December 15, 2012
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POLAND: Trademark Message in a Bottle
By a decision of October 19, 2012 (Case Sp. 185/12), the Polish Patent Office (PPO) cancelled the composite mark PL 1764 (No. R-205770), comprising word, device and three-dimensional elements, that was registered in the name of Fabryka Wódek Polmos Łańcut for vodka in Class 33.
The decision followed a prior examination of the case by the District Administrative Court (DAC) of Warsaw. In comparison to other decisions of the PPO and judgments of the administrative courts, this case was completely different in that, in assessing the trademark’s reputation, the PPO attributed considerable importance to the role of a blade of grass inside the bottle.
Polmos Białystok S.A. applied for the cancellation of the above trademark, claiming the infringement of its prior-registered ŻUBRÓWKA trademarks having a reputation and comprising a blade of grass element (inter alia, Nos. R-62081 and R-85811). The PPO refused to cancel the contested mark (Case Sp. 348/09). On appeal, however, the DAC reversed the decision and remanded the case to the PPO for reexamination. (Case VI SA/Wa 1242/11 (DAC Aug. 24, 2011).)
The DAC cited, among other things, the PPO’s failure to thoroughly examine the evidence that was filed to prove how consumers perceived the crucial element of the mark at issue, namely the blade of grass inside the bottle. According to the Court, the PPO had unjustly ignored the 2008 consumer survey regarding the ŻUBRÓWKA bottle because the survey was conducted two years after the filing date for the contested mark (2006). The Court found that in light of all other evidence in the case files, customer opinion in 2006 with respect to the renown of the ŻUBRÓWKA bottle was no different from that recorded in 2008. The Court underscored that the survey confirmed the product’s very high market position, which was due to the fact that for years the product had been distinguished by the same characteristic blade of grass inside the bottle; hence, the results could not be disregarded simply because the survey was conducted in 2008.
The DAC found that the mark had been used for over 20 years with word or word-device marks such as ŻUBRÓWKA and ŻUBRÓWKA BISON VODKA. While each of these marks indicated the origin of the product and enjoyed independent protection, it was the characteristic three-dimensional form of a blade of grass that reinforced this message and constituted an unusual element distinguishing the goods of the claimant. The DAC instructed the PPO, when reexamining the case, to assess whether it was only the name ŻUBRÓWKA that was a renowned designation that enhanced the distinctiveness of the mark or also the blade of grass in the bottle, since for consumers the latter was a significant element determining the originality of this product as well as distinguishing it from other colored vodkas.
In light of the DAC’s judgment, the PPO cancelled the registration for the contested mark. The PPO’s decision is not final and valid, however, and the parties have the right to file an appeal against it to the DAC.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2012 International Trademark Association