Trade mark law, cases VI SA/Wa 1996/08 and VI SA/Wa 1995/08

July 11th, 2009, Tomasz Rychlicki

On August 2008, in a post entitled “Trade mark law, case Sp. 127/07 and Sp. 254/07” I commented on two decisions of the Polish Patent Office regarding differences in labels for mineral water that shared the same word element “Zloty Potok” (“Golden stream”), this being also the name of a village from Gmina Lesna.

The vogt of Gmina Lesna and Zloty Potok Company did not agree with PPO’s findings and they lodged a complaint to the Voivodeship Administration Court in Warsaw arguing that Sokpol Company’s trade mark “Zloty Potok” R-177610 may lead consumers to confusion as regards the orgin of goods, that it was applied for in bad faith and it is unlawfully using the name of a village. The PPO argued that according to the Court of the First Instance’s findings in case , Peek & Cloppenburg KG v. OHIM (Cloppenburg), the registration of geographical names which are unknown to the relevant class of persons is not in principle precluded.

R-177610

The Voivodeship Administrative Court in Warsaw dismissed both complaints in its judgments, case files VI SA/Wa 1996/08 and VI SA/Wa 1995/08. The VAC held that the disputed mark should be assessed as a whole, which in this case concerns a sign that is made up of figurative element and “Zloty Potok” description. In consequence, this trade mark is is fanciful sign which could not constitute the registration of a geographical or historical name. The sign does not mislead consumers because it does not contain information that the materials for the production of goods it was registered for come from Zloty Potok, but that they originate from Jura Krakowsko-Czestochowska. Thus the argument based on bad faith registration cannot be taken into account.

See also my posts entitled “Trade mark law, case 6 II SA 1156/02“, “Trade mark law, case II SA/Wr 2928/02” and “Trade mark law, case VI SA/Wa 1945/05“.