Trade mark law, case VI SA/Wa 1620/08

January 22nd, 2009, Tomasz Rychlicki

On 22 January 2003, the Spanish company Aceites del Sur-Soosur S.A. applied to the Polish Patent Office to register the word trade mark LA ESPANOLA Z-260063 in class 29 for goods such as edible oils and fats. The PPO rejected this trade mark application, justifying its decision case file DT-51/08 on the basis of Article 129(1)(ii) and Article 129(2)(ii) 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments.

1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character

Article 129(2)(ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods.

The representative of the Spanish company claimed that Aceites del Sur-Soosur had a long tradition in the production of such goods and is well-known in many countries, and that there is also a CTM registration for the word-figurative trade mark LA ESPANOLA CTM no. 000132092, however, the PPO found that the sign indicated the word origin of goods from Spain. In its original language it means “the Spanish” or “Spain”. And in PPO’s opinion Spain is also famous for production of goods of this type, such as oils.

Aceites del Sur-Soosur filed a complaint before the Voivodeship Administrative Court in Warsaw but the VAC in its judgment of 18 November 2008, case file VI SA/Wa 1620/08 fully agreed with the Polish Patent Office and stressed the fact that such sign, while presented without any graphic element, has purely-for-information status, which points to the place of origin of goods imported from Spain.