Trade mark law, case Sp. 421/07

February 14th, 2009, Tomasz Rychlicki

On 18 April 2002 Polish entrepreneur Zaklady Chemiczne EMICHEM Michal Mierzwa from Poznan applied to register the word-figurative trade mark JAX in class 3 for goods such as washing preparations, body and hair care preparations, windshield preparations and washers, car-care preparations, stain removers, softening and bleaching preparations. The Polish Patent Office registered this trade mark R-171570 in its decision of 16 March 2006.

R-171570

Colgate-Palmolive Company, a Delaware corporation, New York (US), filed a request to invalidate the right of protection based on article 132(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.

2. A right of protection for a trade mark shall not be granted, if the trade mark:
(ii) is identical or similar to a trade mark for which a right of protection was granted or which has been applied for protection with an earlier priority date (provided that the latter is subsequently granted a right of protection) on behalf of another party for identical or similar goods, if a risk of misleading the public exists, in particular by evoking associations with the earlier mark.

The US company claimed earlier word-figurative trade mark registration AJAX Floral Bouquet R-135207. Colgate-Palmolive argued that there exist a high a risk of misleading the public because the disputed trade marks shared visual, aural and conceptual similarities.

R-135207

The PPO accepted Colgate-Palmolive’s arguments and invalidated JAX trade mark in its decision of 20 February 2009, act signature Sp. 421/07.