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Archive for: famous trade marks

Trade mark law, case II GSK 1539/11

October 28th, 2013, Tomasz Rychlicki

On January 2007, the Polish Patent Office granted the right of protection for the word-figurative trade mark JAVART R-184566, applied for JAVART Spółka z o.o. form Warsaw, for goods in Class 1 services in Class 35 and 42.

R-184566

Oracle America, Inc., the owner of the trade marks JAVASCRIPT R-110075, JAVA COMPATIBILE R-112620, JAVA DEVELOPER CONFERENCE R-116591, 100% PURE JAVA R-125493, intended to designate goods such as computer software, electronic equipment and/or services related to these goods, filed an opposition. Oracle argued that opposed trade marks are similar and used to designate identical or similar goods and services, which may lead to consumer confusion. JAVART argued that the opposition should be dismissed. The PPO invalidated the right of protection for the word-figurative trade mark JAVART R-184566 and decided that JAVA trade marks are known by a significant part of computer users, including developers around the world, also in Poland, and as such enjoy a worldwide reputation for software.

R-125493

JAVART filed a complaint against this decision, but the Voivodeship Administrative Court in Warsaw in its judgment of 20 January 2011 case file VI SA/Wa 111/10 dismissed it. JAVART decided to file a cassation complaint.

The Supreme Administrative Court in its judgment of 23 November 2012 case file II GSK 1539/11 dismissed it. The Court held that the PPO correctly found that the applicant may gain unfair advantage through the use of the sign JAVART.

Trade mark law, case II GSK 2323/11

July 30th, 2013, Tomasz Rychlicki

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER ROSS R-190192 registered for Firma Handlowa A & S PARFUME FACTORY Marek Asenkowicz, for goods in Class 03 such as perfumes products, toilet water, lavender water, colognes, deodorants for personal use. CARTIER claimed that the contested registration infringes on its company name and the word-figurative trade mark CARTIER R-59579. CHATIER ROSS is detrimental to the reputation of CARTIER’s signs and leads to a weakening of their attractiveness and may cause the loss of trust among buyers of CARTIER’s products.

R-59579

A & S argued that trade marks in this case are not similar both visually and semantically, because the word “chatier” in French means “smooth/polished” and the word “Cartier” indicates the manufacturer. The Polish company cited the judgment of the Supreme Administrative Court of 22 October 2004 case file GSK 811/04 concerning the similarity of the trade marks WELT and WEST IR-621660. A & S also noted that the documents submitted by CARTIER do not prove the reputation of the sign “Cartier”, and pointed to the differences in price of goods bearing both trade marks.

The Polish Patent Office found similarity both of goods and signs, and invalidated the contested registration. While analyzing the evidence on the reputation of the sign “Cartier”, the PPO took into account press articles on the position of the brand in the Polish market and the perception of the consumers. It was irrelevant that the parties use their trade marks to designate goods that differ significantly in price. The PPO ruled that the price of such goods may vary depending on the business strategy of the owner. A & S filed a complaint against such decision. It was dismissed by the Voivodeship Administrative Court in its judgment of 6 July 2011 case file VI SA/Wa 867/11. A & S filed a cassation complaint, but the Supreme Administrative Court in its judgment of 7 March 2013 case file II GSK 2323/11 dismissed it.

CARTIER International AG requested the Polish Patent Office to invalidate the right of protection for the word trade mark CHATIER COOL MEN R-199458, and the PPO followed the request. A & S complaint was dismissed by the Voivodeship Administrative Court in its judgment of 17 October 2011 case file VI SA/Wa 866/11, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 191/12 dismissed the cassation. The same outcome was in case of the invalidation of the right of protection of the word trade mark CHATIER PURL R-199457 that was owned by the A & S. The Voivodeship Administrative Court in its judgment of 6 September 2011 case file VI SA/Wa 865/11 dismissed the complaint against the decision of the PPO, and the Supreme Administrative Court in its judgment of 23 April 2013 case file II GSK 97/12 dismissed the cassation.

Trade mark law, case Sp. 484/10

November 9th, 2012, Tomasz Rychlicki

Nike International Ltd., filed a notice of opposition to the decision of the Polish Patent Office on the grant of the right of protection for the figurative trade mark R-215109 that was registered for Sinda Poland Corporation sp. z o. o. for goods in Class 25 such as shoes. Nike claimed similarity of its signs and the unfair use of reputation.

R-215109

The Adjudicative Board of the Polish Patent Office in its decision of 26 October 2012 case no. Sp. 484/10 dismissed the opposition. The PPO did not find similarity between the opposed trade marks, and ruled that the disputed signs brings to mind an arrowhead. The decision is not final yet.

Trade mark law, case II GSK 2324/11

October 5th, 2012, Tomasz Rychlicki

Julius Sämann Ltd., the owner of the figurative trade mark WUNDERBAUM IR-0579396, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word-figurative trade mark Forest Fresh R-183901 owned by S&S Smiczek & Smiczek Hanna Smiczek. Both trade marks were registered for similar goods in Class 5, mainly air freshening products. Julius Sämann Ltd. claimed that because of the similarity of goods there is a risk of misleading the public, in particular by evoking associations with the earlier mark. The company provided also evidence on reputation of its trade mark.

iR-0579396

The Polish Patent Office invalidated the right of protection. The PPO decided that three required conditions had to be cumulatively met in this case: i) the reputation of the earlier mark, ii) the similarity or identity of signs, iii) if it without due cause would bring unfair advantage to the owner of the later trade mark or be detrimental to the distinctive character or the repute of the earlier trademark. The PPO noted that the case law distinguishes between absolute and relative methods of assessing reputation. The first one considers knowledge of the mark and takes into account primarily the percentage of a certain degree of its recognition on the market. The relative method emphasizes different criteria, including the degree of the recognition of the trade mark, the market share in terms of quantity and value of goods sold, the extent and duration of product advertisements marked by the sign, territorial and temporal scope of its use, licenses granted, quality of the goods, the value of the sign in the evaluation of independent financial institutions, the size of expenditures incurred in connection with the promotion of trade, as well as relationship price of substitute goods. The evidence material can be public opinion polls, prizes and awards, press releases, ratings, reports, invoices and other commercial documents, as well as various promotional materials. The Polish Patent Office has adopted a mixed methodology in this case, and ruled that both the evidence on reputation, that was claimed and established before the date of application of the contested trade mark, as well as documents from the later period, strengthen the recognition of reputation of the trade mark WUNDERBAUM IR-0579396. The PPO decided that both trade marks are similar in visual, aural and conceptual aspects. The PPO noted that the market presence and existence of a trade mark which consumers associate with reputation of another sign, harm the interest of the owner. S&S Smiczek & Smiczek Hanna Smiczek filed a complaint against this decision.

R-183901

The Voivodeship Administrative Court in Warsaw in its judgment of 2 June 2011 case file VI SA/Wa 334/11 dismissed it. The Court agreed with the the assessment of the PPO, and repeated that an entrepreneur, who for the goods of the same type, chooses a sign that is similar to a trade mark with earlier priority, given that there is an infinite number of signs to be selected, acts at its own risk. S&S Smiczek & Smiczek Hanna Smiczek brought a cassation comaplaint.

The Supreme Administrative Court in its judgment of 10 July 2012 case file II GSK 2324/11 repealed the contested judgment and returned it to the VAC for further reconsideration. The Court held that the important drawback of the contested judgment and the decision of the PPO was the assumption on the similarity of the opposed trade marks that was based on the mere fact of the use in their visual aspect, a form of tree, without trying to examine whether the different presentation, including the type and shape of the tree, used in these signs, allowed for the adoption of the view that there exists the similarity of the signs. As a result, the Polish Patent Office, followed by the VAC, accepted the monopoly (exclusiveness) of the company to use very idea of the tree element in its trade mark. The SAC recommended that the VAC should also take a stand on the consequences of the fact that S&S Smiczek & Smiczek Hanna Smiczek used its trade mark for a considerable period of time from 2002. After almost 5 years, Julius Sämann Ltd. initiated a civil action against the S&A. The civil proceedings with regard to trade mark infringement ended before the Supreme Court in its judgment of 14 October 2009 case file V CSK 102/09. The Supreme Court dismissing a cassation appeal filed by Julius Sämann Ltd., based on the argument that long-standing and undisturbed use of the sign in question, in connection with the principle venire contra factum proprium, according to which, if the party continued at a specific practice, it can not rely on its illegality, if other entity accepted such practice in good faith and it could suffer injury as a result of the changes. The application of this rule would come into play especially in a situation, if after the reexamination of evidence, the similarity of opposed signs has been established, and there was not any proof of bad faith on S&S side. The argument that there was bad faith requires evidence and proof, because good faith is presumed. Whether, in connection with long-term use, the S&S trade mark has acquired distinctiveness under average conditions of the market, a feature which is required for any sign to be registered, could speak in favor of the principle of venire contra factum proprium. In addition, marking the goods produced by S&S with its own trade mark, which are the goods of the same kind as products of Julius Sämann Ltd., undoubtedly positively affected the overall demand for such goods on the marker. Therefore, the invalidation of S&S trade mark in situation of its use in good faith, could easily lead to the acquisition of the customers of S&S by Julius Sämann Ltd., without incurring the costs which were attended by S&S in the promotion of the sign, The Court found it difficult to accept. The SAC also held that it should be borne in mind that the right of protection for a trade mark, as every object in the closed list (numerus clasus) of property rights, is admittedly an absolute personal right effective against all (erga omnes), however, this right is not subject to absolute protection. In the light of the general principles for the exercise of property rights as defined in the Polish Civil Code, the boundaries of this right are defined in the Acts and the rules of social coexistence. The Polish Industrial Property Law also refers to these rules. For these reasons, the circumstances giving rise to the allegation of the infringement of the principle of venire contra factum proprium, are one of the limits to the exercise by the owner of its legitimate socio-economic use of the right of protection that derives from the registration of the trade mark. Thus, the invalidation proceedings started against the trade mark Forest Fresh R-183901, in violation of the above mentioned principle, may be considered as the abuse of the right of protection for a trade mark by the proprietor of such a right, that is not entitled to the protection.

