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Archive for: secondary meaning

Trade mark law, case II GSK 615/10

September 7th, 2011, Tomasz Rychlicki

Mr Roman Oraczewski Oficyna Wydawnicza PRESS-MEDIA requested the Polish Patent Office to invalidate the right of protection for the trade mark “Sto Panoramicznych” R-102530 owned by TECHNOPOL Agencja Wydawnicza Spółka z o. o. and registered for goods in Class 16 such as magazines. The PPO invalidated this trade mark and ruled that this designation is descriptive and informative, because it is carrying explicit message on the number and type of crosswords included in each copy of the magazine. TECHNOPOL filed a complaint against this decision, but it was dismissed by the Voivodeship Administrative Court in its judgment of 16 February 2010 case file VI SA/Wa 1862/09. TECHNOPOL decided to file a cassation complaint. The Comapny argued inter alia that its trade mark has acquired secondary meaning because TECHNOPOL also used similar signs, for instance “100 panoramicznych” R-102531, which is a modification of the trade mark “Sto Panoramicznych”.

The Supreme Administrative Court in its judgment of 25 May 2011 case file II GSK 615/10 dismissed the complaint and ruled that the use of a sign in order to prove its secondary meaning, can not be documented by the use of other similar designation that is also a separate, registered trade mark.

Trade mark law, case II GSK 67/10

April 14th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark 1001 R-157046 registered for goods in Class 16 such as posters, albums, almanacs, stationery, blocks, drawing blocks, brochures, magazines, charade magazines, prints, forms, newspapers, calendars, calendars with loose pages, filing cards, cards, card-notices, postcards, comics, books, crossword puzzles, stationery, stickers, notepads, covers, bookmarks, drawing kits, notebooks, and owned by Agencja Wydawnicza TECHNOPOL Spółka z o.o. The PPO ruled that this trade mark lacks distinctiveness. TECHNOPOL filed a complaint against this decision but it was dismissed by the Voivodeship Administrative Court in its judgment of 18 September 2009 case file VI SA/Wa 1164/09. Technopol filed a cassation complaint.

R-157046

The Supreme Administrative Court in its judgment of 10 February 2011 case file II GSK 67/10 dismissed it and ruled that a trade mark which lacks primary distinctiveness will acquire distinctiveness or secondary meaning through advertising, if it is used for so long that it will be associated not with the original descriptive content, but the source of its origin – a specific goods produced by a particular manufacturer. The practice of different publishers who used different numbers and numerals in tiles of magazines did not allow for 1001 to acquire secondary meaning.

Unfair competition, case V CSK 192/09

September 28th, 2010, Tomasz Rychlicki

AFLOFARM Fabryka Leków sp. z o.o. from Ksawerów sued two Polish companies for trade mark infringement and unfair competition delict/tort with regard to selling similar pharmaceutical products. This case went through all instances.

Z-307527

The Supreme Court in its judgement of 22 January 2010 case file V CSK 192/09 published in the electronic database LEX, under the no 564857, dismissed the complaint filed by Hasco Lek S.A. and Hasco Lek Dystrybucja. The Court held that the specificity of the market’s segment in which the magnesium preparations are sold, and which boils down to the fact that the same or very similar products gains the advantage of customers, through its specific name and advertising of such product and its packaging, requires greater care when introducing a new product of a very similar name and packaging, because it cannot mislead consumers, and it cannot take away consumers from another producer.

Trade mark law, case VI SA/Wa 369/10

July 19th, 2010, Tomasz Rychlicki

The Polish Patent Office (PPO) refused to grant the right of protection for “100 panoramicznych” trade mark (100 panoramic) Z-241510 applied for goods in class 16 such as brochures, books, journals, magazines, titles of magazines. The PPO held that this trade mark lacks sufficient distinctive character and that the sign is purely descriptive and therefore can not be covered by the right of protection. Agencja Wydawnicza TECHNOPOL Spółka z o.o. being the applicant in this case, filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 11 May 2010 case file VI SA/Wa 369/10, held that secondary meaning is the result of a genuine and consistent use of a trade mark by the entrepreneur, in order to indicate in this way, the origin of the goods. The assessment of whether a sign has a secondary meaning must be decided by examining all the facts such as time of use, its market share, the ways and intensity of use, and all the data showing that a given group of customers will evidently assign the sign and the goods to a particular trader. The VAC annulled the PPO’s decision and ruled as unenforceable.

