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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Poland: cross-border reputation

R-153643On 7 February 1996, the American company Tiffany & Broadway Inc. Div. of Texpol has applied before the Polish Patent Office to register the word-figurative trade mark "Tiffany & Broadway" in class 3 for goods such as hair care preparations, washing and cleaning preparations, teeth cleaning preparations, shoe polish, skin-care preparations, dish washing preparations, deodorants, perfumes, eau de Cologne, in class 5 for goods such as dietetic substances adapted for medical use and food for babies, in class 8 for goods such as cutlery and razors, in class 16 for paper tablecloths, in class 18 for trunks and suitcases, umbrellas and parasols, saddlery, belts, gallantry made of leather and imitation leather as well as for goods in classes 24, 25, 28, 30, 32, 33, 34, 35, 36, 38, 41, 42, 43, 44, 45. The PPO granted the application on 1 April 2004. In this case the term of 8 years of trade mark application proceedings was not a joke at all.

The cancellation proceedings were started by another American company - Tiffany & Co. from New York - based on article 8(1) of the old Polish Trade Mark Act of 1985 (Ustawa z dnia 31 stycznia 1985 r. o znakach towarowych, Dziennik Ustaw z 1985 r. Nr 5, poz. 15, z pˇzniejszymi zmianami):

A trade mark shall not be registrable if:
(i) it is contrary to law or to the principles of social coexistence;
The New York's company claimed that its trade marks had a reputation and were famous and that the Tiffany & Broadway registration was made in bad faith, leading to the watering down (early Polish translation of dilution concept) of Tiffany's trade marks. The PPO agreed and invalidated the contested trade mark. Tiffany & Broadway appealed to the District Administrative Court in Warsaw. The company noted that Tiffany & Co. did not provide evidence of any business activity in Poland and that none of New York's company trade marks had been registered in Poland. According to Tiffany & Broadway article 8(1) does not provide protection for famous marks, or marks that should be protected despite the absence of registration. The PPO responded that although it is true that the goods that are signed by Tiffany & Co trade marks are available in Poland only in the secondary circulation/market, but its trade marks are renowned and associated and perceived by consumers with luxury goods, among other things, thanks to the novel and film "Breakfast at Tiffany's".

The District Administrative Court in Warsaw dismissed the appeal in its judgment of 24 October 2008, act signature VI SA/Wa 214/08. The Court held that there is no doubt regarding the reputation of TIFFANY trade mark. There are very few so strong and famous brands. In the court's opinion the Tiffany's trade mark is very attractive and it has huge advertising value. Tiffany has also proved its international reputation and it was not obliged to prove its existence specifically in Poland, because, in the Court's view, the reputation is international/world wide - across borders. The DAC held that Tiffany & Broadway was aware of the existence of Tiffany's reputation and trade mark registration for Tiffany & Broadway could lead to dilution of Tiffany's trade marks.

See also Class 46 post Tiffany fought with Tiffany.

Posted by: Tomasz Rychlicki @ 14.39
Tags: evidence of reputation, Famous marks, Poland, Polish courts, Polish Patent Office,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.

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