Trade mark law, case VI SA/Wa 2458/11

July 27th, 2012, Tomasz Rychlicki

On 6 September 2007, the Polish Patent Office granted the right of protection for the word trade mark PRESTIGE OLIMPIC R-197858 for goods in Class 19 such as non-metallic construction materials, timber liners, bonded and not bonded floorboards, flooring lumber, sawn wood, planed and machined wood, construction wood, laminate flooring. This sign was applied for by the Polish company Barlinek S.A. The International Olympic Committee filed a notice of opposition to the decision of the Patent Office. The IOC noted that the name INTERNATIONAL OLYMPIC COMITEE is used since 1894, and the questioned trade mark causes the violation of its property rights and personal interests, in particular the right to the company name. In addition, the IOC claimed that the sign PRESTIGE OLIMPIC is similar to the CTM THE OLYMPICS no. 002827632, registered with the earlier priority, which may cause a risk of consumers confusion. Barlinek S.A. did not agree with such arguments and argued that both trade marks are completely different. The Company pointed out that the goods in Class 19 that are marked with the sign THE OLYMPICS have not been introduced on the Polish market.

The Polish Patent Office in its decision of 6 December 2010 no. Sp. 345/09 dismissed the request. According to the PPO, the words “Olympic” and “Olympics” are similar, but without prejudice to the similarity of signs. The PPO ruled that in this case, the recipients of goods are specialists in the construction industry, who are buying all the supplies at special stores and warehouses or directly from the manufacturers. Therefore, they are deemed as people paying bigger attention, as professionals, to the goods that they purchase. Such professional customers are well-versed in quality, product names and parameters as they are interested and will pay a special attention to who is the manufacturer of the goods.The IOC filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 February 2012 case file VI SA/Wa 2458/11 dismissed it. The Court held that the PPO ruled correctly that multiple signs and trade marks are used as the determination of the Olympic Games. However, no evidence was submitted that the sign THE OLYMPICS is being used in relation to the Olympics. The owner of the CTM did not show the connection between the CTM and any other goods. The sign THE OLYMPICS cannot be deemed as reputed trade mark only because its translation to Polish means Olympic games or Olympics. It is necessary to demonstrate the link between the mark and the goods and/or services. Therefore, the Court decided that the reputation has not been proven. Both signs are written in standard fonts, without any particular distinguishing features, so the same way they are written does not cause that any of the elements of these characters is predominant. The PPO correctly concluded that, despite the similarity of words in the second position in both characters, it cannot be said that the trade marks are confusingly similar. The judgment is not final. The IOC filed a cassation complaint.

Trade mark law, case V ACa 77/11

April 18th, 2012, Tomasz Rychlicki

The Appeallate Court in Katowice in its judgment of 5 April 2011 case file V ACa 77/11 ruled that there is no reason to claim that a reputable trade mark must have a greater recognition than well-known signs. Decisive are the quality criteria, and not the quantity. A reputed trade mark does not have to be well-known, and a well-known sign does not have to be reputed one.

Trade mark law, case VI SA/Wa 1242/11

March 26th, 2012, Tomasz Rychlicki

On 23 March 2008, the Polish Patent Office granted the right of protection for the word-figurative 3D trade mark PŁ 1764 R-205770, that was applied for by the Polish company Fabryka Wódek POLMOS ŁAŃCUT S.A, for goods in Class 33 such as vodka. The trade mark represents a glass bottle with a blade of grass put inside, and the crest on the bottle.

R-205770

POLMOS BIAŁYSTOK S.A., the company that was the owner of the word-figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, registered with the earlier priority of 30 August 1985, for goods in Class 33, filed a notice of opposition to the decision of the Patent Office on the grant of a right of protection. POLMOS BIAŁYSTOK claimed similarity of signs and identicality of goods. The Company argued that a blade of grass identifies its product’s image, and the long-term presence on the market caused that the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 created the belief of the recipients of this type of goods, that the alcoholic product with a grass motif comes from POLMOS BIAŁYSTOK. The Company also claimed that its trade mark is the reputed one, and provided rich evidence material including certificates of quality and market position of vodka sold in bottles with a blade of grass, market research results and reports confirming a strong position of trade marks owned by POLMOS BIAŁYSTOK, as well as articles published in specialized trade magazines. POLMOS BIAŁYSTOK claimed that POLMOS ŁAŃCUT acted in bad faith because its strategy and intention was to create and to file for the right of protection for a product that would look like the brand of “Żubrówka” vodka, by giving it a full set of protected characteristics of the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, and this situation happened long before the filing date of the questioned sign.

R-62081

The Adjudicative Board of the Polish Patent Office dismissed the request and decided that the comparision of POLMOS ŻUBRÓWKA BISON BRAND VODKA and PŁ 1764 trade marks gave no similarities. The blade of grass inside a bottle may give potential customers certain associations that it is a vodka based on wisent grass. The PPO relied on the provisions of § 3 of the Minister of Agriculture and Rural Development of 25 January 2007 on the definition of requirements for certain spirit drinks with geographical indications relating to the Polish territory, which specifies requirements for a spirit drink “Herbal Vodka from the North Podlasie Lowland aromatised with an extract of visent grass. The PPO has decided that the vodka producers could use the trade marks containing a blade of grass to indicate the type of vodka. The PPO ruled that these signs are examples of commonly used vodka bottles that were sold in the 80s and 90s of the last century. Such bottles are also present in considerable numbers in the Polish market. Thus, these signs per se do not possess distinctive characteristics. The Adjudicative Board noted that legal commentators emphasizes that the packaging of a product is now deemed as a “silent salesman”, and its appearance affects decisions of customers. A distinctive and visually appealing packaging may cause the client to choose the particular product. The PPO cited K. Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności intelektualnej (in English: Imitation of packagings of branded products in the light of intellectual property rights), Warszawa 2010. The PPO found these arguments relevant to the package created by POLMOS ŁAŃCUT which, in PPO’s opinion differs from other packages available on the market. POLMOS BIAŁYSTOK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 24 August 2011 case file VI SA/Wa 1242/11 repealed the contested decision and ruled it unenforceable. The VAC decided that the analysis of similarity between the signs including its reputation, in this case, was not exhaustive. The PPO did not consider the dominant elements that draw the attention of the buyer. Although PPO stated that the compared trade marks are 3D signs, but the examination of these elements was reduced to comparison of packages only, i.e. bottles. Although, the PPO stated that as a principle, the visual aspect of a 3D sign, is the shape of package and its content, but these two issues (the shape and contents) were separated in the analysis carried out in this case. The Court found that the long time existence of the characteristic element of 3D signs owned by Polmos Bialystok that were intended for designating vodka products and alcoholic beverages – a blade of grass placed in a simple, transparent bottle, as a whole can easily sink into the minds of customers and build the strength that distinguishes this kind of packagings. The Court pointed out that POLMOS BIAŁYSTOK provided evidence that the original żubrówka can be recognized by a wisent grass blade in the bottle. This would mean that for consumers, contrary to the assessment of the PPO, this 3D element constitutes the dominant part of the trade mark, and it can also influence the perception of the trade mark reputation and the need for protection against dilution. The VAC noted that this case involved more than 20-year presence in the market of a bottle with a grass inside, that was associated with POLMOS BIAŁYSTOK. However, in situation, when the package is transparent, placing a characteristic element inside of the packaging, determines distinctiveness of the whole sign, e.g. two similar bottles. The distinctive 3D form – a blade of grass in the bottle increases the message of each of the word trade marks, brings more originality to signs that are protected for over 20 years. There was no doubt that the floating grass in the bottle is the original message that distinguishes the goods of POLMOS BIAŁYSTOK, and is attributed to the origin of goods produced by this particular company. It was impossible to overlook the fact that consumers are seeing a bottle with a characteristic blade of grass, that is associated by them not only with visent vodka, but they also have a guarantee that this is the original product whose reputation was proved by complex evidence. This means that customers choose a product, guided by the attractiveness of its form, because they “see” in this product a trade mark that originates from POLMOS BIAŁYSTOK, whose quality is known to them. The fact is that all signs have a distinctive element. The Polish Patent Office erred by not attaching any importance to it, despite the fact that POLMOS BIAŁYSTOK was the first company that introduced to market a product with such a distinctive element: a long blade of visent grass.

