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Poland: distinctiveness of a vodka bottle

Here is another example of a problem with the trade mark portfolios of companies that were privatized in Poland after 1990. As some readers may already know, Polmos was state-owned monopoly, controlling the Polish market for spirits and other alcohols from middle '20s until 1990, when it was divided and privatized into several independent companies. 

On 23 March 2008 the Polish Patent Office granted the right of protection for the word-figurative 3D trade mark PŁ 1764 R-205770, which the Polish company Fabryka Wódek POLMOS ŁAŃCUT S.A, sought for goods in Class 33 such as vodka. The trade mark represents a glass bottle with a blade of grass put inside, and the crest on the bottle.

POLMOS BIAŁYSTOK S.A., the company that owned the word-figurative trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, registered with the earlier priority of 30 August 1985, for goods in Class 33, opposed the decision of the Patent Office to grant a right of protection. POLMOS BIAŁYSTOK claimed similarity of signs and identicality of goods. The Company argued that a blade of grass identifies its product's image, and the long-term presence on the market meant that the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081 created the belief among recipients of this type of goods that the alcoholic product with a grass motif came from POLMOS BIAŁYSTOK. The Company also claimed that its trade mark had a reputation and provided rich evidential material. This included certificates of quality and the market position of vodka sold in bottles with a blade of grass, market research results and reports confirming a strong position of trade marks owned by POLMOS BIAŁYSTOK, as well as articles published in specialized trade magazines. POLMOS BIAŁYSTOK claimed that POLMOS ŁAŃCUT acted in bad faith because its strategy and intention was to create and to file for the right of protection for a product that would look like the brand of "Żubrówka" vodka, by giving it a full set of protected characteristics of the trade mark POLMOS ŻUBRÓWKA BISON BRAND VODKA R-62081, and this situation happened long before the filing date of the challenged sign.

The Adjudicative Board of the Polish Patent Office dismissed the request and decided that the comparision of POLMOS ŻUBRÓWKA BISON BRAND VODKA and PŁ 1764 trade marks gave no similarities. The blade of grass inside a bottle may give potential customers certain associations that it is a vodka based on wisent grass. The PPO relied on the provisions of § 3 of the Minister of Agriculture and Rural Development of 25 January 2007 on the definition of requirements for certain spirit drinks with geographical indications relating to the Polish territory, which specifies requirements for a spirit drink "Herbal Vodka from the North Podlasie Lowland aromatised with an extract of wisent grass. The PPO decided that the vodka producers could use the trade marks containing a blade of grass to indicate the type of vodka and ruled that these signs were examples of commonly used vodka bottles that were sold in the 80s and 90s of the previous century. Such bottles are also present in considerable numbers in the Polish market. Thus, these signs per se do not possess distinctive characteristics.

The Adjudicative Board added that legal commentators emphasized that the packaging of a product is now deemed as a "silent salesman", and its appearance affects consumer decisions. Distinctive and visually appealing packaging may cause the client to choose the particular product. The PPO cited K. Jasińska, Naśladownictwo opakowań produktów markowych w świetle prawa własności intelektualnej (in English: Imitation of packagings of branded products in the light of intellectual property rights), Warszawa 2010. The PPO found these arguments relevant to the package created by POLMOS ŁAŃCUT which, in PPO's opinion differs from other packages available on the market. POLMOS BIAŁYSTOK filed a complaint against this decision. 

The Voivodeship Administrative Court (VAC) on 24 August 2011 in case file VI SA/Wa 1242/11 reversed the contested decision and ruled it unenforceable. It decided that the analysis of similarity between the signs including its reputation in this case was not exhaustive. The PPO did not consider the dominant elements that draw the attention of the buyer. Although the PPO stated that the compared trade marks were 3D signs, the examination of these elements was reduced to comparison of packages only, i.e. bottles. Although the PPO stated that, in principle, the visual aspect of a 3D sign is the shape of package and its content, these two issues (the shape and contents) were separated in the analysis carried out in this case. The Court found that the long-term existence of the characteristic element of 3D signs owned by Polmos Bialystok that were intended for designating vodka products and alcoholic beverages -- a blade of grass placed in a simple, transparent bottle --  as a whole can easily sink into the minds of customers and build the strength that distinguishes this kind of packagings.

The Court pointed out that POLMOS BIAŁYSTOK provided evidence that the original żubrówka can be recognized by a wisent grass blade in the bottle. This would mean that for consumers, contrary to the assessment of the PPO, this 3D element constitutes the dominant part of the trade mark, and it can also influence the perception of the trade mark reputation and the need for protection against dilution. The VAC noted that this case involved more than 20-year presence in the market of a bottle with a grass inside, which was associated with POLMOS BIAŁYSTOK. However, where the package is transparent, placing a characteristic element inside of the packaging, determines distinctiveness of the whole sign, e.g. two similar bottles. The distinctive 3D form – a blade of grass in the bottle increases the message of each of the word trade marks, brings more originality to signs that are protected for over 20 years. There was no doubt that the floating grass in the bottle is the original message that distinguishes the goods of POLMOS BIAŁYSTOK, and is attributed to the origin of goods produced by this particular company. It was impossible to overlook the fact that consumers are seeing a bottle with a characteristic blade of grass, which is associated by them not only with wisent vodka, but they also have a guarantee that this is the original product whose reputation was proved by complex evidence. This means that customers choose a product, guided by the attractiveness of its form, because they "see" in this product a trade mark that originates from POLMOS BIAŁYSTOK, whose quality is known to them. The fact is that all signs have a distinctive element. The Polish Patent Office erred by not attaching any importance to it, despite the fact that POLMOS BIAŁYSTOK was the first company that introduced to market a product with such a distinctive element: a long blade of visent grass. 

 See also "Poland: dissimilarity of 3D trade marks".
Posted by: Tomasz Rychlicki @ 09.11
Tags: Poland, 3D marks, opposition,
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