Trade mark law, case II GSK 654/08

March 20th, 2009, Tomasz Rychlicki

On 29 December 2004, the Polish Patent Office registered the word trade mark DIX R-158898 applied for on 24 May 2001 by the Polish company Gold Drop in Classes 1, 2 and 3. On 20 December 2003 Gold Drop applied to register another word-figurative trade mark DIX also in Classes 1, 2 and 3. The PPO registered this trade mark R-160901 on 11 April 2005 accordingly.

R-158898

The French company Balenciaga from Paris opposed these registrations. The request to invalidate the right of protection was based on the provisions of Article 132(2)(ii) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), 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.

Balenciaga owned the word trade mark registration LE DIX R-152201 in Class 3. This sign was registered by the PPO on 8 May 2003 with priority from 10 June 1999. The French company claimed confusing similarity of the disputed marks because of the predominating DIX element. In addition to these arguments there was also similarity of good (cleaning preparations).

R-160901

The PPO invalidated both trade marks in its decision of 13 March 2007. The PPO agreed that the disputed signs were similar and that there existed the risk of misleading the public as regards the origin of goods. Gold Drop lodged a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 7 February 2008 case file VI SA/Wa 1787/07 rejected Gold Drop’s complaint in case of the trade mark DIX R-160901. As regards the similarity of goods, the Court could not agree with the assertion that the term “cleaning products” in this list of goods refers only to the category of cosmetics. In accordance with the terminology adopted in the Nice Agreement concerning the international classification of goods and services, and adopting by the Court of the language interpretation, it should be stated that the “cleaning preparations” refers to chemical products and have been clearly demarcated in the class 3 from the second group of goods that are intended for personal use, i.e. perfumery. In the Court’s view the restrictive interpretation of the term “cleaning preparations” only to the range of goods including body cosmetics would be invalid.

However, the Voivodeship Administrative Court in Warsaw (in a different composition of judges) in its judgment of 21 February 2008 case file VI SA/Wa 1789/07 agreed with Gold Drop’s complaint regarding the trade mark DIX R-158898. In the Court’s view, the PPO has omitted and it has not not determined, what is the relevant public in relation to which it is necessary to assess the likelihood of confusion. The PPO did not find if the relevant public was the average consumer in France or European consumers, or whether these are the goods from the so-called. “the higher shelves”, and the recipient is a demanding customer or whether the goods are intended for daily use. The evidence presented before the PPO did not allow to assume that the goods included in the list of disputed trade mark were homogeneous to goods the earlier trade mark was registered for.

Gold Drop filed a cassation complain before the Supreme Administrative Court against the VAC judgment of 7 February 2008 case file VI SA/Wa 1787/07. The SAC rejected the complaint in its judgment of 3 February 2009 case file II GSK 654/08. The Court held that Gold Drop has based its cassation complaint only on the breach of the Article 132(2)(ii) of the IPL, and the SAC confirmed that while evaluating the similarity of signs only factual findings decide the case, so it was necessary for Gold Drop to raise the plea of breach of the procedural law (administrative proceedings), which the company did not put forward and while deciding the case the SAC is limited to motions included in a complaint. This judgment is final.