See also “Trade mark law, case VI SA/Wa 2038/09“.

Trade mark law, case I ACa 988/08

October 17th, 2011, Tomasz Rychlicki

The Appeallate Court in Wrocław in its judgment of 17 December 2008 case file I ACa 988/08 held that the wide scope of protection of reputed trade marks should be afforded only for well-known signs that are characterized by prestige, that is associated with the goods of exceptional – especially high-quality – and, most importantly, signs of such a strong and established position that they attract attention no matter for which of the goods they are used.

Trade mark law, case VI SA/Wa 211/11

October 6th, 2011, Tomasz Rychlicki

SOREMARTEC S.A. requested the Polish Patent Office to invalidate the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895 registered for Toruńskie Piwnice Win VINPOL Sp. z o.o., currently VINPOL Sp. z o. o.

R-182895

SOREMARTEC claimed that this sign is similar to the renowned series of RAFFAELLO trade marks registered on its behalf, that the application was filed in bad faith, and that this sign is similar to SOREMARTEC’s trade marks to a degree that causes a risk of misleading the public as to the origin of goods. SOREMARTEC noted that it is aware of VINPOL’s word trade mark RAFFAELLO R-87046 applied for registration in 1993 and subsequent word and figurative trade marks that include in their verbal elements the word “Raffaello”. Therefore, the Company did not oppose the coexistence of Raffaello pralines and sparkling wine bearing the label with the word “Raffaello” on the Polish market. However, the disputed trade mark includes the graphic version of RAFFAELLO that confusingly similar to the one that is consistently used by Ferrero for many years on the packaging of Raffaello pralines. The existence of the contested trade mark would be harmful to both the reputation and distinctiveness of its trade marks, as well as it would be unfairly “impersonating” the reputation of its trade marks without the cost of advertising and promotion. To prove the reputation of its trade marks SOREMARTEC submitted a copy of the public poll report entitled “RAFFAELLO Brand Recognition” and a copy of the report “Development of praline market in Poland”, which shows that the brand RAFFAELLO was in the forefront of the most popular brands of sweets in Poland, its advertising was one of the most remembered and associated advertising of pralines, and Raffaello pralines were among the 10 most frequently purchased and consumed pralines within 6 months preceding the date of the polls. SOREMARTEC also presented a tabulation of the total expenditure on advertising and promotion of Raffaello products in Poland, which have been incurred by Ferrero from 2001 to 2005, and a tabular summary of quantitative results of sales of Raffaello pralines for the period from February 2001 to February 2006. These data indicated that SOREMARTEC has continually expanded and refining the Raffaello’s product line incurring increasing financial investments and extensive marketing campaigns and advertising, so the demand for its products continues to grow. Moreover, SOREMARTEC argued that VINPOL applied for two other trade marks, which verbal element is identical to SOREMARTEC’s trade mark, i.e. MON CHERI R-194468 and word-figurative Mon Cheri CHERRY BRANDY & Delicious 18 High Quality R-203339, and this proves conscious and deliberate action designed to use the reputation of SOREMARTEC’s trademarks. In response, VINIPOL argued that the goods produced by SOREMARTEC, i.e., pralines, and wine are not identical or similar, and therefore there is no risk of misleading the public.

R-203339

The PPO invalidated the right of protection for the trade mark Raffaello Spumante Dolce Sweet Spumante QUALITA SOPERIORE R-182895. The PPO ruled that the circumstances, i.e. several years of presence on the Polish market of Raffaello pralines before the filing date of the contested trade mark, a volume of sales and high percentage of recognition of Raffaello trade marks and its distinctive character, what is the result of both the original form of a trade mark, as well as expenditures on promotion and advertising, confirmed the reputation of Raffaello pralines. According to the PPO, the goods such as alcohol and sweets have many features in common, particularly because they are not consumed for nutritional purposes but for pleasure, such goods can be produced by one company, and may also be sold in a set, or eaten together, which may cause the potential audience to associate sparkling wine with Raffaello pralines. The PPO decided that the contested trade mark, because of its form, will attract the attention of consumers who know the early signs and the goods, in connection with which these trade marks are used. As a result, VINPOL would gain unfair advantage that is mostly based on creating the effect of interest in the goods and services marked with this sign, without having to incur any expenditure on promotion of its goods and services. The PPO has also stressed that the fact that earlier registrations of trade marks for wines with the Raffaello element did not authorize VINPOL to create labels of those products in a form, which resemble them to reputable trade marks, and therefore let VINPOL to benefit from the fact that the recipient seeing the wine Raffaello associate them with products offered by SOREMARTEC that enjoys good reputation among buyers. VINPOL filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 29 July 2011 case file VI SA/Wa 211/11 dismissed it. The Court noted that provisions of the Polish Act on Industrial Property Law does not contain a legal definition of a reputable/renown trade mark, so the Court had to refer to the opinion developed by case law and doctrine. The Court of Justice in its judgment of 14 September 1999 Case C-375/97 Chevy formulated the definition of a renowned trademark for the first time. The doctrine points out that the reputation of a trade mark depends primarily on the quality of the goods bearing it, the financial investment made by the entrepreneur to promote its sign in the media and the period of time required for the customer to establish relationship between a specified quality with goods that bears a sign that represents this high quality (recognition of goods bearing the trade mark on the market). The passage of time needed for the establishment of reputation of the trade mark is different for goods from different industries. The period of time depends on many factors, in particular on the intensity of advertising surrounding the launch of the goods bearing the sign. Furthermore, by creating a reputation of a trade mark, the advertising function of a sign is also strengthen, because such a mark encourages customers to purchase goods bearing it. This function is the result of an advertising of a sign staggered in time, by the use of a mark by an authorized entity and the relationship created in the minds of consumers between a sign with positive associations, particularly with regard to quality, usefulness, of product, the profitability of its acquisitions, and other characteristics relevant to the recipients of goods bearing the trade. Also the domestic case law provides that the reputation of a trade mark is characterized by market share/participation (both quantity and value of sold goods), range and long-lasting of an advertisment of the product bearing a trade mark, territorial and temporal range of use, licences granted for trade mark use, quality of goods bearing a trade mark, value of a given sign in assessment of an independent financial institution, size and extent of expenditures spent on promotion of a mark, the relationship on prices of substitute goods, if (and to what extent) the mark is used by third party, as it was decided in the judgment of the Supreme Administrative Court of 9 May 2008 case file II GSK 506/07, the judgment of the Supreme Administrative Court of 27 February 2008 case file II GSK 359/07.

The Court ruled that the PPO correctly concluded, based on the evidence presented that SOREMARTEC’s trademarks are reputable, and the sign at issue is similar in such a way that consumers can associate these characters with each other, and the use of this trade mark by VINPOL may bring unfair advantage due to the obvious use of the reputation of the trade marks owned by SOREMARTEC. The evidence showed that Raffaello pralines were present on the Polish market several years before the filing date of the contested trade mark, the sales were rising over the years, the high percentage of recognition of Raffaello, and a significant volume of promotion and advertising, created the image of the brand as a symbol of quality, delicacy and elegance. All this confirms the reputation of Raffaello pralines. At the same time as it was pointed by the Appellate Court in Warsaw in its judgment of 3 October 2007, case file I ACa 767/07, there is no requirement of likelihood of confusion in relation to reputed trade mark, only the possibility to associate a sign with a reputed trade mark that was registered earlier, which results that the first sign is able to attract customers through positive images carried by a reputable character. Associations between such trade marks occur when the designation used by the infringer automatically brings in minds of potential customers a reputable character originally used by the owner, even if the recipient is aware of the fact that both entities are completely independent. If these signs are also used to designate similar goods, there is no need to show any additional evidence. Apart whether consumers will confuse this trade mark as to the origin of the goods designated, it will draw attention to goods bearing a renowned trademarks. Such a situation would give unfair advantage resulting only from similarity to the earlier reputed mark, based mainly on the effect of interest that would arouse in the goods covered by the contested mark, without incurring any expenses for promotion of those goods.

Trade mark law, case IV CSK 393/10

October 5th, 2011, Tomasz Rychlicki

Hochland Reich Summer & Co. KG owns a three-dimensional trade mark IR-736770 in Poland, and Hochland AG is the owner of the right in registration of an industrial design Rp-5337. The 3D trade mark is not used in the clear registered form, but is marketed as a product package of ALMETTE cheese, with additional verbal and figurative elements. Both Hochland AG and Hochland Reich, Summer & Co. KG, together with Hochland Polska sued the Polish dairy cooperatives in Piątnica, because it has used the packaging for cheese, on which a graphic of a wooden pail that was similar to Hochland’s trade mark and design, was placed.

