Nice Classification must be used only as auxiliary tool

The Warsaw District Administrative Court has held that the Nice Classification must be used only as an auxiliary tool to decide whether goods are similar (Case VI SA/Wa 517/08, June 6 2008).

Krzysztof Moska owns the registered trademark PRYMUS (Registration 144135) for goods and services in Classes 1, 2, 4, 16, 17, 19, 35 and 39. Hirsch-Pol Sp zoo filed an action before the Polish Patent Office for the partial cancellation of the trademark PRYMUS based on its earlier registered trademark PRYMUS (Registration 136008) for goods in Class 2.

The Patent Office dismissed the action. Hirsch-Pol appealed to the Warsaw District Administrative Court. The court overturned the decision, holding that:

the office had failed to establish the scope of protection of the earlier PRYMUS mark; and
the Nice Classification is only an auxiliary tool to decide whether goods are similar.

Following the judgment of the court, the office removed Moska's trademark from the register for certain classes. Moska appealed to the Warsaw District Administrative Court, claiming violation of:

the rules of administrative procedure; and
the principle of certainty and confidence in governmental bodies.

The court held that:

Moska's trademark was likely to cause confusion among consumers; and
its previous conclusion with regard to the role of the Nice Classification was correct.

The decision is in accordance with Article 2(1) of the Nice Agreement, which reads as follows:

"Subject to the requirements prescribed by this agreement, the effect of the classification shall be that attributed to it by each country of the special union. In particular, the classification shall not bind the countries of the special union in respect of either the evaluation of the extent of the protection afforded to any given mark or the recognition of service marks."

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw

Nice Classification must be used only as auxiliary tool

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