Trade mark law, case II GSK 665/10

June 3rd, 2012, Tomasz Rychlicki

On May 2006, the Polish Patent Office granted the right of protection for the word trade mark corovin R-173989 that was applied for by the Polish company CB S.A. The German company Coroplast Fritz Müller GmbH & Co.K.G. from Wuppertal filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection, claiming similarity to its trade mark Coroplast R-91907. The PPO dismissed the opposition and decided that in assessing the similarity of signs, the word trade marks COROPLAST and COROVIN are not similar in the semantic aspect because both are fanciful signs, they are neither similar in aural aspect because both assessed globally sound different due to the different endings, and they are not similar in the visual aspect due to different endings. Both companies operate in Poland in various sectors and the goods, at which the trade marks are placed, are not everyday use products. Furthermore, COROPLAST and COROVIN are also registered as trade marks in Germany and they co-exist seamlessly. Coroplast Fritz Müller filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 4 January 2010, case file VI SA/Wa 442/09 repealed the contested decision. The Court applied to its reasoning rules of the law of prägnanz (German: pithiness) while deciding this case. The Court ruled that by creating specific stimuli, one can manipulate the external context, and by influencing the human experience, one can manipulate the internal context. The law of proximity states that elements close to each other compared with other, more distant elements form the figure. The law of similarity based on the law of proximity in relation to similar elements, indicates that human perception can give rise to a new separate figures, and a new association. Next, the law of closure indicates that the perceptual system adds the missing elements and closes the form of incomplete figures, and in this case one can add to the already existing characters CORO other letters. It should be noted that the human being creates the perceived reality based on the interaction of knowledge that flows from the various branches and experience, with received stimuli. So it may be, in this case. Human knowledge derived from other branches of science may “complete” the lack in the designation and close this sign. CB S.A. filed a cassation complaint.

The Supreme Administrative Court in its judgment of 22 June 2011 case file II GSK 665/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that when assessing the similarity of word trade marks, the first and initial part is essential, because it focuses recipients’ attention. However, the VAC ignored the fact that in a situation when the first element has a very weak distinctive character as a result of its use by many entrepreneurs in many different trade marks, the meaning of the second part of the trade mark is increasing and may well be that it’s this second part of the sign – the ending of the words – is distinctive and dominant.