Decision clarifies registrability criteria for marks that are borderline descriptive


The Supreme Administrative Court has dismissed a cassation appeal in a case involving an application for the registration of the device mark HIGROSTEROWANIE. The decision shows that a trademark which consists of a combination of words, but does not appear in any dictionary, will not always be considered to be fanciful and therefore, may not obtain trademark protection.

On September 8 2010 the District Administrative Court found that the word and device mark HIGROSTEROWANIE (which can be translated as 'higrocontrol'), written in bold and on a wavy line, did not fulfil the registration requirements for goods in Classes 5, 9 and 11 of the Nice Classification, and only partially fulfilled the requirements for services in Class 35:

Pursuant to Article 129 of the Act of June 30 2000 on Industrial Property Law, a designation which consists exclusively or mainly of elements which may serve in trade to designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or use of the goods is devoid of distinctive character. Moreover, a trademark cannot serve a descriptive and informative purpose.

The court stated that there was a sufficient direct and specific relationship between the HIGROSTEROWANIE mark and the goods and services for which registration was sought such that the relevant public would “recognise immediately and without a doubt that it describes these goods and services or one of their features” (see the decisions of the General Court of the European Union in Joined Cases T-64/07 and T-66/07 and Joined Cases T-200/07 and T-202/07).

In the present case, the court shared the view of the Polish Patent Office that the HIGROSTEROWANIE mark consisted of the stem 'sterowanie' ('control') and the prefix 'higro', which, in combination with other words, refers to moisture. In the opinion of the court, the mark lacked distinctiveness in reference to the following goods:

  • vacuum cleaners, vacuum instrumentation, machinery and equipment to purify air from dust in buildings (Class 7);
  • measuring devices, temperature probes, transducers measuring humidity and temperature, temperature recorders, air analysis apparatus (Class 9);
  • ventilation systems, air filtration systems and air conditioning, air lifts, air flow regulators, diffusers, apparatus for ventilating, air conditioners, heaters (Class 11); and
  • ventilation, air conditioning and air administration services (Class 35).

During the examination of the goods and services listed in the application, the Patent Office had found that the goods in Classes 7, 9 and 11 can have a capacity to regulate the moisture in the air, because moisture-regulating features can be found in different types of ventilation, air-conditioning and air purifying devices, as well as in measuring instruments related to these devices.

The owner of the trademark argued that the word 'higrosterowanie' did not appear in any dictionary. However, the court stated that the mere fact that a word cannot be found in dictionaries does not imply that the mark is fanciful. In this case, the court recognised that the designation 'higrosterowanie' simply means "to control the moisture of the air" and, therefore, has an informative character. According to the court, “combining two elements in one word does not automatically create a fanciful word". The mark at issue had "a descriptive value which directly informed the recipients of the features and purpose of the goods, and this was the only way the mark could be perceived by an average consumer purchasing the product. The fact that the word or expression at issue was not listed in any dictionary had no impact on the evaluation of the mark.”

Additionally, the court stated that, during the evaluation of the distinctiveness of the mark, one should take into account both:

  • its relationship with the goods and services listed in the application; and
  • the way in which it will be perceived by the target recipients.

The court also considered the interest of other entities operating in the same business field. The court recognised that, if the application at issue was granted, other participants in the same field would not be allowed to use this designation, which has descriptive and informative character.

At the same time, the court stated that the mark could be considered to be fanciful and, therefore, had sufficient distinctive character with regard to advertising services, assistance in the management of companies, management of companies, organisation of business networks, and organisation of exhibitions, fairs and forums for advertising.

The Supreme Administrative Court agreed with the lower court and, on February 29 2012, dismissed the cassation appeal lodged by the trademark owner.

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

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