Recently, two American companies were keenly disputing trade marks with a TIFFANY element before a Polish court. The Voivodeship Administrative Court (VAC) in Warsaw in its recent judgments of 24 July 2008, cases files VI SA/Wa 237/08 and VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, cases files Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes.

The cancellation proceedings were started by Tiffany & Co. from New York. The New York’s company alleged not only the similarity of signs but also a breach of its over-150-year reputation applied to jewellery products. During one of the hearings before the Polish Patent Office, Tiffany & Co. provided evidence of a witness as regards the reputation and universal knowledge of Tiffany & Co. brand. The witness stressed that, although in post-war Poland the Tiffany brand was not present on the Polish market, the press (women’s magazines and other publications) wrote about the Tiffany & Co. as the provider of luxurious jewellery.The court has affirmed the PPO’s findings that the TIFFANY trade mark has the reputation even if it was not registered in Poland. Judge Olga Żurawska-Matusiak decided that renowned signs or snobbish signs (sic!) do not need to be widely known to the public. It is a sufficient factor if they are known to the relevant public, to whom such signs are addressed, those are consumers who are interested in buying luxury goods. If there exists an international reputation of a sign – it also includes Poland.

Categories: Class46 post | Polish Act on Industrial Property Law | Polish Act on Trade marks | Polish Patent Office | Polish courts | Polish law | Voivodeship Administrative Court | famous trade marks | firm | reputed trade marks | trademark law.