Consumers will pay greater attention to beginning of mark

The District Administrative Court has upheld a decision of the Polish Patent Office in which the latter had refused to grant a right of protection for the figurative trademark QUATRO PAK QUALITY PACKAGING (depicted below) for "paper; printed matter; teaching and instructional materials (except apparatus)" in Class 16 of the Nice Classification. The mark was held to be confusingly similar to two earlier QUATRO marks (an international and a Community trademark with earlier priority dates) which covered identical and similar goods in Class 16.

Despite the argumentation filed by the applicant, the Patent Office refused to grant a right of protection, and subsequently upheld its decision following a request for reconsideration of the matter. 

According to the Patent Office, based on an overall assessment of the mark applied for, the word 'quatro' was the dominant and most distinctive element of the mark, especially in light of the fact that the first letter 'Q' was written in red. The other word element, 'quality packaging', which was placed underneath the main element, undoubtedly constituted an integral part of the mark, but was devoid of distinctiveness, as it conveyed direct information about the quality and kind of services offered under the mark. 'Quality packaging' is a phrase that can be used by any manufacturer of high-quality packaging. Thus, the office concluded that the words 'quatro pak' written in block letters were the foreground elements of the mark, and that the word 'quatro' was dominant. 

The applicant filed a complaint against the Patent Office’s decision with the District Administrative Court. In the applicant's opinion, the essential part of the mark QUATRO PAK QUALITY PACKAGING was not the word 'quatro' itself, but the words 'quatro pak'. Therefore, a comparison of the trademark QUATRO PAK QUALITY PACKAGING with the cited word marks QUATRO could not lead to the conclusion that the marks were similar to the extent that they might mislead consumers as to the origin of goods or services.

Referring to the Patent Office’s argumentation, the applicant alleged that the phonetic, semantic and graphic features of the mark were crucial in its overall impression and would help distinguish the origin of the goods and services sold under the mark.

By a decision of October 3 2012 (Case file No VI SA/Wa 959/12), the District Administrative Court dismissed the complaint.

The court shared the Patent Office’s opinion that the goods covered by the parties' marks were unquestionably similar. The court then reviewed the Patent Office’s comparative analysis of the marks and decided that it was correct.

The court first stressed that the graphic features of the mark QUATRO PAK QUALITY PACKAGING were relatively weak, which had been correctly noted by the Patent Office. All the words were written in standard characters in the colour blue, with only one red letter, 'Q', in the first word element. Therefore, the graphic features of the mark were devoid of any fanciful character.    

The court further agreed with the Patent Office that consumers would pay greater attention to the first two words of the mark - 'quatro pak' - which were much larger than the remaining words. In addition, the word 'quatro', which is identical to the cited trademarks, is in first position in the trademark applied for. That word is clearly separated from the other elements, including the second word element 'pak', through the use of a different colour for the first letter. Thus, the word 'quatro' was dominant and was the most distinctive of the words making up the mark, and the Patent Office was correct in attributing the aforesaid features to the word 'quatro' in its evaluation of the similarity between the parties' marks. Consequently, the element 'quatro' was clearly in conflict with the cited marks, which consisted of the word element 'quatro'.

The court stressed that a finding that the word element of a figurative mark is dominant is justified by the assumption that words are more easily perceived and remembered and, therefore, are the most effective means of communication with the relevant consumers. However, this assumption is true only if the words convey information that is clear and understandable by an average consumer; the words must be relatively well-known and understandable by the relevant public (ie, Polish-language speakers).   

According to the court, it was obvious that the word 'quatro' has no clear and understandable meaning in Polish. Therefore, for the average Polish consumer, 'quatro' is an abstract word when used in relation to the goods for which registration was sought. Thus, the Patent Office was correct in finding that an average consumer in Poland was likely to be confused as to the origin of goods sold under the parties' marks, as those goods are not only similar, but are also commonly purchased and distributed through the same points of sale.   

Aleksandra Kryśka, Patpol - European and Polish Patent and Trademark Attorneys, Warsaw