Later trademark does not automatically infringe earlier company name

In Trilux-Lenze GmbH v Proelco SA (Case VI SA/Wa 1158/06, August 21 2006), the Polish Highest Administrative Court has ruled that the registration of a trademark which is identical or very similar to an earlier company name does not automatically constitute an infringement.

The plaintiff, German company Trilux-Lenze GmbH, owns a number of Polish trademark registrations, including the figurative trademark TRILUX filed in Poland as early as April 6 1960 and a TRILUX word mark filed on November 29 1990. The latter mark covers various goods such as magnetic cards, cards with memory or a microprocessor and electronic translators. Both marks remain in force.

The defendant, Polish company Proelco SA, successfully registered the figurative trademark TRILUX in 2002. The list of goods in the registration includes, among other things, magnetic cards, cards with memory or a microprocessor and electronic translators. Proelco produces various electronic products under the TRILUX mark, including television sets.

Trilux-Lenze filed for partial cancellation of Proelco's mark in relation to magnetic cards, cards with memory or a microprocessor and electronic translators, arguing that these goods are the same as those covered by its own TRILUX mark. In Poland, cancellation proceedings are handled by the Polish Patent Office with appeal to the District Administrative Court in Warsaw and second level appeal to the Highest Administrative Court.

The Patent Office partially cancelled Proelco's figurative TRILUX mark. However, it did not base its decision on similarity of goods, but on the grounds that Proelco's TRILUX mark infringed Trilux-Lenze's rights in its company name. Proelco appealed to the District Administrative Court in Warsaw, which upheld the Patent Office decision. Proelco next appealed to the Highest Administrative Court, which overruled the earlier decisions and sent the case to the District Administrative Court for rehearing.

The Highest Administrative Court has not yet issued a full written decision, but it has released the following oral reasons, among others, for its judgment:

• Registration of a trademark which is identical or very similar to an earlier company name does not automatically constitute an infringement;
  
  
• Exclusive use of a company name is not absolute, but is limited to territorial and actual scope of activity; and
  
  
• If the fields of activity of the parties are different or the company name is not renowned and consumers are not likely to be confused, then there is no risk of infringement from a later trademark.

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