Trade mark law, case VI SA/Wa 1616/11

August 28th, 2012, Tomasz Rychlicki

On May 2008, the Polish Patent Office granted the right of protection for the word-figurative trade mark V V V.V. MOTOR R-205440 for goods in Class 12. This sign was applied for by FUSAN HANDICRAFT Co. from Taiwan. On April 2009, Volkswagen AG filed a notice of opposition to the decision of the Patent Office. VW argued that the trade mark in question is similar to its well-known and reputed CTM, and the reputation is obvious and does not require any evidence. After careful examination of the case, the PPO invalidated the right of protection. FUSAN HANDICRAFT Co. filed a complaint against this decision.

R-205440

The Voivodeship Administrative Court in its judgment of 18 November 2011 case file VI SA/Wa 1616/11 dismissed the complaint. The Court ruled that despite the editorial differences in the lists of goods of compared trade marks, the PPO correctly decided that some of the goods are to be regarded as identical. The Court agreed that the dominant element of the trade mark at issue was a composition of graphics and letters placed in the circle. That was another argument in favour of finding the similarity of signs. So the phonetic differences resulting from the different pronunciation of the letters “VV” and “VW” did not neutralize the visual similarity between the marks. The Court did not agree with the argument that the PPO failed to properly assess the similarity of the goods. The PPO did not examine too broadly the comparable lists of goods, becasue there was no doubt that VW using the priority, had the chance to seek for the broader protection for its trade mark.