TUESDAY, 10 FEBRUARY 2009
Race for Dakar
On 7 November 2002, the Polish company DAKAR from Krasne by/Rzeszów applied for word trade mark registration for DAKAR in class 3 for goods such as preparations for cleaning and maintenance of upholstery and body of a car, cosmetics for cars, in class 27 for goods such as car rugs and also in class 37 for services such as maintenance, repair, overhaul, cleaning, and car tuning. The Polish Patent Office registered this sign (R-174205) in its decision of 6 June 2006. French company (société par action simplifiée) PARIS-DAKAR filed a request for invalidation of the right of protection based on article 132(2)(iii) of the Polish Act of 30 June 2000 on Industrial Property Law (ustawa Prawo wlasnosci przemyslowej z dnia 30 czerwca 2000 r.) published in Dziennik Ustaw 2001 No 49, pos. 508, consolidated text on 13 June 2003, Dziennik Ustaw No 119, pos. 1117, with later changes:
2. A right of protection for a trade mark shall not be granted, if the trade mark:The French company claimed that the PARIS-DAKAR and DAKAR brands are widely known beacause of the world-wide popular rally which has around thirty years of tradition. In PARIS-DAKAR opinion the Polish company applied for trade mark protection knowingly. It works in the cars trade which may causing a risk of association between the registered mark and the French company's brand and it has been done in order to use its popularity and reputation.
(iii) is identical or similar to a renown trademark registered or applied for registration with an earlier priority (provided that the latter is subsequently registered) on behalf of another party for any kind of goods, if it without due cause would bring unfair advantage to the applicant or be detrimental to the distinctive character or the repute of the earlier trademark. The above provision shall apply to well-known trade marks accordingly.
The Polish company argued that, when it applied for trade mark registration, the indication Paris-Dakar was usually associated with the rally, not "Dakar" itself. In addition, there are other trade mark registrations consisting of Dakar word, which means that such sign may function.
On 9 December 2008, the Polish Patent Office postponed the hearing in this case (act signature Sp. 10/08) and ordered the French company to supplement its evidence.
Posted by: Tomasz Rychlicki @ 14.23
Tags: Famous marks, Polish Patent Office, Polish trade marks,