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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: proving the fame of a trade mark

The Polish Supreme Administrative Court in its recent judgment of 9 May 2008, act signature II GSK 506/07, gave an interpretation and clarified what is a famous (reputed, renown) trade mark.

This case concerned a cassation complaint brought from the judgment of the District Administrative Court in Warsaw of 4 September 2007, act signature VI SA/Wa 2195/06, regarding a decision of the Polish Patent Office in case of BOSS LIGHTS trade mark R-136520. Reemtsma Cigarettenfabriken GmbH from Hamburg had registered this trade mark in class 34 for goods such as tobacco, tobacco products, smokers' articles, cigarettes, cigarillos, matches. The owner of the following trade marks: BOSS R-66417, registered for goods in classes 9, 14, 18, 25 and 28, HUGO BOSS R-66418, registered for goods in classes 9, 14, 18, 25 and 34, BOSS HUGO BOSS R-156696, registered for goods in class 34 and word-figurative mark BOSS R-82792 filed before the Polish Patent Office a request for cancellation of the right of protection to BOSS LIGHTS trade mark. The PPO found that there was a likelihood of consumer confusion with reference to the origin of goods in the market turnover. The PPO also held that the registration of the BOSS LIGHTS trade mark violated the prior rights of HUGO BOSS Trade Mark Management GmbH & Co. KG, including its company name.

HB Reemtsma Cigarettenfabriken appealed to the District Administrative Court in Warsaw. The Court sided with the PPO's decision. Reemtsma Cigarettenfabriken referred to the last instance and it has filed a cassation complaint before the Polish Supreme Administrative Court. However, The SAC agreed with the court of first instance findings that famous trade mark has a reputation and that, besides its recognition, it must also be 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.

Judgment of the Supreme Administrative Court of 8 May 2008, act signature II GSK 506/07 (the text of this judgment is provided in the Polish language).

Posted by: Tomasz Rychlicki @ 10.58
Tags: Famous marks, Poland, Polish Supreme Administrative Court,
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