IR-736770

The District Court in Białystok in its judgment of 13 October 2009 case file VII GC 49/07 dismissed the suit and refused to recognize the trade mark as a reputed one. However, the Court agreed with the opinion issued by the expert witness that a clean pail, without any identifiers, stands out positively in comparison to other packagings, and by its distinctive shape is strongly associated with the Almette brand. The District Court agreed with Piątnica that this trade mark was not used in trade in its registered form, and that Hochland did not prove that the use of cup-like pail brings Piątnica unfair advantage or is detrimental to the distinctive character of Hochland’s trade mark, which is a prerequisite to the protection of reputed/renown trade marks. The Appellate Court in Białystok in its judgment of 26 February 2010 upheld these findings except the costs and the issue of trade mark use. Hochland filed a cassation complaint.

The Supreme Court in its judgdment of 10 February 2011 case IV CSK 393/10 found that the Appellate Court decided that the expert’s opinion had no probative value because of the unrepresentative range of research on which it was based, and as a result, the Court found that Hochland failed to prove that its trade mark is a distinctive sign, with reputation. The Appellate Court spoke on the inadequacies of the expert opinion only in the justification of the judgment, and not during the proceedings, which precluded Hochland from filing proper evidence. The Supreme Court ruled that renowned trade marks enjoy special protection – wider than the other trade marks, i.e., even if there is less similarity between trade marks or the goods. In the case of reputed signs, the risk of confusion or the likelihood of confusion is not required. The association with the earlier renowned sign is a sufficient condition. The Court noted that the Polish Industrial Property Law does not provide any definition of reputable trade mark, but only points to the specific conditions of protection. The Supreme Court emphasized that the definitions provided in the legal commentaries, as well as in the case law of the Court of Justice of the EU and Polish courts, differ in this respect. The Court noted that a reputable trade mark is recognized by a significant part of relevant public. The Polish legal commentators argue that such a sign must be known at least by 25 percent of relevant public, and if the percentage exceeded 50 percent, the reputation is always proved. The Supreme Court also noted that the protection of a reputable trade mark does not require the owner to prove that the use of a similar trade mark has brought its user unfair advantage or was detrimental to the distinctive character or the reputation of the earlier mark. A mere possibility of obtaining unfair advantage by the infringer or the very possibility of harmful effects to the distinctive character or the repute of the earlier trade mark, is a sufficient condition. Therefore, these conditions have normative and hypothetical nature. The Supreme Court held that the Appellate Court erred in the examination of the opinion of another expert witness, who showed that the use of the image of a wooden pail on the packaging of cheese, in the assessment of 69% of consumers may affect their decision on the purchase of goods, and therefore it could potentially influence the purchase of the goods produced by the defendant in its packagings. This circumstance was important for assessing whether the use by the defendant of Hochland’s trade mark could bring Piątnica unfair advantage at the expense of the owner of the trade mark, who first used the sign and incurred substantial costs for its promotions within a few years.

The Appeallate Court in Białystok in its judgment of 7 July 2011 case file I ACa 305/11 was bound by the decision issued by the Supreme Court. The Court pointed out that according to the opinion of Grzegorz Urbanek, who was appointed as an expert witness, the wooden pail is associated to the Almette brand in the perception of most respondents. Both the opinion and attached results showed that even a same wooden pail without and with identifiers has the same effect, i.e. the half of the respondents, because of the packaging, was willing to buy the Almette cheese, and not other cheese of the same type but in the same packagings. Therefore, the Appellate Court prohibited Piątnica to use in the course of trade of a figurative sign representing a wooden pail with a handle, on the packaging of its cheese products. Piatnica still uses the packaging for its cheese, which is similar to a wooden pail. The dairy cooperatives replaced the image from the packaging with the milk-churn with pouring milk.

Trade mark law, case II GSK 746/10

September 2nd, 2011, Tomasz Rychlicki

This is the continuation of the story described in “Trade mark law, case VI SA/Wa 1988/09“. Kraft Foods Polska filed a cassation complaint.

R-91506

The Supreme Administrative Court in its judgment of 12 July 2011 case file II GSK 746/10 dismissed the complaint and held that the reputation of the trade mark and homogenity goods bearing the signs at issue – even if they could be taken into account while assessing the likelihood of confusion – cannot challenge the established view that there is the lack of similarity between these trade marks. The Court decided that trade marks that were subject to the opposition proceedings do not contain a common element being the same surname, because the meaning of the POLO word in these trade marks is different.

Trade mark law, case case Sp. 181/09

August 24th, 2011, Tomasz Rychlicki

The Adjudicative Board of the Polish Patent Office in its decision of 15 September 2010 case Sp. 181/09 invalidated the right of protection for the word-figurative trade mark LEXUS R-194634 registered for the Polish company Astin sp. z o.o. This trade mark was registered for goods and services in Classes 06, 19, 20 and 37. The request for invalidation was filed by Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation). Toyota owns renown trade marks LEXUS that were registered with the earlier priority in Poland and in the European Union.

R-194634

The PPO acknowledged the rule that the starting point for finding an infringement of reputation is to determine the similarity of the signs. In the case of combined trade marks (word-figurative), it is always necessary to consider the similarity of all the elements of trade marks being compared, but the verbal elements are crucial. The PPO decided that the dominant and distinctive elements of questioned trade mark and the opposing signs are original and similar words LEXUS. These trade marks are verbally identical. In the opinion of the PPO, the figurative element of the questioned trade mark only exposed and additionally strengthen in the mind of the potential consumer the word element of this trade mark. The PPO also ruled that in the conceptual aspect the sign LEXUS is fanciful one.

Astin claimed that the reputation of LEXUS trade marks has not been sufficiently proved because Toyota did not present evidence on the use in time and territorial use its trade marks, the quality of the goods, market share, and the size of investment in promotions. Toyota presented rich evidence material. These included copies of newspaper articles and advertisements from the years 1992-1999. According to Toyota, these publications indicated that the reputation of LEXUS trade marks has been shaped by long-standing and consistent creation of a positive brand image in the minds of Polish consumers. The PPO noted that there is no legal definition of a reputation. It was the Polish legal doctrine and the courts that have defined the essential criteria for determining what trademark reputation is. Accordingly, the reputation of a trademark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trademark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of the relevant goods. The reputation of a trademark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trademark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trademark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trademark. It was confirmed that the protection of reputed trademarks extends beyond the scope of registration and the selected classes, as reputed trademarks enjoy stronger distinctiveness. However, the burden of proof lies with the holder of the reputed trademark.

The PPO agreed with the judgment of the Voivodeship Administrative Court in Warsaw of 13 March 2006, case file VI SA/Wa 1626/05 that LEXUS trade marks owned by Toyota are renown and reputed signs. See “Trade mark law, case VI SA/Wa 1626/05“. The PPO found that the questioned trade mark LEXUS R-194634 was filed for the registration on the date where Toyota’s trade mark enjoyed high recognition on the Polish market and were associated with the luxury brand of cars and the prestigious image of the brand was the subject of intense marketing efforts of the producer. However, the fact that the trade mark is renown is not a sufficient circumstance to invalidate the right of protection, other conditions must be met, namely if the latter registered trade mark on behalf of another party for any kind of goods, would without due cause bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark.

The PPO held that the existence of the questioned trade mark on the Polish market may negatively affect the distinctive ability of Toyota’s trade marks because consumers may start to associate luxury brand with household tools. In addition, the detrimental nature of the registration in question may be manifested in other ways. For instance, it may cause the renown trade mark to become an ordinary sign that has lost the ability to attract the consumer and the strength with which it interacts to the mass public. This decision is not final yet.

Trade mark law, case II GSK 269/10

August 5th, 2011, Tomasz Rychlicki

Polish company Przedsiębiorstwo Produkcji Lodów “KORAL” Józef Koral Spółka jawna from Limanowa, the owner of the word trade mark RED BLUE Z-277694 requested the Polish Patent Office to decide on the invalidation of the right of protection for the word trade mark RED BULL IR-708694 in part for goods in Class 30. KORAL claimed inter alia that the registration of the questioned trade mark was made in violation of Article 6(1) of the old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, becasue goods in Class 30 are not subject to the activities of the Red Bull GmbH.

6.
(1) A trademark shall be registrable on behalf of a specific enterprise, but only in respect of goods falling within its field of economic activity.

On 15 December 2008, Red Bull informed the PPO that with effect from 5 December 2008, the Company renounced the protection of the questioned trade mark for goods in class 30 on the Polish territory. The PPO dismissed the request and noted that Red Bull GmbH is a limited liability company under the Austrian law. According to the registry of commercial activity, the company uses the Red Bull brand in the course of trade. In the opinion of the PPO, the Austrian law does not require further specification of the scope of the commercial activity of a company. The PPO has indicated that the minimum condition for which the entrepreneur must meet while applying for a trade mark in order to be grated the exclusive rights to that sign, is the intent of use. Such intent may be interpreted from the list of goods and services covered in the application and registration of the trade mark. KORAL filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 26 October 2009 case file VI SA/Wa 1263/09 dismissed the complaint and KORAL filed a cassation complaint.

