Trade mark law, case II GSK 1110/08

September 6th, 2008, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 24 July 2008 case file VI SA/Wa 238/08 dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeal against the Polish Patent Office decisions of 19 March 2007 cases files Sp. 68/04 and Sp. 69/04, regarding the invalidation 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 invalidation 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 ┼╗urawska-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.

Tiffany & Broadway Inc. Div. of Texpol Corporation filed a cassation complaint. The Supreme Administrative Court in its judgment of 8 July 2009, case file II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark is the one that has a high ability to automatically trigger associations with the product for which it was registered. It is quite obvious that this ability will be weaker, adequately to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses. The SAC annulled the questioned judgment and remitted the case to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.