Trade mark law, case VI SA/Wa 1510/08

November 26th, 2008, Tomasz Rychlicki

BWS Poland sp. z o.o. applied for trade mark registration for the word-figurative sign “SUNLINE TOKAJI FURMINT” Z-246957 on 26 February 2002, in class 33 for alcoholic beverages. The Polish company BARTEX-Bartol reported observations as to the existence of grounds that may cause a right of protection to be denied. BARTEX-Bartol claimed that Polish Patent Office (PPO) would undermine the protection of third-party rights, namely the Hungarian company Tokaji Kereskedőház Rt., because the sign that BWS applied for contained the name of the Hungarian Company. BWS explained that it imported wine from another Hungarian company and that the label “SUNLINE TOKAJI FURMINT” would not lead customers in confusion as regards the orgin of goods.

However, the Polish Patent Office issued a decision denying protection rights for a trade mark that BWS has applied for. The PPO held that granting protection rights would be against provisions included in articles 131(1)(iii) and 131(3) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof.


Article 131(3) of the IPL
In the case of wines and spirits, any trademark, which incorporates geographical elements discordant with the true origin of the good, shall be considered as a trademark misleading the public.

BWS appealed to the Voivodeiship Administrative Court (VAC) in Warsaw. During the hearings, the company claimed that it imported the wine from the vineyard of Vagra Pincészet Kft, which sells Tokaji Furmit Sulina wine, and that the Hungarian company agreed the sign could be used by its Polish business partner. BWS argued that Tokaj and Furmit means the region and strain of grapes. BWS presented an opinion that it applied for trade mark protection for a specific word-figurative sign, and that it had no intention to prohibit anyone to use these names.

The Polish Patent Office emphasized that TOKAJI is geographical indication of this kind of alcoholic beverage, which is used by manufacturers in Hungary as had been already agreed with the European Commission (and procedures for the arrangements are discussed with Slovakia) – this is why the PPO is obliged to take such term into account as a GI. The PPO also pointed out that the company may distribute the wine under SUNLINE name and to use it toghether with TOKAJI word, but it is not allowed to gain exclusive rights in TOKAJI and FURMIT signs. The VAC in judgment of 25 September 2008, case file VI SA/Wa 1510/08, has fully agreed with PPO’s decision and dismissed BWS appeal. The judgment is not final.