Decision has implications for English-language marks in Poland
The administrative courts in Poland have, in the past, claimed that the population’s command of the English language is good or improving, however previously they gave no statistics on how many people were advanced or proficient. That has now changed with a recent judgment.
In October 2019 the applicant filed for the word mark, CANNABI OIL, for various goods in Class 5, generally related to dietary supplements. In May 2020, the Polish Patent Office (PPO) refused to grant protection, taking the view that the trademark would be perceived by consumers as an informative and descriptive sign, particularly as it is composed only of word elements that have specific meanings in English.
The PPO deliberated that the word element ‘cannabi’ is based on the Latin word ‘cannabis’, which is also a common English word. Both ‘cannabis’ and ‘oil’ are commonly used and well known in Poland, and would be understood by the average consumer. The mere removal of the last letter does not make it a fanciful word.
Determining whether the two words would be understood by the average consumer, the PPO referred to research by Education First. That showed that the high-level proficiency index for Poland is 62.45%, which amounts to almost 24 million people. On that basis, the office concluded that a significant portion of the public would understand the words.
The applicant did not agree with the decision and appealed it to the Voivodeship Administrative Court (VAC), which annulled it. The VAC pointed out that the descriptive character of a sign occurs only when it directly, and without the need to formulate complicated chains of reasoning, connects a word with a given feature. Even though the English language is commonly taught and frequently used in Poland (with many English words having infiltrated the language), one cannot successfully defend the thesis that every English word is perceived this way in Polish society. The court underlined that this is especially true of rarely used or specialised words such as cannabis.
Additionally, the VAC argued that the first word of the mark applied for, ‘cannabi’, did not correspond to the original English term for cannabis because it lacked the letter ‘s’. According to the VAC, if a consumer who was fluent in English was to understand the sign to mean cannabis, it would have to contain all the letters and not merely a part of the word. The VAC indicated that this was a foreign-language neologism with a non-obvious level of semantic recognition. Equating the word sign cannabi with the fragment of the Polish word ‘konopn’ and assigning the latter a meaning identical to the entire word ‘konopny’, (ie, the same relationship between cannabi and cannabis) is unacceptable because it seems to be arbitrary.
Moreover, the VAC highlighted that the PPO assumes that Polish consumers not only know the English language but also the rules of word formation and understanding of neologisms. In the opinion of the VAC, this conclusion does not reflect the reality and the evidence. It held that the statistical data cited by the PPO was insufficient in this respect, because it did not present sufficient detail of the level of proficiency.
The PPO did not agree with the judgment of the VAC and filed a cassation appeal to the Supreme Administrative Court, which has now annulled its judgment of the first instance (GSK 1216/21).
In the Supreme Administrative Court's view, it is the PPO’s responsibility to explain in detail the meaning of the words used in the trademark at issue. Moreover, it should explain how such words will be read by the relevant public, which it succeeded in doing here with an extensive and comprehensive explanation. The trademark at issue is a neologism, which was correctly noticed and assessed by the PPO.
In the opinion of the Supreme Administrative Court, the PPO correctly concluded that the statistical data of an independent organisation is sufficient to state that the words ‘cannabis’ and ‘oil’ will be understood by the public. Even assuming that an individual would need to be proficient in English to understand these words, based on the statistical data cited by the PPO at least 62.45% of the population would understand the meaning.
The PPO had also referred to the media controversy surrounding medical marihuana, which has caused the terms 'hemp oil' and 'cannabis oil' to become particularly well known in recent years. It therefore correctly argued that even an assumption that the word cannabis is not frequently used does not warrant an assumption that the average consumer does not understand it. Removing the letter ‘s’ from cannabis was deemed so insignificant that it would not cause the average recipient to consider it a different word.
The Supreme Administrative Court emphasised that the PPO was correct in pointing out that average consumers of nutritional preparations or dietary supplements are accustomed to the packaging of products bearing foreign names. Additionally, the economic globalisation justifies the view that a restrictive assessment of foreign language signs is necessary where, after translation, the sign appears to be descriptive (9 December 2011, II GSK 1346/10).
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