned TERRAVITA trade mark R-142204.
I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark? We may discuss.
The judgment of the Provincial (Voivodeship/District) Administrative Court in Warsaw of 3 August 2005, case act signature VI SA/Wa 1482/04. This judgment concerned separate Color RED Pantone 485 C for goods in class 30 such as confectionery, chocolate confectionery, sweets.
A single colour is not able by its nature to independently distinguish goods of individual entrepreneurs. But, even if a single colour is devoid of any distinctive character according to article 3(1)(b) of the First Directive, it may acquire such a distinctive character in relation to goods by use of such coulour. This factor should be considered when assessing the registerability of a single coulour as a trademark.
The judgment of the Voivodeship Administrative Court in Warsaw of 31 October 2006, case act signature VI SA/Wa 1420/06. This judgment concerned separate Color RED Pantone C32, IR-803195.
1. While examining whether the rights of protection may be granted, it should be determined whether a sign could serve as a trademark at all. Only after it was decided that a sign could be a trademark, one should examine whether a mark is sufficiently distinctive and therefore to check whether the sign is suitable for distinguishing the specific goods in trade, to designate of which it has been applied for.
2. The lack of distinctive character of a trade mark is considered as the absolute grounds for refusal to trade mark registration, but a sign may acquire distinctive character as a result of use.
3. It is difficult to say that red color combined with different kinds of equipment and tools, or accessories used in construction is something extraordinary, unique and unprecedented, which could stick decisively in the memory and let the consumer individualize the goods in the market among the goods of the same type but originating from different companies.
The judgment of the Supreme Administrative Court of 23 November 2004, case act signature GSK 864/04. This judgment concerned a trade mark that was filled according to the Madrid system of international registration of marks. The sign was presented as double coulour composition (lower part in orange, top part in white).
According to article 4 sec. 1 and article. 7 sec. 1 of the Act on 31 January 1985 on Trade marks, undefined trademark, which is not represented in one form, does not possess any sufficient ability to distinguish goods.
The judgment of the Supreme Court of 3 June 2009, case act signature IV CSK 61/09. This judgment concerned inter alia trade mark registrations for color trade marks. For instance R-115842 and R-115843.
Combination of colors can be a protected trademark in Poland.
I will try to update this post everytime I got any interesting judgment. Stay tuned.