Reputation of mark abroad irrelevant to assessment of reputation in Poland

The Supreme Administrative Court has confirmed that the reputation of a trademark in another country is irrelevant to the assessment of its reputation in Poland. Nonetheless, the circumstances in which the trademark is used abroad may have an indirect impact on the awareness of the mark among Polish consumers (Case File II GSK 727/10, August 30 2011).
On March 10 2004 Tiffany & Co (New York, United States) filed a request with the Polish Patent Office for the cancellation of the figurative trademark TIFFANY & BROADWAY INC (right of protection R-128064), alleging that its trademark TIFFANY was well known in Poland. The TIFFANY & BROADWAY INC mark was applied for on July 18 1995 and registered on February 21 2001 for “footwear” in Class 25 of the Nice Classification in the name of Tiffany & Broadway Inc (Houston, United States).
Tiffany & Co claimed that the trademark TIFFANY had a reputation and was commonly known among Polish consumers, and was used for luxury goods, such as “jewellery, precious stones, silver and other quality goods”. Therefore, use of the TIFFANY mark by Tiffany & Broadway for “footwear” constituted parasitic exploitation and generated undue financial benefits. 
The Patent Office accepted these arguments and, on March 19 2007, cancelled the trademark TIFFANY & BROADWAY INC. Tiffany & Broadway filed a complaint with the District Administrative Court in Warsaw, which, in a judgment of July 24 2008, upheld the Patent Office’s decision (Case File VI SA/Wa 238/08). The court stated that the office had correctly cancelled the mark under Article 8(1) of the Law on Trademarks of January 31 1985. In the grounds of the decision, the court argued that Article 8(1) prohibits the registration of a mark if the applicant intends to exploit the reputation of a third-party trademark in a parasitic way.
Tiffany & Broadway lodged a cassation complaint with the Supreme Administrative Court. In a judgment of July 8 2009, the Supreme Administrative Court reversed the lower court's decision and referred the case back for re-examination (Case File II GSK 1110/08).
In particular, the Supreme Administrative Court found that the cassation complaint was justified, as some of the facts and circumstances surrounding the reputation of the TIFFANY mark had not been clarified and, consequently, it could not be assumed that the mark was well known. The court disagreed with the view that the reputation of a trademark - which includes its attractiveness, advertising value and the positive associations evoked by the mark among customers - has a cross-border nature. In contrast, the reputation of a trademark must be examined in relation to the country at issue. The Patent Office had omitted to examine which part of the evidence presented by Tiffany & Co demonstrated that the TIFFANY mark had acquired an international reputation which extended to Poland prior to the application for the registration of TIFFANY & BROADWAY INC. According to the Supreme Court, one could not assume that TIFFANY is well known in Poland only because it is known internationally (the term 'international' being too general to specify the territorial extension of the reputation). The Supreme Court also noted that Tiffany & Co does not engage in business activities in Poland under the TIFFANY mark. 
After re-examining the matter, the District Administrative Court, in a judgment of January 26 2010, reversed the decision of the Patent Office, finding that it had been issued in breach of the procedural law (Case File VI SA/Wa 1885/09).
Tiffany & Co filed another cassation appeal with the Supreme Administrative Court. The case was examined at a hearing on August 30 2011 and resulted in the dismissal of the complaint. According to the Supreme Administrative Court, the judgment of the district court - which had reversed the Patent Office's decision and ordered the re-examination of the case - was correct. An administrative court cannot substitute itself to the Patent Office in relation to evidentiary findings.
Both the District Administrative Court and the Supreme Administrative Court stressed that it was necessary to assess whether the TIFFANY mark was well known among consumers on the Polish market. Moreover, the fact that the TIFFANY mark is used in many jewellery and clothing stores, hairdresser’s salons, as well as bars, restaurants and hotels in Poland, had to be taken into consideration.
As can be inferred from the decisions of the courts, the international reputation of a mark is irrelevant to the assessment of its reputation in Poland. However, in the present case, the circumstances surrounding the use of the TIFFANY mark abroad (ie, in the United States) could have an indirect impact on the awareness of the mark in Poland and, therefore, it was essential to take these circumstances into account. The District Administrative Court clearly indicated that all the relevant circumstances had to be taken into consideration. However, it is obvious that use of the TIFFANY mark in the United States would have a lesser impact on its reputation in Poland than use on the Polish market.  

Slawomira Piotrowska, Patpol - Patent & Trademark Attorneys, Warsaw

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