'Folk Oscars' dispute: and the Oscar goes to...

Since 1929 'Academy Awards of Merit' are given annually by the Academy of Motion Picture and Sciences for cinematic achievements. The awards are officially known as 'Oscars' and, although they mostly concern US cinematography, nowadays they are recognised as the most prestigious cinematic awards in the world.

The Oscar statuette represents a knight holding a crusader’s sword, standing on a reel of film featuring five spokes, signifying the five original branches of the Academy: actors, directors, producers, technicians and writers. There are several legends regarding the origins of the name Oscar. According to one of them, a famous actress - Bette Davis - named the Oscar after her first husband, Harmon Oscar Nelson. According to another, one of the executive secretaries of the academy said that it reminded her of her 'Uncle Oscar'. Regardless of its origins, the fact is that the name Oscar has been accepted and is commonly used.

Therefore, unsurprisingly, the academy has sought to protect the rights in the name Oscar, which is recognised all over the world. The academy registered the name Oscar as:

• Polish word marks (Registration No 69501 in Classes 16 and 41, and No 93517 in Class 9); and
• a Community trademark (No 002931038 in Class 41).

The statuette itself has obtained protection in Poland under Registration No 93517 in Classes 16 and 41, and as a Community trademark under No 002270817.

In Poland, a contest for the most interesting folk event has been organised since 2002. The purpose of this contest is to promote Polish culture and folk art. At first it was a local event, but it is now known in the whole country. The winners are awarded a 'Ludowe Oskary' statuette ('folk oscars' in English), which represents a seated Pensive Christ.

According to the Association of Folk Creators (one of the organisers of this event), the statuette was named after famous ethnographer Oskar Kolber, who was an eminent researcher of Polish folk culture, and was the first to collect and organise knowledge regarding Polish folk works on a regional basis.

The name Ludowe Oskary then became the subject of infringement proceedings, which have been pending since February 2012. The Academy of Motion Picture and Sciences claimed that the name of the Polish award infringed the rights deriving from the prior OSCAR trademark registrations, and demanded that the award’s name be changed. According to the academy, the name Ludowe Oskary not only takes advantages of the renown of the OSCAR trademark, but also dilutes it. The Association of Folk Creators is accused of “preying” on the reputation of the academy, achieved over many years.

The academy also claimed that, even though the letter 'C' has been replaced by the letter 'K' in the word 'Oskary', this does not change the overall impression of the word. Similarly, the presence of the additional word 'Ludowe' does not change the overall impression of the name Ludowe Oskary, as the word 'Oskary' is the dominant element. 

The defendant contested these accusations, arguing that the visual impression of the conflicting awards was different. In order to keep the name of the award (which is now over 10 years old), the association suggested to change its name to 'Oskar Kolberg Award'. However, so far the parties have failed to reach an agreement. The next hearing in this matter is scheduled for October 2013.

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