On 14 March 2005, the Polish company PMB S.A. from Białystok applied for “dębowa mocno wędzona” (oak heavily smoked) trade mark Z-292377, for goods in class 29 such as meats, smoked products and offal products.

The Polish Patent Office denied to grant a right of protection and PMB filed a complaint to the administrative court. The Voivodeship Administrative Court in Warsaw in a judgment of 14 April 2010, case file VI SA/Wa 274/10, rejected the complaint. According to the Court, in this case, the PPO correctly held that PMB has not shown that the sign has acquired distinctiveness. As it was clear from case files, the only evidence provided by PMB was statements of sales of products marked with the questioned sign as of January 2005. The issue of acquisition of secondary meaning (acquired distinctiveness) is taken into account together with all the circumstances of the presence of a sign on the market, including such as: market share, the intensity, geographical extent, duration of the use of a trade mark, investments in advertising, the percentage of a relevant group of customers who recognize the sign as an indication of origin from a particular entrepreneur, etc. Such evidences must come prior to the date of filing of a trademark application with the Polish Patent Office. The Court commented on the Community case law in which the evidence of secondary meaning is also allowed from the period after the date of trade mark application, if they show that acquired distinctiveness already existed at that date.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Categories: acquired distinctiveness | Art. 129(1)(ii) IPL | Art. 129(2)(ii) IPL | Art. 130 IPL | case law | distinctive character | secondary meaning | Voivodeship Administrative Court.