Trade mark law, case II GSK 496/09

July 2nd, 2010, Tomasz Rychlicki

The Polish Patent Office has refused to recognize the right of protection for a trademark PREMIUM DE-LUXE NEMIROFF IR-802093 registered for Nemiroff Intellectual Property Establishment because of its similarity to a series of earlier trade marks owned by the Pokish Company Wyborowa S.A. This series included word trade mark PREMIUM R-71602, PREMIUM VODKA R-82601, GOLD PREMIUM R-108603 and many others. Nemiroff filed a request for reconsideration claiming that the word “Premium” with respect to alcohol is often used to describe more accurately its class and quality and in this connection it has no distinctive character. Consumers are choosing alcohol based on its quality and the name of the manufacturer.


The Patent Office upheld the contested decision. The PPO explained that the most exposed part of the questioned trade trade is the word PREMIUM, because of its location, size and bright color in contrast to the soothing white-blue-gray color of the rest of the sign.The PPO stated that the word “Premium” is easy to remember, but it has rather poor degree of distinctive character, which are often used to denote exceptional quality. The figurative elements of the mark in such a situation may not be sufficient to exclude the likelihood of misledading the purchasers as to the origin of the goods, in particular, it will not help to exclude the associations between characters. Although the PPO agreed with the position of the parties as to the universality of the word “Premium” in trade, however, the PPO also noted that in the strict sense it may be a distinctive sign in Poland, and it is the most exposed element in questioned trade mark. The broad and long-term use of it in the form of trade marks used by Wyborowa S.A. allowed it to acquire a secondary meaning. Given the above, the Patent Office found that in normal economic turnover PREMIUM DE-LUXE NEMIROFF may mislead the public as to the origin of the goods, as well as infringe the rights of protection of the owner of the opposed trade marks.

Nemiroff filed a complaint. The Voivodeship Administrative Court (VAC) in Warsaw in its judgment of 27 November 2008 case file VI SA/Wa 1583/08 sided with PPO’s opinion. The VAC held that the Office properly decided that the questioned trade mark is similar to a series of earlier registered trade marks, all including the distinctive word element „Premium”, which created the risk of the public being misled.

Nemiroff filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 March 2010 case file II GSK 496/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that the VAC erred in assessing the similarity between the opposing trade marks by focusing only on one element – the word “Premium”, without trying to explain its distinctive character as a designation of exceptional quality of a product. Then it would be difficult to talk about the fact that the earlier registered trade marks with the word “Premium” come from one source. The owner of a sign that has weak distinctive character must often tolerate the coexistence of the similar trade marks.

See also “Trade mark law, case VI SA/Wa 1133/10“.