Trade mark law, case VI SA/Wa 16/12

May 29th, 2012, Tomasz Rychlicki

POLMOS BIAŁYSTOK S.A. requested the Polish Patent Office to invalidate the figurative 3D trade mark WISENT VODKA PŁ 1764 DISTILLED & BOTTLED IN POLMOS LANCUT POLAND R-191793 owned by Fabryka Wódek POLMOS ŁAŃCUT S.A. POLMOS BIAŁYSTOK is the owner of the figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 and the 3D trade mark R-85811 depicting a bottle with a blade of grass inside, that were registered with the earlier priority. POLMOS BIAŁYSTOK argued that there exists the risk of misleading the public because of the similarity of trade marks. The similarity is based on the distinctive element – a blade of grass, that is the distinguishing element of Żubrówka bottle, which leads to the fact that consumers associate the brand with these trade marks. POLMOS BIAŁYSTOK provided evidence that Żubrówka is one of the most popular vodka brands on the Polish market, as well as studies on the presence of Żubrówka brand in the market, materials on advertising campaigns, a research on consumer choices in buying of vodkas. The Company also argued that “a blade in a bottle” was commonly associated with Polmos alcohol trade marks in 1999, when the trade mark portfolio was divided between different companies. POLMOS BIAŁYSTOK claimed the reputation of the trade marks R-46050, R-62081, R-80991, R-85811 and R-125 911, the same as the reputation of Żubrówka vodka trade marks that were acquired by the company.


POLMOS ŁANCUT argued that the motifs of the wisent and a grass blade will not change the overall assessment of the compared trade marks, and as such, are associated with this type of vodka. In particular, the grass – Hierochloe odorata, which is necessary for the production of this kind of flavoured vodka. POLMOS ŁAŃCUT noted that the appropriation of these elements in favor of one company would not be justified, because it would limit the freedom of the activities of other competing entrepreneurs. POLMOS ŁAŃCUT provided examples of rights of protection for trade marks containing elements such as leaves and fruit of the rowan, drawings of a coconut or cherry, which are the signs used to mark of products in Class 33.


The Polish Patent Office dismissed the request. The PPO agreed that mentioned trade marks are reputed, but they were not similar. The PPO also noted that in the case of trade marks for alcoholic beverages, the consumer’s attention is directed primarily at the label and its contents, as part of communicating the essential information about the brand, type and manufacturer of purchased product, and only then – on the other elements, such as the shape of the bottle or its contents. The PPO decided that POLMOS ŁAŃCUT did not derive any benefits from the reputation the earlier marks. POLMOS ŁAŃCUT carefully created its trade mark in order to fundamentally distinguish it from earlier signs owned by POLMOS BIAŁYSTOK. The only common associations that the compared signs raise come down to the fact that they serve to mark the same kind of vodka. CEDC INTERNATIONAL Sp. z o.o., the successor of POLMOS BIAŁYSTOK, filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 3 April 2012 case file VI SA/Wa 16/12 dismissed it. The Court held that the decision of the PPO did not violate the law in force or the methodology for comparison of trade marks. This judgment is not final yet.