Trade mark law, case II GSK 1378/10

March 12th, 2012, Tomasz Rychlicki

The Polish Patent Office had refused to grant the right of protection for the word trade mark PUCHATEK CHOCO Z-321348 filed by Lubella Sp. z o.o. sp. kom. ak., for goods in Class 30. Lubella provided a letter of consent, which had been granted by Maspex Sp. z o.o., the owner of the prior-registered trade marks that include word element PUCHATEK. The PPO decided that it cannot consider the letter of consent, inter alia, for the reason that commercial relationships between the entities are not permanent. The use of a letter of consent in such a case could potentially cause problems when dealing with its withdrawal when the cooperation between the entities has ceased to exist. The PPO also remind that the Polish Industrial Property law provides for the institution of the letter of consent, only to signs whose protection lapsed. Lubella filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 20 July 2010 case file VI SA/Wa 600/10. Lubella filed a cassation complaint.


The Supreme Administrative Court in its judgment of 16 December 2011 case file II GSK 1378/10 upheld the questioned judgment. The Court agreed with the PPO that Lubella was a different legal entity from the right holder of earlier trade marks that were considered as similar. The Court noted that it should be always borne in mind that the task of a trade mark is to distinguish the goods of one undertaking from those of other undertakings. The trade mark has to fulfill the function of determination of origin. This function is expressed objectively by commodity/goods, to which the sign is assigned, and it provides the consumer an idea about the qualities of a particular product, and subjectively i.e. the trade mark belongs to a given undertaking based on the right of protection that was granted to him or her, and it lets for the identification of the goods with the source that is indicated abstractly or by name. The protected trade mark should prevent from the risk of confusion on the part of consumers, because on the one hand it protects the economic interests of entitled entrepreneur, on the other hand it is aimed at consumers, in order to distinguish the origin of the goods. The SAC also reminded after the VAC that the Polish Patent Office does not examine the way in which the trademark is used on the market, except for its reputation, notoriety or secondary meaning i.e. acquired distinctiveness. The examination of a trade mark application is carried out in abstracto, that is, in isolation from market conditions.