Trade mark law, case VI SA/Wa 1018/08
September 24th, 2009, Tomasz RychlickiTo coin a paraphrase, sex always sells when it comes to news reporting — so that was the reason why I chose such a topic. TVP S.A. – Polish public broadcasting corporation applied for registration for word-figurative sign SeXemisja (in English: SeX screening/broadcasting) in classes 9, 38, 41, Z-294432.
The Polish Patent Office (PPO) refused to grant trade mark protection because of the earlier registered word trade mark SEKSMISJA R-116200 (in English: sexmission) owned by Studio Filmowe Zebra in Warszawa. The right for protection was granted on 13 December 1999. It was registered in classes 9, 16, 35, 41 and 42. The PPO has ruled that TVP’s sign is similar to the SEKSMISJA trade mark mainly in the visual aspect. According to PPO, the graphics used in TVP’s sign distinguish the word “sex” and the middle letter “e” is not visible, so that the recipient can read it in the same way.
TVP has filled an appeal complaint before the Voivodeship Administrative Court in Warsaw (VAC), arguing that PPO erred while testing the similarity of signs. According to TVP’s representative the words “emisja” (screening/broadcasting) and “misja” (mission) differ conceptually and consumers will be able to distinguish between those two disputed signs without a risk of being confused as regards the origin of goods and services.
The Voivodeship Administrative Court in Warsaw in its judgment of 12 September 2008 case file VI SA/Wa 1018/08 annulled the contested decision. Judge Malgorzata Grzelak ruled that the PPO did not explain why visual similarity played dominant role in this case. The Court held that PPO should also specify what is the concept of a regular recipient of these signs. The Office has to assess the degree of attention of consumers of these goods and services and, in addition, the PPO must refer to all allegations raised by the TVP S.A.
This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.