Letter of consent insufficient to obtain registration

The Voivodeship Administrative Court has upheld a decision of the Polish Patent Office in a case involving the trademark TCHERGA - ZYJ KOLOROWO (Case file VI SA/Wa 1104/10, January 12 2011).
Domain Menada Sp zoo applied to register the word mark TCHERGA - ZYJ KOLOROWO for goods in Class 33 of the Nice Classification, including alcoholic beverages (except beers). The Patent Office refused to grant the right of protection on the grounds that the mark was confusingly similar to the earlier trademark TCHERGA (International Registration 0829406), owned by Bulgarian company Droujestvo S Ogranitchena Otgovornnost BELVEDERE Capital Management.
Domain Menada pointed out that it was controlled by the Bulgarian company and that both companies formed a homogeneous capital group. It was in the interest of both parties to grant a right of protection for the mark at issue to Domain Menada, as evidenced by a letter of consent signed by the Bulgarian company. Domain Menada argued that the same evidence had been submitted for the registration of the trademark TCHERGA CRAZY FOR COLOUR (Registration 196255) - in that case, the Patent Office had accepted to grant a right of protection.
The Patent Office noted that the relationship between two companies can only serve as a basis to grant a licence to use a mark. Polish law does not provide for the possibility of obtaining a letter of consent from the owner of a trademark that is still in force. However, the Industrial Property law introduced limited rules on letters of consent: it is possible to obtain a letter of consent from the owner of an earlier registered mark where the trademark applied for is identical, or similar to, the earlier mark and covers identical or similar goods, if the registration of the earlier mark has expired.
In the present case, the Patent Office noted that the mark TCHERGA CRAZY FOR COLOUR was registered before the Supreme Administrative Court rendered its judgment in Case file II GSK 279/07. In that case, the court had held that a letter of consent cannot be used to obtain the registration of a trademark, since Poland did not implement Article 4(5) of the First Trademarks Directive (89/104/EEC). Domain Menada filed a complaint against this decision.
The Voivodeship Administrative Court dismissed the complaint, holding that financial, organisational or personal links between companies cannot serve as the basis for granting a right of protection for a trademark.
Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw  

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