Court considers whether geographical name can function as mark for wine

Poland
In a case involving an application for the registration of the mark VARNA, the Supreme Administrative Court has ruled in favour of applicant BWS Polska Sp zoo and sent the case back to the District Administrative Court for re-examination (Case II GSK 691/09, July 13 2010).  

On October 14 2002 BWS Polska, an importer and distributor of wine on the Polish market, filed an application with the Polish Patent Office for the registration of the word mark VARNA for wine in Class 33 of the Nice Classification. The Patent Office refused to register the mark under Articles 129(2)(2), 131(1)(2) and 131(3) of the Law on Industrial Property, finding that the mark VARNA was the geographical name of a Bulgarian town located in a region that is famous for the production of high-quality white wines. According to the office, the mark VARNA would provide information only about the place of origin of the wine, and not about any other essential features of the goods, thus limiting the right of BWS Polska's competitors to indicate the geographical origin of their products. This would be contrary to the principle of the merchant's honesty. The office stressed that, pursuant to Article 131(3) of the law, a trademark incorporating geographical elements that are inconsistent with the origin of the products shall be regarded as misleading. Here, BWS Polska imported wine not only from Bulgaria, but also from other countries, such as Romania, Spain and Hungary.
 
BWS Polska subsequently limited the specification of the goods to “wines originating from Bulgaria” and filed a request for the re-examination of the case. It also indicated that a number of trademarks including the names of Polish and foreign localities had been registered by the Patent Office.
 
The office, after re-examination of the matter, withdrew its finding that the mark infringed the merchant's honesty principle and was misleading. However, it upheld the contested decision, maintaining that the mark was not distinctive because it indicated the origin of the goods.
 
BWS Polska lodged a complaint with the District Administrative Court. It argued that the Patent Office had not taken a clear standpoint as to whether the designation 'Varna' indicated that the goods originated from a locality named Varna or from Bulgaria as a whole. The applicant also indicated that it was the owner of the trademark MELNIK, which the Patent Office had registered in Class 33 despite the fact that it is also the name of a Bulgarian locality.
 
The District Administrative Court dismissed the complaint, agreeing with the office that ordinary consumers of the goods at issue would perceive the mark VARNA as indicating the origin of the goods - namely, Bulgaria or the region where Varna is located. The average consumer would thus perceive the mark as a descriptive designation of origin, rather than a trademark. The court pointed out that a geographical designation may be registered as a trademark only if:
  • it is not famous in connection with the production of the products at issue; and
  • it can be assumed that it will not be associated with the goods at issue in the future.
The applicant lodged a cassation complaint with the Supreme Administrative Court. The Supreme Administrative Court found that the lower court had omitted to take into account the fact that the word 'Varna' does not exist in the Polish language as the name of a town in Bulgaria. The spelling 'Varna' did not exist in Bulgarian either. In the Polish language, the Bulgarian town at issue is spelled 'Warna'. However, the Supreme Administrative Court found that “it was unquestionable that the designation Varna constitutes the name of a town in Bulgaria” and that, “if the name is affixed to the goods (wines originating from Bulgaria), no special effort or additional action would be needed to indicate the origin of those goods in the relevant circles of customers”.
 
The Supreme Administrative Court further found that the lower court should have assessed whether the VARNA mark, due to its unusual spelling ('V' instead of 'W'), had distinctive character, despite the fact that the letters 'V' and 'W' are pronounced in the same way in Polish. In addition, the Supreme Administrative Court held that the lower court had failed to make an overall evaluation of the distinctive features of the mark. BWS Polska had also argued that the Patent Office had previously allowed the registration of town names as trademarks - for example, MERLOT (a town in Bulgaria), CALAMA (Chile) and BEVERLY HILLS (California). However, the lower court did not address this argument.
 
The Supreme Administrative Court thus reversed the decision of the District Administrative Court and ordered that the case be sent back to it for re-examination.
  
Anna Zakrocka, Patpol - Patent & Trademark Attorneys, Warsaw

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