Court considers whether use of mark in separate parts constitutes genuine use

Filing an application for the registration of a trademark and obtaining protection does not mean that the mark is safe. Under Polish law, the right of protection for a trademark shall lapse if the mark is not put to genuine use in respect of the goods/services for which it was registered within a period of five consecutive years from the date of registration, unless there are special circumstances justifying non-use.

In order to keep up with changes on the market and satisfy marketing needs, trademark owners frequently use their marks in forms which may differ from the form in which they were registered. However, if the form used by the trademark owner differs too much from that covered by the registration, there is a risk that third parties may start an action for lapse on the grounds of non-use.       

According to the doctrine and case law, a trademark owner may use the mark in a form differing in elements which do not alter the distinctive character of the mark as registered. Therefore, only those elements that do not change the distinctive character or representation of the mark as a whole can be modified (see judgment of the Supreme Administrative Court of October 3 2011, Case file No II GSK 839/10). 

This issue was the subject of a Supreme Administrative Court judgment dated January 31 2012. The matter concerned a trademark which was registered as TRANSPAK COOK WITH A GOOD TASTE (TRANSPAK was the house mark, while the phrase 'Cook with a good taste' was an advertising slogan). However, the trademark owner did not use it in the form as registered. The trademark, which was used on, among other things, packaging for spices, was divided into two parts: the slogan 'Cook with a good taste' was used on the front of the packaging, while the mark TRANSPAK was written on the back.

The complaining party argued that, by displaying the two elements separately on either side of the packaging, the trademark owner had broken the integrity of the mark as a whole. The two elements would not be perceived as an integral part of the same mark and could not function as a single trademark.

The Adjudication Board of the Patent Office disagreed, ruling that use of the mark in two separate parts still maintained the integrity of the mark, regardless of where these parts appeared on the packaging. Therefore, the mark was able to perform the functions a trademark (ie, guarantee of origin, advertising and investment).

The District Administrative Court shared the Patent Office’s standpoint, finding that graphic elements can be added to a word mark, and that the function of guaranteeing the origin of the goods had been maintained in this case.

The complaining party filed a cassation appeal with the Supreme Administrative Court, which found that evidentiary proceedings had not been conducted properly. The following factors should have been examined:

• the characteristics of the target consumers of the goods covered by the mark and, in particular, their low level of attention when buying the goods;
• the way in which the target consumers will perceive the designation at issue - namely, whether the consumers will perceive the terms 'Transpak' and 'Cook with a good taste' as one designation or two separate designations with different functions (ie, TRANSPAK being the basic trademark, with 'Cook with a good taste' being an advertising slogan);
• the distinctive character of the trademark as a whole, as well as the distinctive character of its constitutive elements on their own;
• whether the distinctive character of the mark had been changed due to the fact that the mark was divided into two parts, placed on different sides of the packaging; and
• whether the function of the mark and the way in which it was perceived by consumers had been changed due to the fact that the mark was divided into two parts.

The court stressed that the aforementioned circumstances must be examined from the perspective of ordinary consumers.

The Supreme Administrative Court dismissed the judgment of the District Administrative Court and returned the case to the lower court for re-examination. The latter was bound by the interpretation of law made by the Supreme Court.

On May 23 2012 the District Administrative Court found that the complaint was justified and returned the case to the Patent Office for re-examination. The court ordered that the Patent Office carry out the evidentiary proceedings in the manner described by the Supreme Court.

Izabella Dudek-Urbanowicz, Patpol - Patent & Trademark Attorneys, Warsaw