Trade mark law, case II GSK 666/10

June 4th, 2012, Tomasz Rychlicki

The Polish Patent Office granted the right of protection for the word trade mark Columbia R-182641 that was applied for by the Polish entrepreneur “ORION” Jerzy Czernek from Łódź. The German company Imperial Tobacco (EFKA) GmbH & Co. KG 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 COLUMBUS IR-0613016 registered for some identical goods in Class 34. Mr Czernek argued that there is no likelihood of confusion between both trade marks, as the recipients of goods and services covered by those signs accurately identify the brand of cigarettes and they do not confuse them. The PPO agreed and dismissed the opposition. Imperial Tobacco filed complaint against this decision.

The Voivodeship Adminsitrative Court in its judgment of 25 January 2010 case file VI SA/Wa 1798/09 dismissed it. Imperial Tobacco filed a cassation complaint.

The Supreme Administrative Court in its judgment of 15 June 2011 case file II GSK 666/10 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that consumer’s attention focuses on the similarities and the first part of the sign. The SAC also noted that the VAC has not explained why it considered that eight-letter signs, that share the same 6 letters and the identical first two syllables, are completely different. In the case of identical goods, the analysis of similarity between trade marks should be particularly careful and thorough. The SAC noted that it should be always remembered that trade marks are to help customers to associate the product with the manufacturer, and not obscure the market and lead to confusion.

The Voivodeship Administrative Court in its judgment of 28 September 2011 case file VI SA/Wa 1541/11 reversed the contested decision, ruled it unenforceable, and returned the case to the PPO for reconsideration.

However, the Polish Patent Office in its decision of 4 April 2012 case no. Sp. 538/11 did not decide on the mertis of the case, becasue Mr Czernek waived his right of protection and Imperial Tobacco withdrew the opposition.