POLISH TRADEMARKS
technical, utility function. Bakoma claimed that by registering the trademark in question the opposing party tried to obtain a monopoly for the technical solution, and this seems to be a clear example of acting in bad faith.
As for the allegation of lack of distinctiveness, Danone provided evidence for consumers’ recognition of the subject trademark, namely a survey in which the responders indicated the Bakoma Frutica yoghurt packaging as coming from Danone. Further, Danone argued that at the time of filing, the trademark had been present on the market for almost 14 years and its use was confirmed by advertisements and price lists. Danone presented data for the years 2004–2008 concerning its share in the market, advertisement expenses and brand recognition survey, and argued that such significant share in the market as well as the brand recognition means that the trademark acquired a secondary meaning and became a renowned trademark. In addition, Danone claimed that the trademark at issue cannot be used on the market alone, without any label.
Bakoma argued that the trademark was not distinctive at the date of filing, nor did it acquire secondary meaning. According to Bakoma, a three- dimensional form can be a trademark only when an
average consumer will associate it with the origin of the goods. A three-dimensional form can attract consumers’ attention in terms of aesthetics, but it does not mean that it functions as a trademark. In addition, the trademark could not acquire secondary meaning because it performs a technical and utility function. Bakoma also argued that Danone was trying to obtain the right of protection for a sign, which it did not intend to use in the applied form.
Te adjudicative board of the Polish Patent Office decided to invalidate the trademark in question on the basis of lack of distinctiveness, and decided not to examine the other grounds, ie, bad faith and the shape necessary to obtain the technical result.
As the decision of the adjudicative board of the Polish Patent Office is not final, we may expect a continuation of this battle over a yoghurt pot, in particular because Bakoma also requested that the Polish Patent Office decide on the lapse of protection of
the international trademark registration no. 700040.
Joanna Pilka is a patent attorney at Patpol. She can be contacted at:
joanna.pilka@patpol.com.pl
Joanna Pilka has been a patent attorney since 2011. She has an MA in economics from the Faculty of Economics and Management at the Lazarski University in Warsaw and has a diploma of postgraduate IP studies at Warsaw University. Her key areas of practice cover all issues relating to the protection of industrial designs and domain names. She represents clients in administrative
and litigation
proceedings before the Polish Patent Office and the OHIM, but is also experienced in handling court-administrative proceedings.
www.worldipreview.com
World Intellectual Property Review September/October 2013 119
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172 |
Page 173 |
Page 174 |
Page 175 |
Page 176 |
Page 177 |
Page 178 |
Page 179 |
Page 180 |
Page 181 |
Page 182 |
Page 183 |
Page 184 |
Page 185 |
Page 186 |
Page 187 |
Page 188 |
Page 189 |
Page 190 |
Page 191 |
Page 192 |
Page 193 |
Page 194 |
Page 195 |
Page 196