The Supreme Administrative Court in its judgment of 13 April 2011 case file II GSK 269/10 dismissed the cassation. The SAC ruled that the Polish legislature adopted the law which implies that a trade mark may be registered if it’s related to the business activity of an entrepreneur and, therefore, that this is not property in itself, which can belong to anyone, but it is an intangible component of the company/enterprise, that serves to distinguis the goods or services from other goods and services of the same kind of other companies. The second of those conditions preclude the possibility of marking other goods than the goods covered by the activities of a company. There is no doubt that the product (or service) that is actually offered in the market by the company, is a commodity, which is the subject of its business. However, a trade mark can (and should) also be used for goods that are not currently offered. Therefore, some problems of interpretation arise in the case of these goods (and services) that can be marketed by the company in the future. The SAC noted that the case law and legal doctrine adopted the view, that commodities which are the subject of a business activity will also be goods or services, what a company intends to introduce to the market in the future. Thus, the need arose to determine the criteria that would allow for the identification of the types of goods that are covered at the time of filing of a trade mark application (and consequently by the registration) by the intention of marking them in the future by that trade mark. Such intention is disclosed by identifying of the company activities in the appropriate register, because it is a public declaration of the entrepreneur on which fields of economic activities it intends to participate, or what kind of goods or services it will be offering on the market.

Trade mark law, case VI SA/Wa 112/11

July 7th, 2011, Tomasz Rychlicki

Sfinks Polska S.A. from Łódź requested the Polish Patent Office to invalidate the rights of protection for word-figurative trade mark R-179260 owned by Restauracja CLEOPATRA Bachar Aziz from Lublin. Sfinks Polska is the owner of the earlier registered word-figurative trade mark SPHINX R-105162.

R-105162

Sfinks claimed that the trade mark CLEOPATRA R-179260 is similar to its trade mark and argued that it has legal interest in this proceedings as there is a possibility of misleading customers based on the similarity of trade marks. This may be particularly applicable considering the fact that SPHINX trade mark is already known on the market and, therefore, it has a stronger distinctive ability. Sfinks also argued that Bachar Aziz filed its trade mark in bad faith with an intent to use the reputation of Sfinks’ trade marks by suggesting a common origin from a single entity.

R-179260

Bachar Aziz requested the PPO to dismiss the case. He argued the Sfinks lacks legal interest in the invalidation proceedings. Moreover, he noted that the signs, in this case, are different conceptually and phonetically. The characters are not visually similar, the earlier trade mark has the form of a sphinx (face of a man resembling an ancient sculpture) and the sign in question shows a woman’s face (Cleopatra). Mr Aziz also noted that designation of the same services by these trade marks is not sufficient to determine the risk of common origin. In this regard, he relied on the collision-free existence of the two signs on the markets in Płock and Łódź. He pointed that other businesses use the representation of the Sphinx to designate their restaurants.

The Polish Patent Office in its decision case Sp. 396/08 dismissed the request. The PPO held that the trade marks, in this case, are different in all aspects. While assessing the risk of confusion of the recipients of the services offered by the parties to the proceedings, the PPO ruled that customers of restaurants do not act on impulse as shoppers do. When choosing the restaurant they base their actions on good knowledge of the place, recommendation or advertising, so, first of all, they choose a place based on the name, thus, it is the verbal layer of a trade mark (the name of restaurant), not the graphic element, that will be critical to their selection. Sfinks filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 16 June 2011 case file VI SA/Wa 112/11 overturned the decision of the Polish Patent Office and held it unenforceable based on entirely different circumstances that one could expect. At the hearing before the Court on 3 June 2011, Sfinks’s trade mark attorney argued that she was not present at the hearing on 16 June 2010 in the Polish Patent Office on the ground that the notice of the hearing was set at 11:00 a.m. and a hearing was held on at 10:00 a.m. Therefore, Sfinks could not be represented properly, as its representative was not able to submit evidence. The Court held that Sfinks did not participate in proceedings through no fault of its own and such situation was a violation of the provisions of the Polish Administrative Proceedings Code. The judgement is not final yet.

Trade mark law, case II GSK 522/10

May 31st, 2011, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 31 May 2011 case file II GSK 522/10 held that the reputation of trade mark is a matter of fact and it is not enough to show that there is evidence that suggests that the sign could be known and recognized as attractive in Poland. It was necessary to examine and assess whether according to the methods developed by the doctrine and jurisprudence, the sign on the date it was applied for in Poland, was known and recognized as a reputed trade mark in this country.

Trade mark law, II GSK 578/10

May 28th, 2011, Tomasz Rychlicki

This is a sequel to a story described in “Trade mark law, case Sp. 10/08“. In July 2009, the Polish Patent Office invalidated the right of protection for the trade mark DAKAR R-174205 that was registered for goods in Classes 3, 27, 37, after considering the case on the basis of rich evidence supplied by both parties.

The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861, that wasregistered for goods in Classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41, which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the “merchandising function” and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation – the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in its judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also “Trade mark law, case II GSK 506/07“.

When referring to the transfrontier nature of the reputation of a trade mark, the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally – from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. The PPO cited the judgment of the Voivodeship Administrative Court in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) and the judgment of VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS). See also “Trade mark law, case VI SA/Wa 845/05” and “Trade mark law, case VI SA/Wa 1626/05“. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.

The Polish company DAKAR from Krasne filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO’s attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company. The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. Paris Dakar filed a cassation complaint.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 578/10 overturned the questioned judgment and sent the case back for reconsideration. The SAC ruled that given the nature of Paris-Dakar business, the PPO properly established the reputation of the trade mark DAKAR IR-606861. The SAC did not agree with the criteria for assessing the reputation of a trade mark that were adopted by the VAC. The Court ruled that the reputation cannot be examined so strictly because organization of sports events is a specific activity and the reputation associated by its trade mark is also conveyed by the media.

Trade mark law, case VI SA/Wa 1860/10

April 21st, 2011, Tomasz Rychlicki

On 20 December 2006, the Polish Patent Office granted the right of protection for the word trade mark O’LEARY R-180416 applied for by Piotr Kasprzycki PPH Eveline Cosmetics from Lesznowola for goods in Class 03 such as skin, hair and body care products for children, women and men, mascaras, creams, lotions, shampoos, soaps, gels baths, creams and gels, cosmetics, perfumery, and cleansing tissues and goods in Class 05 such as medicinal cosmetics.

R-65340

French company L’OREAL Societe Anonyme filed a request for invalidation. L’Oreal owns the word trade mark L’OREAL R-42203 registered with the earlier priority of 5 May 1960 for goods in Class 03 such as perfumery and cosmetics, toilet soaps, lipsticks, products for oral care, hair coloring agents, shampoos. The Company also owns the word-figurative trade mark L’OREAL STUDIO LINE R-65340 registered with the priority of 24 November 1988 for goods in Class 03. The French company argued that its trade marks are well-known and reputed. It presented a survey of consumers in the years 2001-2003, which proved the knowledge of the brand and consumer trust in the products. L’OREAL was the brand that has won numerous awards. The company argued that some of the goods are identical other are similar and raised an argument that the trade mark application was made in bad faith. The company relied on the judgment of the French court, which forbade the company that was created by Piotr Kasprzycki in France, the violations of trade marks and company name of L’Oreal, by the use of the name O’LEARY. L’OREAL also claimed the company created by Mr Kasprzycki was fictitious becuase its capital was 1 euro.

R-151141

O’LEARY argued that its trade Mark Has Irish origins and the average consumer is reasonably well informed and reasonably observant and circumspect. O’LEARY admitted that L’Oreal is a strong and very distinguishable brand and the consumer who buys these cosmetics will not pay attention to the other cheaper products. O’LEARY noted that since the French court judgment has been appealed, so the case has not been finally decided. In its opinion, the proceedings in France is not relevant in the proceedings before the Polish Patent Office.

The Adjudicative Board of the PPO in its decision of 16 March 2010 case no. Sp. 251/08 invalidated the right of protection for the trade mark O’LEARY. The PPO ruled that O’LEARY is confusingly similar to L’OREAL. Piotr Kasprzycki PPH Eveline Cosmetics filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 April 2011 case file VI SA/Wa 1860/10 agreed with the PPO and dismissed the case. The judgment is not final yet. The cassation complaint can be brought before the Supreme Administrative Court.

Trade mark law, case XXII GWzt 5/10

March 17th, 2011, Tomasz Rychlicki

The Court for the Community Trade Marks and Community Designs (in Polish: Sąd Okręgowy w Warszawie Wydział XXII Sąd Wspólnotowych Znaków Towarowych i Wzorów Przemysłowych) in its judgment of 31 May 2010 case file XXII GWzt 5/10 ruled that when deciding whether a trade mark has a repute, the Court examines in detail the evidence offered with respect to the scope and level of commercial, sponsorship and promotional actions of the proprietor, used for building the reputation. The Court pays attention to the type of goods, their volume of sale, popularity among consumers, the size, frequency and regularity of sponsoring of various events attracting a large number of viewers, allowing it to decide that the trade mark meets the requirement of repute and thus should be known to a significant part of the public.

