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Izabella Dudek-Urbanowicz Patpol

Te applicant for the marks Hilger and Fahneneid is a manufacturer of alternative scents, cheaper counterparts of quality perfumes made by well- known brands. Perfume bottles of alternative scents and their packaging are usually very similar to those in which the famous brands are offered. However, the manufacturers of alternative scents do not file trademark applications for word-figurative marks or industrial designs, but resort to the simple tactic of applying for registration of only word marks. Both the Patent Office and District Administrative Court make a comparative analysis of marks without reference to the facts of how a trademark is used in reality. Tis means that the way in which a trademark is affixed to the applicant’s products is irrelevant to the outcome of a dispute in administrative proceedings.

Terefore, even though final products offered by an alternative scent manufacturer are nearly identical to the famous brand products, the similarity between the trademarks used for the marking of those products will not be confirmed by the court, and a trademark of the alternative scent manufacturer will remain valid.

By way of example, the District Administrative Court did not share the standpoint of a party opposing registration of a trademark Cool River because of its similarity to Cool Water. In an analogous case, the court found no similarity between the trademarks Silver Show for an alternative scent, and the earlier Silver Shadow for quality perfumes, despite the fact that the packaging to which the trademarks were affixed was similar.

However, in some cases word marks belonging to a manufacturer of alternative scents were cancelled in administrative proceedings, as they were regarded by the court as similar to earlier trademarks. For example, a decision on cancellation of later marks was issued in the cases of Hilger v Higher and Fahneneid v Fahrenheit, even though in those cases the manner in which the later marks were affixed to goods was not taken into consideration. In both cases, the similarity of goods was unquestionable, so the court was able to move for comparative analysis of the marks in question. Te similarity was found to be visual and phonetic, which was sufficient for cancellation of the later marks. Pursuant to the binding case law, similarity must be found in at least one of the relevant aspects (visual, phonetic or semantic) in order to confirm the existence of similarity between trademarks.

Examining the cases of Hilger v Higher and Fahneneid v Fahrenheit, the court found that an average customer, regardless of how attentive and cautious he is, has no possibility of comparing two products at the same time and place. Terefore, he must rely on the image of the product in his mind. Because of the fact that the goods under the marks at issue are


identical, and there is close visual and phonetic similarity, there is a risk of misleading the relevant customer as to the origin of those goods.

Te term ‘a risk of misleading customers’ will be interpreted as the risk of causing confusion as to the origin of goods. Tere is no need to prove genuine confusion occurring among customers. In both cases the average customer of perfumery products is an occasional purchaser, whose choice of a perfumery product is, in the first place, determined by its scent. In view of the fact that the questioned trademarks were based on fanciful words and have no specific meaning, the possibility of their visual or phonetic distortion is higher. Te court emphasised that this is more likely to happen where fanciful words sound like foreign words, have the same length, or use nearly the same letters.

In the discussed cases, later trademarks become similar to the earlier ones when repetition of letters and syllables takes place, and there exists a structural similarity of words resulting from an accumulation of similar vowels and consonants. Te court agreed with the Patent Office that the fact that the trademarks at issue are word marks, does not exclude a possibility of their distortion, especially since they were created on the basis of words which remain fanciful for an average Polish consumer.

Although it is fairly obvious that the intention of an alternative scent manufacturer is to create and register a trademark that would closely resemble a trademark destined for quality perfumes, it is not always possible to succeed in cancelling such an alternative mark. In the case of failure, the owner of an earlier quality trademark may proceed with court action based on unfair competition claims.

Izabella Dudek-Urbanowicz is a European patent and trademark attorney at Patpol Warsaw. She can be contacted at:

World Intellectual Property Review January/February 2012 83

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