Trade mark law, case II GSK 2037/13

February 23rd, 2015, Tomasz Rychlicki

The Polish company FARMINA Sp. z o.o. filed before the Polish Patent Office a notice of opposition to the final decision on the grant of a right of protection for the word-figurative trade mark FARMONA Waliczek R-190461 registered for goods in Classes 3 and 5. Farmina argued that the trade mark FARMONA Waliczek is similar to its word trade mark FARMINA R-98950 also registered for goods in Classes 3 and 5. Laboratorium Kosmetyków Naturalnych FARMONA Sp. z o.o., the owner of a contested registration, argued that both signs are different, and as such there is no likelihood of confusion. FARMONA Sp. z o.o. also requested the PPO to decided on the lapse of the right of protection for the trade mark FARMINA R-98950 for goods in Class 3. In its letter of May 2010, FARMONA withdrew all previous arguments made by a former attorney in the case and has requested the PPO not to take into the account of all the evidence submitted. FARMONA argued that the goods are not similar, and from the range of over 300 prodcts, only 3 are distibuted in pharmacies, but only in those who have a cosmetic department. FARMONA argued that the parties operate in other industries. FARMONA Waliczek is engaged in the production of natural cosmetics offering a series of body care products, facial hair, as well as professional cosmetics for beauty salons and spas. FARMINA, however, claims to be a producer of drugs.

FARMINA argued that the PPO should dismiss the request to decide on the lapse of the trade mark. The Company claimed that not only it produces goods for pharmaceutical purposes, but also products for the purposes of care, which according to some people may belong to Class 5 of the Nice Classification. FARMINA stated that it uses its trade mark for the goods associated with personal care such as soaps, gels, creams, cosmetics and hair care products. The Comapny indicated that, in principle, all cosmetics contain ingredients that cause skin regeneration and it is debatable whether or not they should be considered as therapeutic agents or care products. The Opponent also argued that, due to the fact that it uses the trade mark FARMINA for goods similar or complementary to the perfumery products, such use should be considered as use of that mark for goods in Class 3 of the Nice Classification.

The Polish Patent Office noted that the right of protection for a trademark may not be invalidated on a sole ground that the trademark is similar to an earlier trademark, where the latter has not been genuinely used. This argument that the sign has not been genuinely used may only be raised when accompanied by a request for declaring the right of protection lapsed. The case should be examined jointly with the request for invalidation. The PPO decided that the trade mark FARMINA was not genuinely used for perfumery and ruled that the right of protection lapsed as of November 2002. In the opinion of the PPO, the compared trade marks had to be regarded as similar as the dominant elements in the signs are verbal elements FARMINA and FARMONA. These are words of the same length, consisting of the same number of syllables, and which contain the same beginning and ending. These words differ only in the fifth letter. The similarities are not excluded by the use of another verbal element, the word “Waliczek”, because this element is the name of the owner of the company, thus, this word refers in its content to the information that may suggest the average person, a person who organizes and operates a business or businesses, the licensee, or the founder of the company, etc. The PPO invalidated the right of protection for the trade mark FARMONA Waliczek for the following products in Class 5: antisepsis, balms for medical purposes, biological preparations for medical purposes, enzymes for pharmaceutical purposes, enzymes for medical purposes, tea with herbs, medicinal ointments for pharmaceutical use, preparations with microelements for humans and animals, tinctures for medical purposes, dietetic beverages for medicinal purposes, oils for medicinal purposes, analgesics, laxatives, vitamin supplements, extracts for medicinal purposes, medicinal herbs, candies medicinal purposes, syrups for medical use, dietetic foods for medicinal purposes, gelatin for medical purposes. Both companies filed complaints against this decision.

The Voivodeship Administrative Court in its judgment of 15 April 2013 case file VI SA/Wa 2177/12 joined the cases in one proceeding. The Court found no reason to revoke the decision of the Polish Paten Office, and dismissed both complaints. The VAC held, inter alia, that according to the established legal doctrine (opinions presented by Professor M. Kępiński in “Niebezpieczeństwo wprowadzenia w błąd odbiorców co do źródła pochodzenia towarów w prawie znaków towarowych”, published in Zeszyty Naukowe UJ 28/1982, pp. 17,18), in the short signs (words including up to 5 letters), just one letter difference should exclude the similarity. For the signs of the average length (up to 8 characters) at least 2 letters should be different to decide on dissimilarity. Again, both companies filed cassation complaints.

The Supreme Administrative Court in its judgment of II GSK 2037/13 dismissed both.