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The Polish TIFFANY's trade marks saga continues
Some time ago, this Class 46 team member reported in a post entitled "Poland: Tiffany fought with Tiffany" that two American companies were disputing trade marks with a TIFFANY element before the Voivodeship Administrative Court (VAC). The New York company argued inter alia that use of TIFFANY for goods such as footwear is a parasitic activity that uses another's trade mark reputation and brings undue financial benefit to the holder of national registrations. The company also stressed that its trade mark is subject to protection under article 8 of the Paris Convention.

The VAC in a judgment of 24 July 2008, case act signature VI SA/Wa 238/08, dismissed Tiffany & Broadway Inc. Div. of Texpol Corporation’s appeals against the Polish Patent Office (PPO) decision of 19 March 2007, case act signatures Sp. 68/04 and Sp. 69/04, regarding the cancellation of the right of protection for word-figurative trade marks: TIFFANY R-128063 and "Tiffany & Broadway Inc." R-128064 which were registered in class 25 for shoes. The VAC ruled that the application for the protection of the TIFFANY mark for goods in class 25 was contrary to the principles of social coexistence because it caused the risk of weakening the reputation of the trade mark. Given the fact that the shoes are cheap and readily available, there is a risk of dilution of the reputation of TIFFANY trade mark and it may lead to lose its attractiveness among the exclusive clientele of goods bearing this mark.

The company filed a cassation complaint to the Supreme Administrative Court (SAC). The Supreme Administrative Court in a judgment of 8 July 2009, case act signature II GSK 1110/08 ruled that the reputation of a trade mark is associated with its highly distinctive character. One could say that a reputed trade mark isone that has a high ability to automatically trigger associations with the product for which it was registered. It is obvious that this ability will be weaker, according to the number of cases of using the same or similar trade mark as a designation of other goods that are originating from other entrepreneurs. With regard to the plea of weakening (the dilution) of the reputation of the Tiffany trade mark, i.e. weakening its individuality, based on the ability to cause the automatic association with the goods marked by this sign, such effects are also caused by unquestioned by the Court numerous registrations of identical or similar trade marks for other entrepreneurs for various other goods, as well as the use of this sign the name of very different businesses.

The SAC in a judgment of 8 July 2009, case act signature II GSK 1111/08 ruled that the old Polish Trade Mark Act – TMA - (in Polish Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15,with later amendments, do not explicitly provide for any special protection for unregistered reputed trade marks. However, the doctrine and the Polish case-law have already accepted the concept, that such protection could be provided under article 8(1) of the TMA,
A trade mark shall not be registrable if: 1) it is contrary to law or to the principles of social coexistence;
in particular looking at the circumstance of "a trade mark conflicting with the principles of social coexistence", from the subjective perspective – it was commented that, the “contradiction/variance with the principles of social coexistence” may concerning the conduct/behavior of the applicant. On the basis of such conclusions, the registration of a sign for the goods of another kind, if the registration was intended to use the reputation of another's trade mark or it was a threat of such reputation, was excluded. A trade mark application that was filed contrary to the principles of social coexistence, was an application made in bad faith. The absolute grounds/obstacles that are provided against the registration of the mark as defined in article 8(1) of the TMA do not directly refer to the relationship between the sign that was applied for and any other competing trade mark, however, in accordance with the accepted interpretation of that provision, in case of the infringement of the rules of social coexistence, the obstacle could be the inappropriate behavior on the applicant (its actions done in bad faith). The assessment of applicant’s actions, who was motivated by the desire to use another's trade mark reputation, should therefore be also varied according to circumstances of its motivation and, not only related to the trade mark itself.

