Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.


In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.


While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(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 later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.