Trade mark law, case VI SA/Wa 197/08

June 11th, 2009, Tomasz Rychlicki

On 5 September 2007, the Polish Patent Office dismissed the opposition filed by the German company Merck against the word trade mark zalbion R-159782 owned by the Polish company Bioton and registered for goods in Class 5 such as pharmaceuticals. Merck argued that the opposed trade mark is similar to its word trade mark cebion R-64136. Merck noted that Cebion is a well known sign since 80ties and enjoys big reputation on the Polish and international market. The PPO decided that the goods bearing the opposed trade marks are homogenous and it did not matter that they have a different application and are directed to different consumers. Cebion is a preparation with vitamin C, and it is a type of product available without any prescription, zalbion is eye drops product available only on prescription. However, the PPO found that both signs are phonetically dissimilar, despite the common syllable, and they have fanciful meaning. The PPO also said that evidence of the reputation of cebion presented by Merck was insufficient. Merck filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 12 August 2008 case file VI SA/Wa 197/08 anulled the contested decision and decided that it was not subject to execution. The Court held that the PPO has not made a thorough review of the presented evidence. The judgment is final.