Trade mark law, case VI SA/Wa 2168/10

March 16th, 2011, Tomasz Rychlicki

Red Bull GmbH filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection to the “red dragon” trade mark R-179732 registered for DODONI Roman Górzyński, Marek Górzyński, Marcin Górzyński sp.j for goods in Class 32 such as mineral waters and non-alcoholic beverages. Red Bull claimed that “red dragon” is similar to its RED BULL R-207549, RED BULL ENERGY DRINK IR-0715531 and the CTM RED. Red Bull based its opposition on the reputation of these trade marks. The PPO dismissed the opposition and ruled that the opposed trade marks, despite the identical word element “red”, are different at all levels of perception, i.e., aural, verbal and conceptual, so that they produce a completely different impression on the average customer. These signs also have other verbal elements and the word “red” is present in other trade marks registered for goods in Class 32. In view of significant differences between opposed trade marks that excluded the risk of confusion as to the origin of the goods, the PPO decided that the reputation of Red Bull’s trade marks enjoyed on the Polish market is not relevant for the assessment of the risk of consumers confusion. Red Bull filed a complaint to the administrative court.

The Voivodeship Administrative Court in Warsaw in its judgment of 14 December 2010 case file VI SA/Wa 2168/10 dismissed the complaint. The court agreed with the PPO that the consumer who does not speak English will perceive RED BULL and RED BULL ENERGY DRINK as fanciful trade marks, and “red dragon” composed in part with the fanciful word “red” and in part of the Polish word of some specific meaning (Dragoon – mounted infantry or as a tall, stout, vigorous, sprawling woman) will be perceived differently. The court held that since the opposed trade marks are not similar, therefore the registration of “red dragon” R-179732 will not bring unfair advantage to DODONI or be detrimental to the distinctive character or the repute of Red Bull’s trademarks.

Trade mark law, case VI SA/Wa 650/10

March 1st, 2011, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 20 Demceber 2010 case file VI SA/Wa 650/10 acknowledged the rule that the infringement of the company name as a condition to invalidate the registration of a trade mark under the old Polish Trade Mark law is not forejudged by registration of an identical or similar mark by another company. The VAC repeated that the exclusive rights to the company name are not an absolute. The limits have the territorial and objective nature and they concern the actual actvity of an entity that is using the name in question. Only within these limits the collision between identical or similar company name and trademark may occur. So if the scope of business activities of an entitled to the company name and the holder of the registration of the trade mark differs, there is no risk of consumers confusion as to the identity of companies or for example, a proprietor of the later trade mark is not using the reputation associated with an earlier identical or similar company name, it’s hard to say that there is the collision of these two rights, and consequently an infringement of an earlier right to the company name. This judgment is not final yet.

Trade mark law, case II GSK 849/09

December 8th, 2010, Tomasz Rychlicki

In 2005, the Polish Patent Office registered the word-figurative trade mark MASTER COOK JAPART R-164044 for Przedsiębiorstwo Produkcyjno-Handlowo-Usługowe “JAPART” Zakład Pracy Chronionej from Panki. Podravka Prehrambena Industrija form Koprivnica Croatia, the owner of the word-figurative trade mark “PODRAVKA VEGETA” R-138057, gave reasoned notice of opposition to the final decision of the Patent Office on the grant of a right of protection.

R-138057

The PPO in its decision of 13 June 2008 case no. Sp. 523/06 ruled that “PODRAVKA VEGETA” is the reputed trade mark, although Podravka Prehrambena also supplied very worthless evidence materials. However, the PPO agreed with the owner that its trade mark was introduced on the Polish market in 1994, which was properly supported by documents issued on 11 October 1994 by the company’s marketing department. From this date the reputation of the trade mark could have been created and the existence of reputation is established before the date of application for the trade mark. In case of “MASTER COOK JAPART” it was before 3 April 2002. Therefore, the PPO invalidated the right of protection. Japart filed a complaint.

R-164044

The Voivodeship Administrative Court in its judgment of 22 May 2009 case file VI SA/Wa 2147/08 dismissed it. The Court came to the conclusion that Japart used a specific, multi-element composition of a reputed mark. The Court held that the likelihood of obtaining unfair advantage from the reputed trade mark is the obstacle that justifies the refusal to grant an exclusive right to sign that is identical or similar to the earlier a famous mark. It was therefore sufficient to assume that the applicant could use investments and financial efforts, which have previously been made by the owner of earlier trade mark to build an attractive image of the mark and attract customers. Japart filed a cassation complaint.

The Supreme Administrative Court in its judgment of 12 October 2010 case file II GSK 849/09 agreed with the VAC and dismissed the case. See also “Unfair competition, case I ACa 1270/10“.

Trade mark law, case VI SA/Wa 299/10

November 15th, 2010, Tomasz Rychlicki

On 14 March 2007, the Polish Patent Office registered the word-figurative trade mark Oxford Wielka Historia Świata R-187352 for goods in Class 16 such as books and periodicals. The Polish company “Oxford Educational” sp. z o.o. from Słupsk was the applicant and the holder of the right of protection. The Chancellor Masters and Scholars of the University of Oxford (Oxford University Press) filed a request for invalidation. The OUP argued that it is obvious to everyone that Oxford is a place uniquely associated by the public around the world with the home of a famous university. Therefore, marking the goods with a signs associated with Oxford – the seat of the famous University of Oxford – may mislead the public as to the true geographical origin of products. The OUP also pointed out that, with priority from 24 April 1995, is entitled to the rights of protection to three trade marks sharing the same verbal element, OXFORD, R-103399, OXFORD UNIVERSITY PRESS R-102351 and OXFORD ENGLISH R-102350.

R-187352

The Polish company argued that the trade mark at issue does not refer to a geographical name of Oxford town, but to holder’s company name, and therefore it is not misleading. Oxford Educational also argued that the disputed sign was created in collaboration with an English company. The Polish Patent Office invalidated the right of protection. The PPO ruled that the conflicting trade marks are registered for identical goods, therefore, there is a risk of misleading the public as to their origin. Oxford Educational filed a complaint against this decision.

R-102350

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2010 case file VI SA/Wa 299/10 dismissed the complaint. The Court held that in case of a collision between a company name (the firm) and a trade mark that was registered with the “worse priority,” the priority shall be given to the right that was previously-formed. The mere registration of a trademark that is identical or similar to another company’s name (firm) does not provide even a breach of the rights to the company. However, the right to the company name would be infringed if the registration of a conflicting trade mark interferes with the exercise of this right. This distortion is misleading as to the identity of actors (acting under the company name and usign the sign) and therefore may jeopardize the company name. In case of a known, reputable, i.e. “strong” trade mark it means that the consumer awareness is associated with the recognized high-quality of products, derived from the manufacturer with high reputation. Thus, the registration of the questioned trade, and more – its application was made with a clear intention to benefit from the reputation of the OXFORD trade mark.

Trade mark law, case I ACa 767/07

October 13th, 2010, Tomasz Rychlicki

The Appellate Court in Wrocław in its judgment of 3 October 2007 case file I ACa 767/07, published in Lex no. 519252, held that reputable characters in comparison with other signs are characterized by stronger distinguishing ability that results from good information and notions of quality and prestige, provided by a sign to potential customers, facilitating the sale of goods bearing that trade mark.At the same time, such trade mark has a measurably market value and represents a significant, or even dominant component of the company’s assets. A reputed trade mark is protected even outside of its class or classes. Because, in such cases, advertising and qualitative functions of a trade mark are protected, and not the function of designation of origin of the product or service. The term of reputation refers both to the registered trade marks as well as well-known signs that are not registered.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Trade mark law, case IX GC 104/06

July 5th, 2010, Tomasz Rychlicki

In 2003, Polish company Zakłady Tytoniowe Lublin started to produce “Full Flavor ZTL Mont Blanc” and “Light ZTL Mont Blanc” cigarettes. Te tanie papierosy miały być konkurencją dla przemycanych z Ukrainy papierosów Monte Carlo. These latter cheap cigarettes were meant to be competition for Monte Carlo cigarettes smuggled from Ukraine.

R-160948

German company Montblanc – Simplo sued Polish company for infringement of Montblanc trade marks’ reputation, unfair competition delict and infringement of personal rights/interest. Montblanc – Simplo demanded the cessation of production of these cigarettes and the publication of a statment on illegal use of the trade mark, in nationwide newspapers.

R-160949

The District Court in Lublin in its judgment case file IX GC 104/06 dismissed these claims. The court held that that the contested name is written on cigarette packs separately (as the name of a mountain peak) and in a figurative aspect it has a different color, font and background. Therefore it cannot mislead consumers, what is more important, these are goods of various kinds. The expert in the field of commodities found that use of the trade mark for cheap cigarettes has no effect on the reputation of Montblanc sign and there is no percolation of the two groups of consumer of both products. Also an expert in the field of social psychology, did not reveal blurring of Montblanc reputation by the use of the geographical name “Mont Blanc” on the cheap cigarettes.