Trade mark law, case VI SA/Wa 274/10

June 1st, 2010, Tomasz Rychlicki

On 14 March 2005, the Polish company PMB S.A. from Białystok applied for “dębowa mocno wędzona” (oak heavily smoked) trade mark Z-292377, for goods in class 29 such as meats, smoked products and offal products.

The Polish Patent Office denied to grant a right of protection and PMB filed a complaint to the administrative court. The Voivodeship Administrative Court in Warsaw in a judgment of 14 April 2010, case file VI SA/Wa 274/10, rejected the complaint. According to the Court, in this case, the PPO correctly held that PMB has not shown that the sign has acquired distinctiveness. As it was clear from case files, the only evidence provided by PMB was statements of sales of products marked with the questioned sign as of January 2005. The issue of acquisition of secondary meaning (acquired distinctiveness) is taken into account together with all the circumstances of the presence of a sign on the market, including such as: market share, the intensity, geographical extent, duration of the use of a trade mark, investments in advertising, the percentage of a relevant group of customers who recognize the sign as an indication of origin from a particular entrepreneur, etc. Such evidences must come prior to the date of filing of a trademark application with the Polish Patent Office. The Court commented on the Community case law in which the evidence of secondary meaning is also allowed from the period after the date of trade mark application, if they show that acquired distinctiveness already existed at that date.

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

Trade mark law, case II GSK 905/08

July 28th, 2009, Tomasz Rychlicki

On June 2006, the Polish Patent Office refused to grant the right of protection for a 3D trade mark Z-255004, that was applied for in September 2002 by Polish company “BARTEX – Bartol” Spólka jawna from Paproc. The reason was that the applied sign was similar to 3D trade mark IR-676508, registered under the Madrid Agreement with a priority of April 1997 for Bacardi & Company Limited for goods in class 33, such as alcoholic beverages.

Z-255004

In October 2007, after re-hearing the case, the PPO upheld its decision of June 2006 on the grounds that the assessment of similarity between both signs should be based on the overall impression both marks have on the consumer.

According to the PPO the distinguishing strength of the disputed signs should be taken into account, including its distinctive and dominant components. As usual, both trade marks should be compared in three aspects: visual, aural and conceptual. The PPO deemed both marks as “weak trade marks”. However, the PPO also noted that the 3D trade mark owned by Baccardi posses some features that are not common and are not reproduced in other 3D forms of bottles. The most distinctive element is the characteristic cut on both sides of the bottle. Along with all the rest it gives a unique shape to the bottle. Thus, in the assessment made by the PPO, the earlier trade mark as a whole had the distinctive character which allowed the PPO to issue a positive decision on the recognition on the territory of the Republic of Poland of the protection for the international trademark.

IR-676508

While deciding on the application made by the Polish Company, the PPO came to the conclusion that the differences between disputed trade marks are not so noticeable and the risk of confusion by the average consumer of such goods is significant.

As regards the Polish company’s argument that it should be taken into account the fact that alcohol is almost always sold in the bottle that has a label, the PPO said that it is possible to imagine a situation that the applied trade mark will have in the future a label which is an imitation of an earlier trade mark. The Polish Patent Ooffice pointed out that, if looked at the specific conditions of trade it should take into account the way in which the applicant puts its goods on the market. Some information regarding this issue were presented in the observations filed by Bacardi on 26 August 2003 as to the existence of grounds that may cause a right of protection to be denied in connection with the application Z-255004. These materials proved that the Polish company markets products that are the imitation of alcohol produced Baccardi.

BARTEX – Bartol filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in its judgment of 28 April 2008, case file VI SA/Wa 126/08 ruled that while deciding whether the right of protection may be granted it must be determined whether a sign may serve as a trade mark at all. Only after having determined that a sign may be a trade mark it shall be examined whether such sign has sufficiently distinctive characteristics, to check out whether a sign is capable to distinguish on the market the specific goods for which it was applied for.

The VAC based its holding on article 129(1)(ii) 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 of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments.

Article 129
1. Rights of protection shall not be granted for signs which:
(ii) are devoid of sufficient distinctive character.