The application for the right of protection for a trade mark that was made with the intent to use another trade mark’s reputation should be judged as an application that was made with the breach of the rules of social coexistence (application made in bad faith), regardless of whether it concerns a reputed registered trade mark or unregistered reputed trade mark. The Polish case-law, for instance the Supreme Administrative Court in its recent judgment of 9 May 2008, case act signature II GSK 506/07, that was previously reported by Class46 in the post entitled "Poland: proving the fame of a trade mark", already established the rule that in a case of famous trade mark and its reputation, besides its recognition, it must be also characterized by the following characteristics:
  • market share/participation (both quantity and value of sold goods),
  • range and long-lasting of an advertisment of the product bearing a trade mark,
  • territorial and temporal range of use,
  • licences granted for trade mark use, quality of goods bearing a trade mark,
  • value of a given sign in assessment of an independent financial institution,
  • size and extent of expenditures spent on promotion of a mark,
  • the relationship on prices of substitute goods,
  • if (and to what extent) the mark is used by third party.
The SAC also noted that the Community case-law provides several fundamental conditions for the recognition of a trade mark as a reputed one. These are:
  • knowledge of the trade mark by a significant group of customers,
  • the contribution of the trade mark in the market,
  • intensity and geographic scope of the use,
  • intensity matching of goods with the trade mark,
  • the size of expenditures on advertising and promotion of the trade mark.
The SAC cited inter alia the judgment of the Court of Justice of the UE of 14 September 1999 in case C-375/97, General Motors and the judgment of the Court of First Instance of 13 December 2004 in case T-8/03, El Corte Ingles and the CFI’s judgment of 25 May 2005 in case T-67/04, Spa Finders.

It is also clear that the reputation of a trade mark must be assessed and established in the country in which the protection is sought. If one would like to qualify a given trade mark as a reputed one in the Republic of Poland, then the argument of the international reputation of a trade mark is not sufficient. The basic circumstance for the recognition of the reputation of a sign in a specific country is to show by a person who is invoking this argument, the market share in terms of both quantity and value of goods sold.

The SAC held that provisions of the First Directive 89/104/EEC of 21 December 1988 do not preclude the possibility of granting the protection to unregistered reputed trade marks under the national law. Just to keep it in order, it is worth adding, that the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text on 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, provides in article 132(2)(iii)
2) A right of protection for a trade mark shall not be granted, if the trademark: (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 trademarks accordingly.
for the protection of registered trademarks to the extent of the wording of article 4(4)(a) of the Directive. The trade mark application that was made in bad faith shall be rejected based on the absolute ground for refusal of protection based on provisions of article 131(2)(i) of the IPL.
2. A right of protection shall not be granted for a sign, if: (i) it has been applied for protection with the Patent Office in bad faith,
 The SAC ruled that the provisions of article 4(4)(a) of the Directive cannot be interpreted as the maximum limitation for the protection of famous marks in the national law and it would be difficult to follow the arguments that the First Directive 89/104 is an example of the so-called "complete harmonization" citing the judgment of the Court of Justice of the European Union of 9 January 2003 in case C-292/00, Davidoff & Cie S. A.

According to the SAC, the court of first instance (VAC) wrongly assumed the bad faith of the applicant and it did not consider the fact that the applicant has conducted its business in Poland since 1990 with the use of the mark, and after about five years of its activity, the company applied for the registration of the mark. These circumstances certainly were not irrelevant in assessing the intention and purpose of the applicant, so the VAC should address them in the grounds of the appeal.

When deciding on the interpretation of article 8(1) of the TMA, which allows for the protection of not registered reputed trade marks in Poland, it should be also noted, that such protection have a special character because it applies to unregistered marks, and it is an exception to the principle of protecting industrial property rights by the registration process. This requires taking much care, so that without proper justification, would not depreciate the importance of registering trade mark and it would not reduce the registration to a purely formal procedure that has no importance.

Thus the SAC annulled both judgments of the Voivodeship Administrative Court, remitted the case to the VAC for reconsideration in accordance with the conclusions reached and ordered the Polish Patent Office to pay Tiffany & Broadway Inc. Div. of Texpol Corporation 1200 PLN as reimbursement of costs of the cassation compliant.
Posted by: Tomasz Rychlicki @ 10.13
Tags: Famous marks, Poland, Polish Supreme Administrative Court, Reputed trade marks, Polish courts, Polish Patent Office, Voivodeship Administrative Court, bad faith, Court of Justice of the UE,
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