Trade mark law, case VI SA/Wa 1090/10

January 20th, 2011, Tomasz Rychlicki

Polish entrepreneur “MALWA” Tea Wojciech Fabisiak from Lubiszyn applied for the right of protection for FITO APTEKA Z-327704 trade mark for goods in Classes 05, 30, 35 and 39 such as medicinal tea, medicinal drinks, medicinal herbs, tinctures of herbs for medicinal purposes, extracts of herbs for medicinal purposes, herbal tea, medicinal herbs, dried herbs, herbal mixtures for medical purposes, tea, ice tea, fruit tea, instant tea, coffee, coffee substitute, coffee substitute vegetable preparations, retail services and/or wholesale to third parties in the field of herbs, packaging of herbs, tea packaging. The Polish Patent Office refused to grant the right of protection. The PPO found that the sign in question contains two verbal elements “Fito” and “Apteka”. The word “fito” according to the Dictionary of Foreign Words PWN (published by PWN, in 1993) is a first element of compound words that are denoting plants, for plants (from Greek “phyton” – plant). The word “Apteka” (in English: pharmacy) indicates the type of store where drugs are sold or made, as well as herbs, some cosmetics, pharmaceuticals, herbal teas, coffee. The PPO ruled that the applied signs lacks distinctive character. MALWA filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 17 November 2010 case file VI SA/Wa 1090/10 dismissed it. The VAC agreed with the PPO and held that the trade mark is devoid of distinctive character, where the words making up the sign in question have their specific meaning, both alone and in combination. The trade mark should provide information on the origin of goods from a particular manufacturer, and no information about the type of goods. The Court ruled that in case of word trade marks the criteria for granting a right of protection are much stricter than for word-figurative trade marks (combined signs) due to less room for maneuver for other businesses wanting to use a given word. The registration of a word trade mark, which lacks fanciful elements, but consist of a generic name, may unreasonably restrict the right of other entrepreneurs to describe their products.