The lack of distinctive character is an absolute obstacle to trade mark registration, however, characters devoid of this charateristics can acquire it as a result of use. The distinctive character of a trade mark is fitted with such features, which in the minds of consumers it clearly indicate that the goods identified by it come from the specific company. The court cited doctrinal approach to the distinctiveness of a trade mark (a book by professor Urszula Prominska entitled Prawo wlasnosci przemyslowej published by Difin, Warszawa 2005, edt. II, p. 211). The assessment of a distinctive character is the result of two quite different elements. On the one hand, the way/form a trade mark is presented must be “itself” so distinctive that it can identify the goods. On the other hand, it must provide the consumer with a possibility to choose goods based on that way/form without the necessity of determining the origin of goods indirectly (eg. when the consumer is forced to look at the product manufacturer’s name). In examining signs that cannot distinguish the goods, it should be noted that such sign does not posses any characteristics in its tructure thus such sign as a whole is devoid of a sufficient distinctive characteristics and it is not suitable for the identification of goods, and therefore is does not have the ability to distinguish its origin. This is a category of signs that emerged of its structural features (such as a form which is the representation of the product, its generic name, etc.). The court rejected the complaint.

The cassation complaint was rejected in the judgment of the Supreme Administrative Court of 13 May 2009, case file II GSK 905/08.

Trade mark law, cases Sp. 428/07 and Sp. 442 /07

September 6th, 2008, Tomasz Rychlicki

The Polish newspaper Rzeczpospolita reports recent cases (act signatures Sp. 428/07 and Sp. 442 /07) brought before the Polish Patent Office by German company Klöckner Moeller GmbH, which opposed the registration of the PowerControl trade mark by the Lestar Company from Opacz. Both parties are involved into a dispute as to whether the PowerControl mark is a sign of fanciful character and whether it has sufficient ability to distinguish the goods of one undertaking from the another.

The Polish company from Opacz applied for a trade mark registration for PowerControl in 2001, in class 9 (cables and electrical wires, electrical controls of light, signals and switching and in class 35 (sale of various goods in a shop with wiring articles). The PPO has issued a favourable decision and registered this trade mark in 2006, R-174685.

R-174685

The patent attorney who is representing the company from Germany declared that one can not claim such simple words (power and control) as a trade mark, it gives the owner a monopoly on the use. The sign creates a cluster of words whose meaning is known in Poland. There are thus distinctive capabilities which are required for a brand. And it must identify the goods of an entrepreneur. But the Polish company argued that a sign which is composed of foreign words can be considered fanciful in Poland. Therefore PowerControl is able to distinguish goods, especially technical equipment.

The Polish Patent Office has not yet resolved the dispute.

Trade mark law, case II GSK 185/08

June 23rd, 2008, Tomasz Rychlicki

Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa objected to the trade mark application for SPIRYTUS REKTYFIKOWANY PL 1784, R-134685, filed by POLMOS LANCUT SA. Polmos in Warszawa claimed priority of an earlier trade mark – SPIRYTUS REKTYFIKOWANY, R-63628.

R-63628

SPIRYTUS REKTYFIKOWANY was bought by Polmos in Warsaw during an auction held by the Polish Ministry of the Treasury. All Polmos companies agreed in 1999 that they would not use trade marks owned by others in the Polmos “group”.

The Polish Patent Office (the PPO) decided that the contested mark had no distinctive character and it only indicated a specific kind of alcohol and method of production. Przedsiebiorstwo Przemyslu Spirytusowego Polmos in Warszawa lodged a complaint before the District Administrative Court in Warsaw seeking to annul the PPO’s decision. However, the Court sided with the PPO’s findings and rejected the complaint. The Court held that both signs were word-figurative marks and should be perceived and examined as whole.

R-134685

Polmos in Warszawa filed a cassation complaint before the Supreme Administrative Court in Warsaw. It supported its position with an argument that SPIRYTUS REKTYFIKOWANY acquired secondary meaning and had a good reputation bacause of the use during the course of trade. The Supreme Administrative Court in its judgment of 18 June 2008, case file II GSK 185/08 did not agree with such statements and rejected the complaint. The Court found that Polmos in Warszawa was seeking exclusive rights in the spirytus rektyfikowany sign, which was a purely informative term to be found in Polish dictionaries and official norms.

