Trade mark and Press law, VI SA/Wa 2135/08

September 9th, 2009, Tomasz Rychlicki

On March 2003, the Polish Patent Office granted the right of protection for the word-figurative trade mark 1000 Jolek R-142003 for Oraczewski Roman Oficyna Wydawnicza PRESS-MEDIA from Mielec for goods in Class 16 such as magazines, brochures, crosswords, periodicals.

On October 2003, Agencja Wydawnicza TECHNOPOL Spółka z o. o. from Częstochowa filed a notice of opposition to a final decision of the Patent Office on the grant of the right of protection for the trade mark 1000 Jolek R-142003. Technopol based its opposition on articles 9(1)(i) and 8(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments.

(1) Registration of a trade mark for goods of the same kind shall not be permissible where:
i) it resembles a mark registered on behalf of another enterprise to such an extent that it could mislead purchasers as to the origin of the goods in ordinary economic activity

Article 8(1)
A trade mark shall not be registrable if:
i) it is contrary to law or to the principles of social coexistence.

Technopol argued that 1000 Jolek was similar to a series of crosswords periodicals which include magazines marked by a noticeable number in conjunction with the word “panoramic” (in Polish: panoramiczny), i.e. trade marks such as 100 PANORAMICZNYCH R-109471, 200 PANORAMICZNYCH R-105389, or 1000 PANORAM R-126399. According to Technopol, the disputed trade mark duplicated the distinctive element of Technopol’s marks – the form of a numeric element. In Technopol’s view, if the word “Jolki” is omitted it only remains a white figure on a red background. In this situation, the average recipient will identify this sign with a series of Technopol’s publications which have been known for many years. Technopole emphasized that it was the leader in the market for crossword magazines publishing that started in 1994 by introducing the first issue of crossword magazine 100 PANORAMICZNYCH (100 Panoramic). Then Oraczewski began to compete with Technopole by puting on the market crossword magazines entitled in an identical manner, where the leading element a multiple number of 100 was exposed, and the numbers were connected with the word “panoramic” or “crosswords”. According to Technopol, the success of its titles lay precisely in the simplicity of communicating with its customers; Oraczewski took advantage of Technopol’s success in creating of such excellent titles. Technopol also argued that its signs make the so-called “family”, a series of trade marks used to mark Poland’s most popular series of games magazines, which can be more easily identfied through the common element – the number “100” or its multiples, which is also perceived by the public as information about the goods originating from the same company.

PRESS-MEDIA argued that the disputed trade mark is descriptive in its phonetic aspect, since the number “1000” combined with the word “Jolek (which defines the type of crossword) causes the trade mark to lack concrete distinctive character. Crucial for the distinctive character of the disputed trade mark is its graphics consisting of the maroon background, the composition of the number 1000 and “Jolek” which are written in fanciful font. PRESS-MEDIA also argued that digits (numbers) only, as well as numbers with words such as “crosswords”, “panoramic”, “panorama”, “sudoku” are purely informational signs with regard to journals with crosswords and other logical exercises. These signs inform of the quantity and/or types of logical exercises/crosswords available in a magazine/publication. PRESS-MEDIA also mentioned that OHIM has repeatedly refused to grant to Technopol trade mark registrations for numbers as trade marks for goods in class 16. See CTM applications such as 150 no. 00466549, 250 no. 004665592, 350 no. 004665601, 222 no. 004665618, 333 no. 004665683, 555 no. 004665709 and Community Trade Marks such as 100 SUDOKU no. 004635711 and 200 SUDOKU no. 004635736. In its decision of April 2009, the PPO rejected Technopol’s oppostion. The company filed a complaint.

The Voivodeship Administrative Court in its judgment of 23 February 2009 case file VI SA/Wa 2135/08 ruled that the protection of a press title which is also a trade mark for a crossword magazine does not exclude the possibility of obtaining the right of protection by another entrepreneur for the press title containing the same elements (numbers), if these signs can be easily distinguished in the trade. The provisions included in article 132(4) 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 subsequent amendments, permit a convergence of these elements, which on the press-market are in a common use, which also excludes the possibility of monopolisation of the use of such phrases.

3. The protection of a trade mark which contains the signs referred to in Article 131(2)(ii)-(iv) and the symbols referred to in Article 131(2)(v), or signs which relate to the origin of the goods, shall not prevent a trade mark containing the same elements from being granted a right of protection on behalf of another undertaking for identical or similar goods, provided that the both trade marks remain easily distinguishable in the course of trade.

4. Paragraph (3) shall apply accordingly to press-titles as trade marks that contain words or combinations of words customary used in the press-market.

What is more interesting the Polish court acknowledged that this rule is also reflected in the foreign case-law concerning conflicts of trade marks and press titles and pointed out to two judgments of the German Bundesgerichtshof of 1 March 2001, case act signatures I ZR 211/98 and I ZR 205/98, that concerned TAGESSCHAU and TEGESBILD trade marks and TAGESSCHAU and TAGESREPORT trade marks, (AfP of 2001 r., no 5, pp. 385, 389). The judgment is not final and a cassation complaint has been filed.