Dishonest conduct does not necessarily indicate bad faith at time of application

The Supreme Administrative Court has dismissed a cassation appeal filed by well-known fashion company Kenzo Société Anonyme (Case II GSK 344/09, January 26 2010).

On September 7 2000 MGT Parfum Création (Hofheim-Wallau, Germany) applied to the Polish Patent Office to register the trademark EAU DE TOKYO for goods in Class 3 of the Nice Classification. The mark was registered on May 11 2004 (Registration 153843). Kenzo (France) filed a request for a declaration of invalidity of the mark, claiming that:
  • the registration was granted contrary to law and the principles of coexistence; and
  • MGT’s mark was confusingly similar to Kenzo's trademarks TOKYO BY KENZO and L'EAU PAR KENZO.
MGT did not respond to the correspondence on this matter, and there was no other known address for the company. In July 2008 the Warsaw District Administrative Court asked the president of the Chamber of Patent Attorneys to designate a curator for MGT. The curator refuted Kenzo's arguments, pointing out that the assessment of the likelihood of confusion should take into account only the marks as registered, and not the packaging of the goods.

The Patent Office ruled that EAU DE TOKYO was not similar to Kenzo’s marks. Use of the word 'eau' (French for 'water') in MGT's mark did not imply that the marks were similar, because the word (as part of the expression 'eau de toilette') was devoid of distinctive character when used in relation to perfume. The office also rejected Kenzo's argument that MGT sought to take advantage of the reputation of the KENZO mark. The office thus dismissed Kenzo's request for a declaration of invalidity. Kenzo appealed to the Warsaw District Administrative Court.

On November 27 2008 the court rejected the appeal (Case VI SA/Wa 1388/07). The court first held that the Patent Office was not obliged to take into account the reputation of the KENZO mark, as it had found that the marks were dissimilar. Further, the court disagreed with the argument that the marks gave rise to similar associations because they gave the impression that the goods sold under the marks came from Japan. According to the court, such conclusion would be too far-fetched. The court also pointed out that the Patent Office had properly assessed the likelihood of confusion of the marks.

Moreover, the court ruled that MGT's use of packaging that was confusingly similar to Kenzo's could give rise only to claims of unfair competition. The mere fact that a trademark owner engages in dishonest conduct does not necessarily imply that the trademark application has been failed in bad faith. The court acknowledged that MGT's actions (ie, the use of packaging similar to that of the L’eau par Kenzo perfume, as well as the use of the slogan “a kind of Kenzo perfume”) might not comply with the rules on fair competition. However, this was insufficient to conclude that, when MGT applied to register the mark in 2000, it intended to act dishonestly. Kenzo filed a cassation appeal.

The Supreme Administrative Court ruled that the Patent Office and the District Administrative Court had correctly found that, at the time of the application for the registration of EAU DE TOKYO, MGT had not acted in bad faith.

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw 

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