Hortex harvests the fruit of its mark's fame in invalidation case

In Hortex Holding Ltd v Hortino Ltd (Case 6 II SA 2481/03, December 23 2004), the Warsaw Administrative Court has upheld the Polish Patent Office's (PO) decision to strike from the register the mark HORTINO on the basis of its confusing similarity with the earlier, well-known HORTEX mark for the same products.

Hortex, whose name comes from the Latin hortus, meaning 'garden', was founded in the late 1950s as an agricultural cooperative. It later developed into a large producer of fruit, fruit juices and concentrates, ice creams, and fresh and frozen vegetables. The HORTEX mark is well known in Poland and its value is estimated at some $100 million.

In 1997 Hortex was taken over by Hortex Holding Ltd, which is 92%-owned by Bank of America. In 2000 Hortex Holding sold the group's most profitable operation, which is based in Lezajsk, eastern Poland, to Hortino Ltd, a newly created company. The contract stipulated that sale of the Lezajsk operation excluded the name of the company and any right to the HORTEX trademark.

In 2001 Hortino obtained a registration for the mark HORTINO. Eight months later Hortex Holding applied to the PO for invalidation of the HORTINO mark on the basis that it is visually and phonetically similar to the HORTEX mark with which it shares the first four letters (ie, 'hort'). Hortex Holding claimed that (i) the similarity may mislead customers, and (ii) Hortino Ltd was exploiting the goodwill in the HORTEX mark.

The PO upheld these claims and struck HORTINO from the register. The PO found that HORTEX is a strong trademark and in such cases the risk of confusion is higher than where the mark is weak. The PO also found that both companies sell very similar products of every day use. The products are sold through the same channels, which increased the risk of confusion.

Hortino appealed to the Warsaw Administrative Court. However, the court upheld the PO's decision, finding that Hortino had acted contrary to good practices in business by registering the HORTINO mark, as this mark is similar to a well-known mark.

Hortino has appealed to the Highest Administrative Court.

Janusz Fiolka, Dr Janusz Fiolka Patent & Trademark Attorney, Krakow