This case is the leading example of problems with trade mark portfolios of companies that were privatized in Poland after 1990. Polmos was state-owned monopoly, controlling the Polish market of spirits and other alcohols from middle ’20s until 1990, when it was divided and privatized into several independent companies.

Trade mark law, case II GSK 236/07

February 11th, 2008, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 28 November 2007, case file II GSK 236/07 held that the distinctive character of a trade mark may orginally arise from the nature of a sign or may later originate from the use of such trade mark on the market (acquired distinctiveness). A sign acquires the secondary meaning, if it lacked the distinctive character earlier, but during the use it became the source of information about the origin of a product.

Trade mark law, case II GSK 210/06

December 29th, 2006, Tomasz Rychlicki

On 11 July 2000, the Polish Patent Office has granted the right of protection to Zakłady Farmaceutyczne Polfa-Łódź Spółka Akcyjna for word trade mark “calcium c” R-122184 for goods in Class 5 such as pharmaceutical products. On 25 May 2001, the PPO received a requested for the invalidation of “Calcium C” R-122184 trade mark. The applicant was arguing that the questioned sign does not have a distinctive character. According to the applicant, the term “calcium” and “c” represent information about the properties and composition of the product bearing the mark.

The PPO in its decision of 11 February 2005, invalidated the right of protection for “Calcium C” R-122184. The PPO claimed that the word of calcium derived from the Latin and has no distinctive character, i.e. it is an informational sign, which should be available to all entrpretanours performing economic activity. While referring to the possibility of acquisition of secondary meaning the PPO held that the owner did not provide any evidence on this circumstance. The PPO considered that the mere fact that the company made a substantial investments in product advertising, or show significant sales, does not constitute itself a secondary meaning. Polfa-Łódź filed a complaint against this decision

The Voivodeship Administrative Court in its judgment of 20 February 2006 case file VI SA/Wa 1730/05 upheld the decision of the PPO. The VAC agreed that “Calcium C” does not have distinctive character. The Court stated that the sign is devoid of any fanciful elements, purely informational – indicating that the product is a calcium with vitamin C. The VAC ruled that in the interest of manufacturers of the pharmaceutical products is the exclusion of such signs from the registration, otherwise one individual entrepreneur could monopolize the use of these signs and that would lead to serious and unjustified restrictions on the activities of other entrepreneurs. Polfa-Łódź filed a cassation complaint.

The Supreme Administrative Court in its judgment of 20 December 2006 case file II GSK 210/06 found the appeal well-founded. The SAC held that there was a breach of procedrual provisions because the VAC did not explain and did not consider the impact on the outcome of the case of studies of public opinion, indicating the market share of the disputed product labeled with “calcium c” trade mark and the size of the expenditures on the promotion and marketing. The VAC restricted itself to general statements. It was assumed that for obtaining a secondary meaning the products labeled with “calcium c” must be marketed and available to buyers (the actual use of the trade mark). There was no doubt that this condition for the product bearing “Calcium C” trade mark has been met. However, the SAC noted that is has to be remembered that a trade mark acquires distinctive character as a result of its use only when a sign is able to identify the goods as originating from a particular entrepreneur. Undoubtedly for the SAC the facts in this case were not examined in detail and exhaustive.The Court ruled that the administrative proceedings that concerns the invalidation of the right of protection does not exclude the duty of the administrative body (the PPO) to take all necessary steps to clarify the facts of a case and to resolve it and to comprehensively collect and examine all evidential material, although the burden of proof rests on the one who has the legal interest.

In the legal literature and case-law, it is considered that the typical descriptive signs are in fact components of the goods, even if the indication is only a basic (essential) component, for example, “sand” for the cosmetic agent, which is an essential component. The Court cited W. Włodarczyk, The distinctive ability of a trade mark, Lublin 2001, pp. 199-200. The informational character of a trade mark is not changed when someone is using a sign from foreign language, even in case of terms that come from a dead language (e.g. Latin), when it concerns the professional, or a part of the general Polish vocabulary. The Court concluded that In any case, it would not have been justified to say that the fact that a sign contains information about the composition of a product, a limine precludes its recognition as a fanciful and bars the opportunity to register it as a trade mark, especially since it is possible to acquire secondary meaning.