Trade mark law, case VI SA/Wa 2013/09

June 23rd, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 8 April 2010, case file VI SA/Wa 2013/09, held that the reputation is not a simple consequence of circulation of a trade mark on the market.

R-179043

The renown trade mark is one that has its own reputation, and so in addition to its recognition it must be distinguished by additional characteristics, i.e. market share (in terms of both quantity and value of traded goods), the extent and continuity of advertising of the product marked with the sign, territorial and temporal scope of trade mark use, licenses granted for the use of the trade mark, the quality of the goods, the value of a trade mark in the assessment of independent financial institutions, the amount of expenditures incurred in connection with the promotion of trade mark, the relationship to the price of substitute goods, whether (and if so, to what extent) the mark was used by third parties.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case V CSK 71/09

March 11th, 2010, Tomasz Rychlicki

Technopol Publishing Agency filed a suit against Phoenix Press and Bauer Publishing House. Technopol requested the court to prohibit both defendants from putting on the market all magazines and periodicals bearing the number “100” or its multiples, and journals bearing the titles composed of three Arabic numerals together with the words “panorama” (in Polish: panorama) or “panoramic” (in Polish: panoramiczny), and to order the withdrawal of such publications from the market, to order the publication of an apology of specific content in the press, to order the defendants to pay the amount of 75000 PLN as compensation and the amount of 99000 PLN as unjustified benefits received by the defendants as a result of the unlawful use of Technopol’s trade marks, and to order defendants to withdraw particular trade mark applications from the Polish Patent Office. Technopol argued that it has introduced characteristic titles of crosswords magazines, presenting the number “100” or its multiples, with the words “panorama” or “panoramic” since 1994. Bauer Publishing House gave a licence to Phoenix Press to publish crosswords magazine entitled “Chwila na 100 panoramicznych”. Later on, Phoenix Press began to publish crosswords magazines with titles composed of the multiple of “100” and the “panoram” word. Technopol based its claims on articles 3, 10 and 18 of the Polish Act of 16 April 1993 on Combating Unfair Competition – CUC – (in Polish: ustawa o zwalczaniu nieuczciwej konkurencji), Journal of Laws (Dziennik Ustaw) No. 47, item 211, with subsequent amendments.

Article 3
(1) The act of unfair competition shall be the activity contrary to the law or good practices which threatens or infringes the interest of another entrepreneur or customer.
(2) The acts of unfair competition shall be in particular: misleading designation of the company, false or deceitful indication of the geographical origin of products or services, misleading indication of products or services, infringement of the business secrecy, inducing to dissolve or to not execute the agreement, imitating products, slandering or dishonest praise, impeding access to the market and unfair or prohibited advertising and organising a system of pyramid selling.
(…)
Article 10
(1) Such indication of products or services or its lack, which may mislead customers in relation to the origin, quantity, quality, components, manufacturing process, usefulness, possible application, repair, maintenance and another significant features of products or services as well as concealing the risks connected with their use, shall be the act of unfair competition.
(2) Releasing for free circulation products in the packing which may cause effects referred to in section 1 above shall be the act of unfair competition, unless the use of such packing is justified by technical reasons.
(…)
Article 18(1) Where the act of unfair competition is committed, the entrepreneur whose interest is threatened or infringed may request:
1) relinquishment of prohibited practices,
2) removing effects of prohibited practices,
3) making one or repeated statement of appropriate content and form,
4) repairing the damage, pursuant to general rules;
5) handing over unjustified benefits, pursuant to general rules,
6) adjudication of an adequate amount of money to the determined social goal connected with support for the Polish culture or related to the protection of national heritage – where the act of unfair competition has been deliberate.
2. The court, upon a motion of the entitled party, may also adjudge on products, their packing, advertising materials and another items directly connected with commitment of the act of unfair competition. In particular, the court may order their destruction or include them on account of the indemnity.

Technopol’s claims were also based on articles 120(2) and 296(1) and (2) of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with subsequent amendments.

Article 120
1. Any sign capable of being represented graphically may be considered as trademark, provided that such signs are capable of distinguishing the goods of one undertaking from those of other undertakings.
2. The following, in particular, may be considered as trademarks within the meaning of paragraph (1): words, designs, ornaments, combinations of colours, the three-dimensional shape of goods or of their packaging, as well as melodies or other acoustic signals.
(…)
Article 296
1. Any person whose right of protection for a trademark has been infringed or any person who is permitted by law to do so, may demand the infringing party to cease the infringement, to surrender the unlawfully obtained profits and in case of infringement caused by fault also to redress the damage:
i) in accordance with the general principles of law,
ii) by the payment of a sum of money at the amount corresponding to the license fee or of other reasonable compensation, which while being vindicated would have been due on account of consent given by the holder to exploit his trademark.
1a. To the claims referred to in paragraph (1) the provisions of Article 287(2) and (3) shall apply accordingly.

2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Phoenix Press and Bauer Publishing House requested the court to dismiss the suit. They argued that all trade marks in question have only informational character, and they refer to the title of the magazine “Chwila dla Ciebie”, and substantially differ from plaintiff’s trade marks, which excludes the risk of confusion. The judgments of the District Court and the Court of Appeal did not satisfy any of the parties and as a consequence, both appealed.

The Supreme Court in its judgment of 24 November 2009 case file V CSK 71/09 ruled that the admissibility of a cassation complaint in matters of property rights is dependent on the minimum value of the subject matter of litigation, which in economic cases, cannot be less than 75000 PLN. The legal doctrine and the case law of the Supreme Court has expressed the view that the claims under article 18(1) points 1, 3 and 4, of the CUC have non-financial nature. See judgment of the Supreme Court of 9 March 2006, case file l CZ 12/06, and a judgment of the SC of 9 January 2008, case file II CSK 363/07. But this view has no legal justification which was the most widely expressed by the Supreme Court in the opinion of 8 March 2007, case file III CZ 12/07, published in OSNC 2008/2/26. The Court held that the claims set out in the CUC, though – according to the prevailing view – are not based on the absolute rights (enforceable against anybody infringing that right, an erga omnes right can be distinguished from a right based on a contract, which is only enforceable against the contracting party), they are directly contingent upon economic interests of persons who have the absolute right, and thus have the financial character. This view is justified by the general objective of the unfair competition law as defined in article 1 of the CUC, which is to prevent and combat unfair competition, and by provisions of article 20 of the CUC which set the same term of terminations of actions as for claims ensuing from property rights. For this reason, the Supreme Court dismissed the cassation complaint brought by Phoenix Press.

Technopol based its cassation complaint inter alia on the reputation of its trade marks. The Supreme Court ruled that according to the legal doctrine and the case law established by the SC, the distinction made between well-known and reputed trade marks is based on a different criterion. The reputation of a trade mark means its attractiveness, the value of advertising it creates and the ability to stimulate sales of goods marked with it. It is therefore a criterion referring rather to the special quality of a sign than to the degree of its knowledge. Such opinion was issued by the Supreme Court in a judgment of 7 March 2007, case file II CSK 428/06. The Supreme Court in a judgment of 12 October 2005, case file III CK 160/05, published in OSNC 2006/7-8/132, ruled that, the reputed or renowned trade mark serves as a carrier of information and ideas/opinions about high quality and high prestige. The last word is synonymous with “reputation” in Polish. However, the concept of a reputed/renown trade mark does not indicate an association with the exclusive services or goods of significant value. A renowned trade mark is a carrier of information on a specific, expected and tested quality of a sign. It includes a settled belief about the expected values of the goods, in the minds of buyers. The Supreme Court pointed out that the reputed trade mark in relation to other signs is characterized by ever stronger distinctive characteristic. Numerical trade marks owned by Technopol and registered for crosswords periodicals do not have the distinctive character. Trade marks intended to use for such periodicals have informational nature and are descriptive. They demonstrate direct and specific relationship with goods at stake which could allow its buyers to see them as a description of quantity of goods or one of their essential characteristics. In any case, a numerical trade mark placed on the cover of the magazine informs about the amount of crosswords that are appearing in the magazine and it is seen by buyers as a description of the characteristics of the goods, in particular the number of crosswords appearing in the magazine. Similarly, the word signs “panorama” or “panoramas” are used to describe the features of crosswords printed in a journal. The weak distinctive characteristic of Technopol’s trade marks that were registered for crosswords periodicals proves that these are not reputed trade marks, and there is no risk of confusion as referred to in article 296(2)(ii) of the IPL.

There was no evidence for the Court, that Technopol’s trade marks acquired the secondary meaning. On the contrary, such arguments were denied by the Court because of the use of these trade marks in such a way that they became a carrier of information about the origin of the goods. The Court confirmed that, as a general rule, it is possible for a trade mark that also serves as a press title, to acquire secondary meaning and distinctive character while performing informational function, but only taking into account all the circumstances the of use of such sign for designation of the goods.

