JURISDICTION REPORT: POLAND
ADDITION OF A FAMOUS BRAND TO AN EARLIER LESS KNOWN TRADEMARK
Izabella Dudek-Urbanowicz Patpol
According to a judgment of the District Administrative Court (DAC) as of May 13 2011, acceptance of the fact that a famous brand appropriates a less known trademark enjoying earlier priority and beginning to build its position on the market, would render the protection of that earlier mark merely illusory. Such protection, despite having been granted earlier, would not achieve the desired legal effect.
A complaining party—the owner of an earlier trademark, Bikini, registered for ‘cosmetic products’—claimed that a later application for a trademark, Bikini Christian Dior Paris, destined for ‘face and body care products’ (class 03) is similar to the complaining party’s trademark, and the use of the later mark may in particular mislead a part of the public into thinking that there are associations between both trademarks. Te complaining party filed a request for cancellation of the trademark Bikini Christian Dior Paris, also claiming that the owner of the subject mark acted in bad faith, which seemed to be confirmed by an earlier licence agreement concluded between the parties. In addition, the complaining party argued that the trademark in question violated its material rights and was contrary to good practices.
Te Adjudicative Board of the Polish Patent Office (PPO) dismissed the request for cancellation, arguing that there is no risk of confusion in the subject matter, as the questioned trademark “emanates luxury, and the goods marked therewith enjoy prestige and exclusiveness” (quotation from a judgment of the European Court of Justice as of November 4 1997, case No. C-337/95). According to the board, combining a weak trademark Bikini with a strong and recognisable designation Christian Dior Paris, totally eliminates the risk of confusing both marks by a well-informed and attentive customer.
Te owner of the trademark Bikini filed a complaint with the DAC, in which she disagreed with the standpoint of the board and claimed that combining her word trademark with the words ‘Christian Dior Paris’ and graphic elements, constitutes an appropriation of another party’s trademark. Te activity consisting in creating a new trademark by adding a company name (and location) to the existing trademark of another party distorts the nature and function of a trademark. Further to this, acceptance of such practice would result in “allowing to imitate without punishment any trademark by adding to it a surname, or a company name of the imitator, which would in turn render the registration of the earlier mark useless and having no legal effect”.
According to the complaining party, although the questioned trademark incorporates other elements including the company name, it will still mislead customers. Adding ‘Christian Dior Paris’ to the complaining party’s trademark can mislead customers into thinking that both trademarks originate from the same undertaking, or the undertakings are connected with each other, especially as the earlier trademark does not have any signs of its holder.
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“THE ACTIVITY CONSISTING IN CREATING A NEW TRADEMARK BY ADDING A COMPANY NAME (AND LOCATION) TO THE EXISTING TRADEMARK OF ANOTHER PARTY DISTORTS THE NATURE AND FUNCTION OF A TRADEMARK.”
Te DAC shared the complaining party’s standpoint and accepted the complaint as justified. Te court broadly commented on the risk of misleading customers, referring in particular to the risk of evoking wrong associations between the questioned trademark and the earlier trademark Bikini, and made an assessment of that risk from the perspective of the trademark with earlier protection. Te court indicated that the unquestionable recognition of the Dior brand emanating luxury, prestige and exclusiveness, can be an obstacle for another brand, such as Bikini, to become recognisable on the market, especially if that big brand has incorporated the small Bikini into its trademark.
According to the court, it was also necessary to check whether the above action would be detrimental to the complaining party’s trademark by evoking the risk of confusion, if the complaining party’s trademark was also used for luxury goods in the same sector of the market. Not taking this into consideration would mean that all renowned or commonly known brands—simply because of their high recognition on the market—win their owners’ permission to ‘attach’ any earlier protected designation to their own recognisable name or surname, and use it with impunity.
To justify its judgment, the DAC referred to an analogous ruling of a German national court. According to the German court, it seems unfair if a third party claims to have the right to an earlier designation and adds its own company name to it, even if that earlier designation has only an ordinary distinctive character. In spite of this, in a case resulting from a dispute between the owners of two designations—an earlier Life and a later Tompson Life—the court in Germany, like the PPO, dismissed claims raised by the plaintiff for prohibition of using the designation Tompson Life, ruling that there is no likelihood of confusion between the trademarks Life and Tompson Life.
A contrary view, however, was presented in 2005 by the ECJ relating to confusion if the questioned designation consists of a third party’s company name and someone else’s earlier registered trademark with ordinary distinctive character.
Izabella Dudek-Urbanowicz is a patent attorney at Patpol. She can be contacted at:
izabella.urbanowicz@patpol.com.pl
World Intellectual Property Review November/December 2011 83
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