Trade mark law, case II GSK 506/07

July 30th, 2008, Tomasz Rychlicki

Reemtsma Cigarettenfabriken GmbH from Hamburg registered the trade mark BOSS LIGHTS R-136520 in class 34 for goods such as tobacco, tobacco products, smokers’ articles, cigarettes, cigarillos, matches. The owner of the following trade marks: BOSS R-66417, registered for goods in classes 9, 14, 18, 25 and 28, HUGO BOSS R-66418, registered for goods in classes 9, 14, 18, 25 and 34, BOSS HUGO BOSS R-156696, registered for goods in class 34 and the word-figurative mark BOSS R-82792 filed before the Polish Patent Office a request for the invalidation of the right of protection for the trade mark BOSS LIGHTS. The PPO found that there was a likelihood of consumer confusion with reference to the origin of goods in the market turnover. The PPO also held that the registration of the BOSS LIGHTS trade mark violated the prior rights of HUGO BOSS Trade Mark Management GmbH & Co. KG, including its company name.

Reemtsma Cigarettenfabriken appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 4 September 2007, case file VI SA/Wa 2195/06 sided with the PPO’s decision. Reemtsma Cigarettenfabriken referred to the last instance and it has filed a cassation complaint before the Polish Supreme Administrative Court.

The Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, gave an interpretation and clarified what is a famous (renown or reputed) trade mark and how to prove the fame of a trade mark. The SAC agreed with the view that famous trade mark has a reputation and that, besides its recognition, it must also be characterized by the following characteristics:

  • market share/participation (both quantity and value of sold goods),
  • range and long-lasting of an advertisment of the product bearing a trade mark,
  • territorial and temporal range of use,
  • licences granted for trade mark use, quality of goods bearing a trade mark,
  • value of a given sign in assessment of an independent financial institution,
  • size and extent of expenditures spent on promotion of a mark,
  • the relationship on prices of substitute goods,
  • if (and to what extent) the mark is used by third party.

The SAC repealed the contested judgment and sent the case back to the VAC for reconsideration. See also “Trade mark law, case VI SA/Wa 1483/08“.