The Court also ruled that the risk of consumers confusion as to the origin of goods, which creates the infringement of the right of protection for a trade mark, has many factors that require a comprehensive examination. The degree of knowledge of the registered trade mark, the degree of similarity between trade marks and the goods, and the circumstances in which the marked goods are sold, but also its distinctiveness should be taken into account while determining the risk of consumers confusion. According to the Court, the risk of consumers confusion was excluded because of the weak distinctive characteristic of the descriptive numerical signs, and the allegations of violation of article 296(2)(ii) of the IPL were unfounded, irrespective of any similarity between Phoenix Press and Technopol’s trade marks. Article 296(2)(ii) of the IPL applies to the infringement performed in the form of imitation, which may involve the use of an identical or similar trade mark to a trade mark registered, for the same or similar goods to these listed in the registry. The premise of violation is not only the unlawful use of a sign, but also the risk of confusion as to the origin of goods. The common knowledge of Technopol’s trade marks has not been proved and such knowledge cannot be equated with the popularity, especially as these trade mark serve for the designation of crosswords magazines that are targeted to specific audiences.

The Supreme Court also ruled that there was no violations of the provisions of the CUC related to the likelihood of consumers confusion as to the origin of the goods. The condition for the application of article. 10(1) of the CUC is decided on the factual basis. As it was noted by the Supreme Court in a judgment of 23 April 2008, case file III CSK 377/07, published in OSNC 2009/6/88, the difficulties in establishing such datum stem from the situation that it’s a fact of a legal nature and which may arise, as well as the fact that the likelihood of confusion must relate to a specific model of the consumer. According to article 10(1) of the CUC, the indication of the goods or services must have such a distinctive character so it’s illegal use would cause the likelihood of consumers confusion as to the origin of the goods. Only the use of words and numbers in a specific composition could cause such a risk. A similar opinion was issued by the Supreme Court in a judgment of 21 February 2008, recognizing that the numerical designation placed on the cover of the crosswords magazine can make the average consumer confused as to the origin of the goods, only if it is put in the place usually reserved for the title of a periodical. There was also the need for an appropriate balance between the rights and interests of different market participants, so giving due protection would not allowed to abuse their position.

The Supreme Court also noted that Technopol wrongly raised the plea of faulty decision of a case where it argued that the lower court did not take into account its claim against the defendants to withdraw given trade mark applications from the Polish Patent Office and the claim to abandon of their trademarks rights. The Court ruled that these claims relate to the rights on the existence of which decides an independent body – the Polish Patent Office. It is the PPO’s jurisdiction to decide on the invalidation of the right of protection for a trade mark at the request of any person who has a legitimate interest if it’s shown that the statutory conditions for obtaining this right have not been met. For all these reasons, the Supreme Court dismissed the cassation complaint brought by Technopol.

Trade mark law, case VI SA/Wa 233/09

March 8th, 2010, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for 3MA R-171362 trade mark owned by the Polish company MARMA Polskie Folie Sp. z o.o. The proceeding were initiated by the 3M Company, the owner of 3M R-84046 and word-figurative 3M R-84047 trade marks. The American company has claimed the reputation of its signs and argued that the registration of 3MA R-171362 trade mark would bring its owner unfair advantage and it would be detrimental to the distinctive character and the reputation of 3M’s trade marks. The complaint of MARMA Polskie Folie Sp. z o.o. company was rejected by the Voivodeship Administrative Court in Warsaw in a judgment of 9 October 2009, case file VI SA/Wa 233/09.

The VAC ruled that in the absence of a legal definition of the reputation it was the legal doctrine and the courts who have defined the essential criteria for determining the reputation of the trade mark. Accordingly, the reputation of the trade mark is associated with the established opinion among customers about the characteristics of the goods bearing the mark. The reputation is not a simple consequence of the use and circulation of a trade mark, but it’s also a well-established and deeply rooted image in the consciousness of buyers of vital goods. The reputation of a trade mark is a result of the care for the high quality of products, the consistent preservation of a sign on the market by long and intensive advertising. An established reputation of a trade mark occurs when the quality of the goods bearing the sign satisfy customers who can easily recognize it and connect with the goods marked by the proprietor, even if it means that the goods are placed on the market for the first time. The reputation of a trade mark means its attractive value of advertising, the positive perceptions of the goods bearing the sign. In assessing whether the sign is reputed, one cannot take into the account only the degree of knowledge of a sign among the customers and the extent and intensity of advertising of goods bearing the sign, but also the quality of these goods. Prizes and certificates awarded for the goods bearing the sign, expert opinions and presentation of the goods at trade fairs in order to promote products also show the reputation of the trade mark. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

See also “Poland: proving the fame of a trade mark“.

Trade mark law, case II GSK 1111/08

January 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 24 July 2008 case file VI SA/Wa 237/08 dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office decisions of 19 March 2007 case files Sp. 68/04 and Sp. 69/04, regarding the invalidation of the right of protection for word-figurative trade marks TIFFANY R-128063 and “Tiffany & Broadway Inc.” R-128064 which were registered in class 25 for shoes. The New York’s company argued inter alia that use of TIFFANY trade mark for goods such as footwear is a parasitic activity that uses another’s trade mark reputation and is bringing undue financial benefit to the holder of national registrations. The Company also stressed the fact that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The SAC in a judgment of 8 July 2009, case file II GSK 1111/08 ruled that the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, subsequent amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA.

A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;

In particular looking at the circumstance of “a trade mark conflicting with the principles of social coexistence”, from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another’s trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another’s trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark.

The Polish case law, for instance the Supreme Administrative Court in its judgment of 9 May 2008, case file II GSK 506/07, that was previously reported in the post entitled “Trade mark law, case II GSK 506/07“, already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:

market share/participation (both quantity and value of sold goods),
range and long-lasting of an advertisment of the product bearing a trade mark,
territorial and temporal range of use,
licences granted for trade mark use, quality of goods bearing a trade mark,
value of a given sign in assessment of an independent financial institution,
size and extent of expenditures spent on promotion of a mark,
the relationship on prices of substitute goods,
if (and to what extent) the mark is used by third party.

The SAC also noted that the Community case law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:

knowledge of the trade mark by a significant group of customers,
the contribution of the trade mark in the market,
intensity and geographic scope of the use,
intensity matching of goods with the trade mark,
the size of expenditures on advertising and promotion of the trade mark.

The SAC cited, inter alia, the judgment of the Court of Justice of the UE of 14 September 1999 case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej), published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, provides for such a possibility in the Article 132(2)(iii).

2) A right of protection for a trademark shall not be granted, if the trademark:
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trademarks accordingly.

The protection of registered trade marks to the extent of the wording of Article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on the provisions of Article 131(2)(i) of the IPL.

2. A right of protection shall not be granted for a sign, if:
(i) it has been applied for protection with the Patent Office in bad faith,

The SAC ruled that the provisions of Article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called “complete harmonization” citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not indifferent to assess the intentions and purposes of the applicant so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of Article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires preserving much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduced the registration to a purely formal procedure that has no importance.

Therefore, the SAC annulled both questioned judgments of the Voivodeship Administrative Court and returned to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.

See also “Trade mark law, case II GSK 1110/08” and “Trade mark law, case VI SA/Wa 214/08“.

Trade mark law, case Sp. 441/06

September 16th, 2009, Tomasz Rychlicki

Zino Davidoff’s attempted to invalidate the Polish trade mark for COOL WOMAN R-164594 registered in class 3 for goods such as for perfumery products including perfumes, toilet water, lavender water, cologne water and deodorants for personal use and owned by A&S Parfume Factory, a Polish company from Katowice.

The Swiss Company, being the owner of the Polish registered trade mark DAVIDOFF COOL WATER R-71968 and other International and Community trade marks, argued that COOL WATER brand had gained world renown and that the company incurred significant expenses in the brand’s promotion and advertising in Poland in the years 2002-2004. The Company from Fribourg alleged that A&S took the advantage of reputation of Davidoff’s trade marks.

A&S further argued that there was no risk of confusion because the word “cool” has no distinctive character and it appears in many trade marks registered in class 3 for cosmetics. There are 26 marks including the word “cool” that were registered under the Madrid Agreement procedure and 38 marks registered at the national level. The company from Katowice claimed that both elements had a clear meaning for buyers and that both of these English words were well-known to Polish consumers. A&S also argued that it is the Davidoff brand which has reputation – not its Cool Water trade marks.

The PPO in its decision case file Sp. 441/06 rejected the motion brought by Zino Davidoff. According to Polish Patent Office the word “cool” does not possess “the dominant meaning”, because it is included in different previously registered signs. The disputed marks, when assessed in their entirety, are not sufficiently similar to lead to a risk of consumer confusion regarding the origin of the goods. Therefore, the argument based on (the use of) the reputation of Davidoff’s trade marks was also regarded as unfounded.

The decision is not final. Both parties may appeal to the Voivodeship Administrative Court in Warsaw.