FRIDAY, 5 MARCH 2010
The second lap in race for Dakar
This is a sequel to a story that was reported by Class46 in a post entitled "Race for Dakar". In July 2009, the Polish Patent Office invalidated the right of protection for DAKAR R-174205 trade mark (registered for goods in classes 3, 27, 37), after considering the case on the basis of rich evidence supplied by both parties.
The PPO recognized inter alia the special nature of the opposed trade mark DAKAR IR-606861 (registered for goods in classes 4, 9, 12, 14, 16, 18, 21, 22, 24, 25, 26, 28, 30, 32, 34 and 41), which in addition to its traditional function of determining the origin of goods, is also the name of the famous rally raid. In explaining its position, the PPO used arguments on a function of a trade mark known as the "merchandising function" and cited D. Keeling, Intellectual Property Rights in EU Law: Free movement and competition law, Oxford, 2003. When examining the circumstances of the case, the PPO concluded that DAKAR IR-606861 trade mark is a reputed one. The PPO pointed to the existing methods for assessing the reputation - the absolute and relative. The first method takes primarily into account the percentage of a certain degree of knowledge of the trade mark on the market (as established by the Voivodeship Administrative Court in Warsaw in a judgment of 8 August 2007, case file VI SA/Wa 757/07). The relative method, in addition to knowledge of the trade mark, emphasizes other criteria, including market share in terms of quantity and value of goods sold, the scope and length of the advertising of the product marked with the sign, territorial and temporal scope of the use of the trade mark, licenses granted, the quality of the goods, the value of a sign in the assessment of independent financial institutions, the size of the expenditure incurred in connection with the promotion of the trade mark and the relationship to the price of substitute goods. Public opinion polls, prizes and awards, publications, press releases, rankings, reports, invoices and other business records, and various promotional materials can serve as evidence. The PPO cited the judgment of the COJ of 14 September 1999 in C 375/97, General Motors Corporation, the judgment of Supreme Administrative Court of 21 November 2006, case file II GSK 181/06 and the decision of OHIM of 25 April 2001 in case R 283/1999-3. See also Class46 post entitled "Poland: proving the fame of a trade mark".
When referring to the transfrontier nature of the reputation of a trade mark as adopted in the judgment of the VAC in Warsaw of 8 November 2005 case file VI SA/Wa 845/05 (VALENTINO) or in the judgment of the VAC of 13 March 2006, case file VI SA/Wa 1626/05 (LEXUS), the PPO found that the Paris-Dakar rally, although it takes place outside the Polish borders, has many fans, as evidenced by the data on viewing TV programs on the rally - from 550000 to over 1200000 people, which according to the PPO, proved a high popularity. When deciding on the unfair advantage, the Polish Patent Office found that in this case, the Polish company will be able to count on the positive reaction of customers without spending too much money on the promotions, because they will buy the goods by associating them with the sign of the French company and consequently with the rally organized by this company.
The Polish company DAKAR from Krasne filed a complaint to the Voivodeship Administrative Court in Warsaw. The VAC in a jugment of 29 December 2009, case file VI SA/Wa 1938/09, ruled that the word Dakar also means the capital city of Senegal, and such argument escaped PPO's attention during the analysis of all the facts and evidence gathered. In this aspect this sign also fulfills political and economic role. Therefore, the name of Dakar has long been known as an exotic name of the city and it should not be attributed exclusively to one company.
The VAC anulled the Polish Patent Office’s decision and decided that the decision was not subject to execution. This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.
Posted by: Tomasz Rychlicki @ 10.29
Tags: Polish Patent Office, Polish courts, Polish law, Voivodeship Administrative Court, famous trade marks, reputed trade marks, Dakar,