JURISDICTION REPORT: POLAND
CONTROVERSY OVER BEAUTY PAGEANT TRADEMARK
Maria Jurek and Anna Szajna Patpol
Miss Polonia (BMP) filed a request for invalidation of the right of protection for the word-figurative trademark ‘Miss Polonia World’ owned by Miss Polonia Aldona Von Laübe (AVL) from New Britain in the US.
Te Polish Patent Office (PPO) invalidated the right in question. In its justification, the PPO pointed out that:
• BMP had demonstrated a collision between the exclusive right concerning a disputed trademark and BMP’s earlier right to the name whose important and fundamental part is the expression ‘Miss Polonia’.
• Registration of a trademark is not permissible if the trademark infringes a third party’s personal or economic rights. Registration of a trademark corresponding to the designation of another enterprise that was used by this enterprise before the trademark registration infringes the personal rights of this enterprise.
• An essential and sufficient element for distinguishing the applicant is the expression Miss Polonia.
• Since the beginning of its existence, BMP has organised annual, nationwide beauty contests under the name of Miss Polonia.
• As an essential part of its verbal layer, the trademark in question includes an element directly relating to the personal rights of BMP.
AVL filed a complaint against this decision, which was dismissed by the Voivodeship Administrative Court in Warsaw in its judgment of July 17, 2009.
Te court held that the essence of the dispute consists in determining which right should be given priority. Should it be the right deriving from the long-term use of the Miss Polonia designation as the company name, i.e. since 1991, or the right from registration of the Miss Polonia World trademark? In the court’s opinion, it would be contrary to the principle of fairness to recognise the priority of the Miss Polonia World trademark registration.
Te court also pointed out that:
• Te Miss Polonia World trademark includes the Miss Polonia designation, which was previously used as part of BMP’s company name.
• In AVL’s trademark, the Miss Polonia description used has existed in legal, economic and media transactions since 1991, and defines and distinguishes BMP.
• Both companies conduct an identical business activity, i.e. organising and promoting beauty contests for women and both trademarks are used to distinguish identical goods.
AVL filed a cassation complaint, which was dismissed by the Supreme 66 World Intellectual Property Review May/June 2011
“ REGISTRATION OF A TRADEMARK CORRESPONDING TO THE DESIGNATION OF ANOTHER ENTERPRISE THAT WAS USED BY THIS ENTERPRISE BEFORE THE TRADEMARK REGISTRATION INFRINGES THE PERSONAL RIGHTS OF THIS ENTERPRISE.”
Administrative Court. Te court in its judgment of February 8, 2011 ruled that:
• Tere are no grounds to consider that if a trademark similar to the name of a company is used in legal transactions, the personal and property rights to the company name could be infringed upon only in the case of full convergence of the entire mark with the name of the company. Te marketing of goods bearing a trademark confusingly similar to a company name may also be a threat to the personal or property rights.
• Te fact that the questioned trademark, in addition to the words ‘Miss’ and ‘Polonia’ (that were concurrent with the partial company name of BMP), contained the word ‘World’ did not deprive the applicant of the protection of the company name as a personal interest, because the designation Miss Polonia had sufficient distinctive characteristics to allow for the identification of the applicant and help to distinguish it from other entities.
• Due to a similar scope of activities of the entity entitled to the name and the holder of the mark registration, there was a danger of their clients becoming confused as to the identity of the companies.
• In order to establish an infringement of the trademark, it is sufficient to determine that potential confusion as to the identity of the company name and the trademark may occur, which seems to be inevitable when both companies conduct identical activities.
• Te registration of a trademark that infringes the personal and property rights of third parties is not permissible. Te company name under which an entrepreneur conducts a business activity performs such function and belongs to the catalogue of personal rights protected by law. At the same time, the name is a non-property component of the company treated as a subject of property and other property rights.
Maria Jurek is a lawyer at Patpol in Warsaw. She can be contacted at:
maria.jurek@patpol.com.pl
Anna Szajna is a lawyer at Patpol in Warsaw. She can be contacted at:
anna.szajna@
patpol.com.pl
www.worldipreview.com
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