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Significance of a trade mark's reputation in the process of reviewing an objection to registration

Guidance for the Polish Patent Office

25 January 2018

Last year the Polish Supreme Administrative Court rendered a decision interpreting how an objection to a trade mark application filed by a party holding the right to a well-known trade mark should be examined by the Polish Patent Office.

In its judgment of 21 June 2017 (case file no. II GSK 2782/15, "Case"), the Polish Supreme Administrative Court provided an interpretation of the law with regards to objecting to a trade mark application on the basis of similarity to an existing, reputable trade mark. The main issue was whether the Polish Patent Office ("Patent Office") is bound to determine the trade mark's reputation first and then proceed to examine possible similarity with the trade mark being applied for, or whether it should determine the trade mark's reputation only after having established the similarity between the relevant trade marks.

"J'adore" and "A Adoration" 

Parfums Christian Dior ("Dior") filed an objection to Interton sp. z o.o.'s application to register a combination trade mark for "A Adoration". Dior claimed that "A Adoration" was similar to Dior's well-known "J'adore" trade mark, registered years earlier both internationally and in EU. Dior raised the possibility of the "A Adoration" trade mark being associated with Dior's well-known "J'adore" trade mark, devaluing the mark's reputation and strong market position. Dior argued that as "J'adore" evokes a positive reaction in potential customers, they are more inclined to buy a product whose name they associate with Dior's reputable "J'adore" brand. Therefore, "A Adoration" may unjustifiably benefit from its similarity to a well-known trade mark, at the same time causing the value of the "J'adore" trade mark to depreciate.

The Patent Office did not share those views and concluded that regardless of the level of the trade mark's reputation a lack of similarity between the registered trade mark and the trade mark being applied for should result in dismissal of the objection.

Order of examining trade marks if an objection is filed

Dior filed a complaint with the administrative court and successfully challenged the decision of the Patent Office. As a result of an appeal filed by the Patent Office, the case was referred to the Court. 

The Court provided an interpretation of Article 132 s.(2)(3) of the Polish Act on Industrial Property (now Article 1321 s.(1)(4)) and held that if an objection is filed on the basis of reputation, the Patent Office should first analyse the reputation of the registered trade mark and then proceed to examine possible similarity with the trade mark being applied for. 

The Court reasoned that such an approach stems from the broader scope of protection granted to a reputable trade mark. If there is a possibility of damage to the distinctive nature or reputation of a well-known trade mark, its protection may be justified, even if there is only a slight risk of the two trade marks being associated with or linked to each other. Therefore, to have an application rejected, it is not necessary to prove that two trade marks are so similar that the similarity could confuse customers.

Conclusion

In Poland, the process of reviewing an objection to a trade mark application should begin with considering whether the similar, existing trade mark registration has a reputation. Whether a reputation exists determines the next steps that the Polish Patent Office should take, including then examining the similarity of trade marks and the acceptable level of risk of two marks being associated with each other.

Key Take-Away Points
  • The reputation of a well-known trade mark justifies a higher level of protection and therefore should be determined first before examining possible similarity with the trade mark being applied for.
  • As there is no legal definition for the term 'well-known trade mark', when assessing the degree of protection conferred to a trade mark with reputation, the Polish Patent Office should take into consideration a wide range of criteria, including its recognisability and possible damage to its distinctive nature.

 

Written by Konrad Rominkiewicz, Legal Adviser Trainee, Clifford Chance, Warsaw