Trade mark law, case VI SA/Wa 1655/08

August 27th, 2009, Tomasz Rychlicki

On 7 February 2003, Browar Belgia Sp. z o.o. from Kielce applied to register the word trade mark GINGERS Z-260753 for goods such as beer, beer-based drinks, juices, syrups, essences for making beverages, soft drinks, preparations for the production and manufacture of beverages, extracts and extracts of hop in class 32.

In a letter dated 14 May 2004, the Polish Patent Office informed the applicant that there was an obstacle to granting the right of protection for GINGERS mark, since it is an informative sign which has insufficient distinctive character to enable it to distinguish the products of one undertaking from other companies, under normal market conditions.

In its letter of 14 June 2004 Browar Belgia argued that, contrary to the assertion of the PPO, the name “gingers” associated with the list of goods covered by the application is not a generic term and does not perform only an informative function. Browar Belgia noted that the word “gingers” has multiple meanings in English language and can be understood as, inter alia, the colour red/red-headed and also as verve, the zest or liveness, and the word “ginger” is just one of many translations into Polish. The name GINGERS should also be regarded as fanciful because it has the “s” letter placed at the end of a word, while the noun “GINGER” is singular. Moreover, it is unreasonable to say that all consumers of beer and soft drinks in Poland speak fluent English and will associate English word with its counterpart in the Polish language, ie ginger.

In a letter of 17 October 2005, the PPO expressed the view based on articles 129(1)(ii), article 129(2)(i) and (ii) and article 131(1)(iii) 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.

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

Article 129(2)(i) and (ii)
2. Subject to Article 130, the following shall be considered as being devoid of sufficient distinctive character:
(i) signs which are not capable of distinguishing, in trade, the goods for which they have been applied,
(ii) signs which consist exclusively or mainly of elements which may serve, in trade, to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods,

Article 131(1)(iii)
1. Rights of protection shall not be granted for signs:
(iii) which, as for their nature, may mislead the public, in particular as to the nature, properties of the goods or, with regard to paragraph (3), as to the geographic origin thereof,

The PPO noted that the mark applied for cannot be granted a right of protection due to the fact that the sign is informative for the majority of goods in class 32 and as for extracts and extracts of hops; it is a sign that it may mislead the public as to the nature or characteristics of these goods. In its decision of 28 February 2007, the Polish Patent Office refused to grant the right of protection for the word trade mark GINGERS. The PPO noted that granting the right of protection for GINGERS word trade mark in favor of one entrepreneur would limit freedom of business activity of other market participants in the process of producing and marketing of these goods and thus hamper the business activities of other entities.

In a letter dated 11 May 2007, Browar Belgia requested a retrial, calling for the reversal of the contested decision. According to Browar Belgia, granting the right of protection for GINGERS trade mark would not limit anyone from the possibility of providing, for example, the composition of beer on the label in place designated for that purpose, but this does not mean that the composition of beer, to be specific the content of the component, is a passport to putting GINGERS into other trade marks. It was an unacceptable situation in which another party would benefit from the reputation of the trade Gingers, that was promoted by a very expensive advertising campaign. In the meantime, Browar Belgia transferred the right to trade mark application GINGERS Z-260753 to Kompania Piwowarska S.A. from Poznań. In a decision of 30 May 2008, the PPO upheld in entirety its previous decision of 2007. Browar Belgia filed a complaint to the Voivodeship Administrative Court (VAC) in Warsaw and Kompania Piwowarska joined the case.

The VAC in its judgment of 17 February 2009, case file VI SA/Wa 1655/08 dismissed the complaint and ruled that the principle of free access for all traders to signs that serve to communicate information about the nature of goods, their characteristics or properties does not allow for their monopolization by a single market participant.