Trade mark law, case VI SA/Wa 390/08

September 8th, 2008, Tomasz Rychlicki

RSX Company from Katowice applied for and was granted trade mark protection for word trade mark MERCI on 4 September 2003, R-146586. The sign covered substitutes for coffee and coffee-based beverages as provided in class 30.

August Storck KG, the manufacturer of MERCI chocolates from Germany, filed a request for invalidation of the right of protection of the RSX trade mark. August Storck has owned the MERCI word trade mark R-68903 protected in Poland since 1990, also in class 30 (cocoa, chocolate, sweets). The decision on registration was issued by the Polish Patent Office on 4 March 1992. August Storck also registered a MERCI word-figurative trade mark in Poland, based on the Madrid Agreement’s provisions, IR-0728855.


The German company alleged during the invaidation proeceedings that between those two signs there exists a risk of collision. Originally, the Polish Patent office ruled that there was no chance of such risk, because the goods were different, namely, coffee and cocoa. Accordingly, the PPO rejected the opposition filed by August Storck.

The German Company appealed against the PPO’s decision to the Voivodeship Administrative Court (VAC) in Warsaw. August Storck’s representative alleged that PPO has incorrectly analyzed the goods in question. The VAC agreed with this argument in its judgement of 13 October 2006, case file VI SA/Wa 895/06 and it annulled the PPO’s decision. The court emphasized the fact that there was no doubt that coffee and cocoa belonged to the same group of goods and that they were sold in the same stores. Coffee is a component of many chocolate products. In the court’s opinion, the PPO wrongly considered that these goods were not homogeneous. DAC also found that PPO improperly accepted that coffee and cocoa may be produced by different undertakings.

The case went back to the Polish Patent Office. RSX argued that coffee is a specific drink and no-one would connect it with cocoa, since they are not complementary goods. The RSX representative pointed that in one class the goods may be heterogeneous, for instance chewing gum and chocolate. However, the PPO in its decision of 28 August 2007 (Sp. 65/07) annulled the disputed mark. The Office held that in accordance with article 9(1)(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendment, three conditions have to be fulfilled: the signs are identical or similar, homogeneity of goods, the possibility of leading a consumer into confusion as to the origin of goods. The PPO acknowledged in its decision that all three conditions were met.

This time RSX appealed the PPO’s decision. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 30 July 2008 case file VI SA/Wa 390/08 dismissed the complaint and ruled that PPO’s decision was this time correct. Coffee and cocoa are competitive products and the consumers overlap. Cocoa can be bought by a follower of coffee (not necessarily a person who drinks it), for example, as a gift for someone. Therefore, these are homogeneous goods.