JURISDICTION REPORT: POLAND
TRADEMARK BATTLE OVER A BLADE OF GRASS
Anna Zakrocka Patpol
Aſter World War II, all Polish liquor manufacturers became state-owned companies associated within Polmos, the Polish spirits monopoly, until 1990 when transformation into a free market economy meant each liquor factory became an independent business. Te companies still shared the name Polmos, but used additional local names to identify themselves (eg, Polmos Białystok, Polmos Lublin, etc). In 1999, by way of tender, the trademarks which were a common property of Polmos were shared between the local companies, eg, Polmos Białystok became the holder of rights for the trademark ‘Żubrówka’.
Te division of trademarks between the local Polmos companies and their successors led to many conflicts over trademark rights. One of the hottest is an ongoing dispute between Polmos Białystok and Polmos Łańcut.
Polmos Białystok is a manufacturer of a flavoured vodka named Żubrówka, the characteristic property of which is a blade of grass inside the bottle and the image of a European bison on the label.
“POLMOS ŁANCUT ARGUED THAT ITS TRADEMARK IS A COMPILATION OF MANY ELEMENTS, AND THAT THE MAIN ELEMENT IDENTIFYING THE PRODUCT’S ORIGIN IS THE BOTTLE.”
Polmos Białystok filed with a request for cancellation of the Polmos Łańcut trademark registration with the Polish Patent Office based on the similarity of the mark to its earlier registrations for Żubrówka. Polmos Białystok also presented materials confirming the presence of Żubrówka branded products on the Polish market, as well as advertising campaigns and market research.
Polmos Łańcut argued that its trademark is a compilation of many elements, and that the main element identifying the product’s origin is the bottle. Te accompanying elements, such as the image of a bison and a blade of grass, do not change the customer’s perception of the product, as they are only associated with the kind of vodka. Using a particular variety of grass—Hierochloe odorata—is necessary for this specific taste of vodka. Appropriation of that element by one undertaking would be totally unjustified.
Te name żubrówka derives from the Polish word żubr, meaning bison. Te specimen of grass inside the bottle is the favourite food of the bison, which lives in north-east Poland, and this particular variety of grass appears nowhere else but in that territory. Polmos Białystok is also the owner of a number of trademark registrations, including the figurative trademark ‘Polmos Żubrówka Bison Brand Vodka’ and a three-dimensional trademark depicting a bottle with a straw of grass.
Polmos Łańcut obtained protection for its trademark, namely a bottle with a label representing the image of a bison along with the name ‘Wisent’, meaning the European bison, and also containing a straw of grass inside the bottle.
Te Polish Patent Office examined the request for cancellation of the mark, and agreed that the trademarks with the word element ‘żubrówka’ enjoy reputation. However,
there is no likelihood of confusion between the
renowned Żubrówka trademarks of Polmos Białystok and the registered mark Wisent. As far as liquors are concerned, the average consumer’s attention is first focused on the label, which conveys the most essential information about the kind of liquor and its manufacturer, and then on such elements as the shape or contents of the bottle. Te Patent Office found that Polmos Łańcut does not make any undue profits from the renowned character of the Żubrówka trademarks, and that its trademark was created with due caution in order to make it distinctive from competitor’s earlier marks; the only common feature of the opposed marks is the fact that they are used for the same kind of flavoured vodka.
Polmos Białystok filed a complaint with the District Administrative Court; in April 2012 the court dismissed the complaint and upheld the Patent Office’s decision. Polmos Białystok still has the right to file a cassation complaint with the Supreme Court.
Anna Zakrocka is a Polish and European trademark and design attorney and head of trademarks at Patpol. She can be contacted at:
anna.zakrocka@
patpol.com.pl
68 World Intellectual Property Review July/August 2012
www.worldipreview.com
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