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CLASS 46


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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Tomasz Rychlicki
Yvonne Onomor
THURSDAY, 21 APRIL 2011
Poland: L'OREAL not similar to O'LEARY? Oh really?
On 20 December 2006, the Polish Patent Office granted the right of protection for the word trade mark O'LEARY R-180416 applied for by Piotr Kasprzycki PPH Eveline Cosmetics from Lesznowola for goods in Class 03 such as skin, hair and body care products for children, women and men, mascaras, creams, lotions, shampoos, soaps, gels baths, creams and gels, cosmetics, perfumery, and cleansing tissues and goods in Class 05 such as medicinal cosmetics.

French company L'OREAL Societe Anonyme filed a request for invalidation. L'Oreal owns the word trade mark L'OREAL R-42203 registered with the earlier priority of 5 May 1960 for goods in Class 03 such as perfumery and cosmetics, toilet soaps, lipsticks, products for oral care, hair coloring agents, shampoos. The Company also owns the word-figurative trade mark L'OREAL STUDIO LINE R-65340 registered with the priority of 24 November 1988 for goods in Class 03. The French company argued that its trade marks are well-known and reputed. It presented a survey of consumers in the years 2001-2003, which proved the knowledge of the brand and consumer trust in the products. L'OREAL was the brand that has won numerous awards. The company argued that some of the goods are identical other are similar and raised an argument that the trade mark application was made in bad faith. The company relied on the judgment of the French court, which forbade the company that was created by Piotr Kasprzycki in France, the violations of trade marks and company name of L'Oreal, by the use of the name O'LEARY. L'OREAL also claimed the company created by Mr Kasprzycki was fictitious becuase its capital was 1 euro.

O'LEARY argued that its trade Mark Has Irish origins and the average consumer is reasonably well informed and reasonably observant and circumspect. O'LEARY admitted that L'Oreal is a strong and very distinguishable brand and the consumer who buys these cosmetics will not pay attention to the other cheaper products. O'LEARY noted that since the French court judgment has been appealed, so the case has not been finally decided. In its opinion, the proceedings in France is not relevant in the proceedings before the Polish Patent Office.

The Adjudicative Board of the PPO in its decision of 16 March 2010 case no. Sp. 251/08 invalidated the right of protection for the trade mark O'LEARY. The PPO ruled that O'LEARY is confusingly similar to L'OREAL. Piotr Kasprzycki PPH Eveline Cosmetics filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 12 April 2011 case file VI SA/Wa 1860/10 agreed with the PPO and dismissed the case. The judgment is not final yet. The cassation complaint can be brought before the Supreme Administrative Court.
Posted by: Tomasz Rychlicki @ 15.29
Tags: bad faith, famous trade marks, likelihood of confusion, reputed trade marks, similarity of goods, similarity of signs, trade mark invalidation, trademark law, Voivodeship Administrative Court, well known trade marks,
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