Trade mark law, case case Sp. 181/09

August 24th, 2011, Tomasz Rychlicki

The Adjudicative Board of the Polish Patent Office in its decision of 15 September 2010 case Sp. 181/09 invalidated the right of protection for the word-figurative trade mark LEXUS R-194634 registered for the Polish company Astin sp. z o.o. This trade mark was registered for goods and services in Classes 06, 19, 20 and 37. The request for invalidation was filed by Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation). Toyota owns renown trade marks LEXUS that were registered with the earlier priority in Poland and in the European Union.


The PPO acknowledged the rule that the starting point for finding an infringement of reputation is to determine the similarity of the signs. In the case of combined trade marks (word-figurative), it is always necessary to consider the similarity of all the elements of trade marks being compared, but the verbal elements are crucial. The PPO decided that the dominant and distinctive elements of questioned trade mark and the opposing signs are original and similar words LEXUS. These trade marks are verbally identical. In the opinion of the PPO, the figurative element of the questioned trade mark only exposed and additionally strengthen in the mind of the potential consumer the word element of this trade mark. The PPO also ruled that in the conceptual aspect the sign LEXUS is fanciful one.

Astin claimed that the reputation of LEXUS trade marks has not been sufficiently proved because Toyota did not present evidence on the use in time and territorial use its trade marks, the quality of the goods, market share, and the size of investment in promotions. Toyota presented rich evidence material. These included copies of newspaper articles and advertisements from the years 1992-1999. According to Toyota, these publications indicated that the reputation of LEXUS trade marks has been shaped by long-standing and consistent creation of a positive brand image in the minds of Polish consumers. The PPO noted that there is no legal definition of a reputation. It was the Polish legal doctrine and the courts that have defined the essential criteria for determining what trademark reputation is. Accordingly, the reputation of a trademark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trademark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of the relevant goods. The reputation of a trademark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trademark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trademark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trademark. It was confirmed that the protection of reputed trademarks extends beyond the scope of registration and the selected classes, as reputed trademarks enjoy stronger distinctiveness. However, the burden of proof lies with the holder of the reputed trademark.

The PPO agreed with the judgment of the Voivodeship Administrative Court in Warsaw of 13 March 2006, case file VI SA/Wa 1626/05 that LEXUS trade marks owned by Toyota are renown and reputed signs. See “Trade mark law, case VI SA/Wa 1626/05“. The PPO found that the questioned trade mark LEXUS R-194634 was filed for the registration on the date where Toyota’s trade mark enjoyed high recognition on the Polish market and were associated with the luxury brand of cars and the prestigious image of the brand was the subject of intense marketing efforts of the producer. However, the fact that the trade mark is renown is not a sufficient circumstance to invalidate the right of protection, other conditions must be met, namely if the latter registered trade mark on behalf of another party for any kind of goods, would without due cause bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark.

The PPO held that the existence of the questioned trade mark on the Polish market may negatively affect the distinctive ability of Toyota’s trade marks because consumers may start to associate luxury brand with household tools. In addition, the detrimental nature of the registration in question may be manifested in other ways. For instance, it may cause the renown trade mark to become an ordinary sign that has lost the ability to attract the consumer and the strength with which it interacts to the mass public. This decision is not final yet.