Distinctiveness must be assessed in relation to ordinary course of trade

The Voivodeship Administrative Court in Warsaw has annulled a decision of the Polish Patent Office in a case involving the trademark LAURINA (Case file VI SA/Wa 86/11, April 8 2011).

The Polish Patent Office had dismissed a request for the invalidation of the word mark LAURINA (Registration 186513), which was registered in Class 31 of the Nice Classification for goods such as dwarf yellow pod common bean, fresh dwarf bean and yellow pod bean seeds. The applicant for invalidation filed a complaint against this decision.

The applicant argued that the mark did not have sufficient distinctive character because 'Laurina' is the name of a common bean variety that is present in the National Register. The applicant submitted that the names of plant varieties are used to distinguish the plants themselves, not to denote the fact that they originate from specific growers or producers.

More importantly, the applicant argued that new names for plant varieties can be protected only by growers under the provisions of the Polish Act of June 26 2003 on the Legal Protection of Plant Varieties. The variety at issue in this case was not subject to such protection, and the applicant pointed out that many manufacturers market their seeds under the name Laurina.

The Voivodeship Administrative Court annulled the decision of the Patent Office, holding that it was unenforceable. The court ruled that the distinctiveness of a word mark must be assessed primarily by reference to the goods for which it is registered. The informational or descriptive nature of a mark demonstrates a lack of concrete distinctiveness. The court also held that the distinctiveness of a word mark must be assessed in relation to the "ordinary course of business/trade", taking into account the perception of the average consumer.

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw  

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