Wine and vodka held to be dissimilar

The Supreme Administrative Court has held that wine and vodka are dissimilar (Case file II GSK 259/10, February 10 2011). 

Mariusz Lech Przedsiebiorstwo Produkcyjno-Handlowo-Uslugowe Lech-Pol from Lask, Poland, requested that the Polish Patent Office invalidate the registration of the word mark LECH WÓDKA (Registration 145285), which was registered by Fabryka Wódek Polmos Lancut SA for alcoholic beverages in Class 33 of the Nice Classification (vodka). Lech-Pol argued that the mark was confusingly similar to its figurative mark LECH-POL (Registration 132854) and its word mark MARIUSZ LECH (Registration 113305), which are both registered for good in Class 33, including alcoholic beverages. The Patent Office dismissed the request, noting that Lech-Pol's marks were not genuinely used for all relevant goods.

In 2007 the Patent Office decided on the lapse of the registration of both trademarks with regard to all the goods, except wines. The Patent Office found that the goods covered by the marks were different due to:
  • the specialisation of the alcohol industry; and
  • the fact that the average consumer is aware that a vodka manufacturer does not produce wine, and vice versa.
The Patent Office concluded that the marks could coexist on the market. Lech-Pol filed a complaint against this decision, which was dismissed by the Voivodeship Administrative Court on October 16 2009 (Case file VI SA/Wa 1050/09). Lech-Pol decided to file a cassation complaint.

On February 10 2011 the Supreme Administrative Court dismissed the complaint.

The court ruled that the conditions of production of wine and vodka are different; the packaging and sealing of wine and vodka are dissimilar, and the conditions of sale are different. Vodka is not sold in wineries and, in cases where both types of goods are sold in the same shop, they are usually displayed in different locations or on different shelves. However, the court noted that the increase in the number of shopping centres and self-service shops made the 'sales conditions' criterion less important when assessing the similarity of the goods.

The court further noted that vodka and wine must be treated as different types of alcoholic beverages due to the difference in alcohol content, which is reflected in the provisions of the Polish Act on Upbringing in Sobriety and Counteracting Alcoholism (October 26 1982). The court pointed out that the permits granted under the act for the trade of alcoholic beverages are issued separately for each type of alcoholic beverage from a distinct pool of permits. Finally, according to the court, the fact that the same entity might produce both wines and spirits does not mean that these goods belong to the same category.

Tomasz Rychlicki, Patpol - Patent & Trademark Attorneys, Warsaw  

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