Legal Battle on Polish Energy Drinks Market

13 July 2012

Filip Lukaszewicz, Piotr Dynowski

The Polish energy drinks market is unique in Europe – it is one of very few in this part of the world where Red Bull is not a leading brand with only an 11% market share. The most popular drinks are Tiger (currently produced by Maspex) and Black (produced by FoodCare) with a 20% and a 18% market share respectively. Over the last two years these two competitors have been engaged in one of the largest legal battles of this type.   

Background

In 2003 a popular Polish boxer Dariusz Michalczewski, nickname “Tiger”, signed a 50-year cooperation and profit-sharing contract with FoodCare. Under the contract FoodCare launched the production of “Tiger Energy Drink” which soon became one of the most popular energy drinks in Poland with almost a 30% market share in approximately a EUR 170-million annual turnover.

In 2009 Michalczewski and FoodCare clashed when FoodCare removed the boxer’s image and name from the labels and began promoting another energy drink N-Gine (with a famous Polish Formula One driver Robert Kubica). In response Michalczewski terminated his contract and assigned his rights to Maspex, one of the biggest food manufacturers in CEE. Maspex started to produce a “Dariusz Tiger Michalczewski” energy drink and the legal battle flared.

Disputes

The disputes between FoodCare on one side and Dariusz Michalczewski and Maspex on the other side concern three main areas:

(i) use of the boxer’s image;
(ii) acts of unfair competition; and
(iii) infringement of trade marks.

The disputes are heard by three courts that have already issued more than ten court decisions.

Trade mark dispute

The trade mark dispute between FoodCare and Michalczewski and Maspex takes place under both the Polish Industrial Property Law of 30 June 2000 (“Polish Trade mark Law”) and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (“CTM Regulation”). According to information obtained from the Polish Patent Office and the Office for Harmonisation of Internal Market, both sides have some “Tiger” related national trade marks and CTMs registered in classes 30 and 32 of the Nice Classification (drinks, beverages) and many new applications. In this plethora of notifications, the above offices will need to verify the rights of both sides, including applications to cancel the opponent’s trade marks.

With respect to the national trade marks and CTMs, the Appeal Court in Gdańsk and Cracow and the Court for Community Trade marks and Designs in Warsaw (“Community Court”) issued a preliminary injunction under Trade mark Law and the CTM Regulation respectively. These decisions are contradictory to each other.

Polish National Trade mark Proceedings

The Appeal Courts in Gdańsk and Cracow, based on the Polish Trade mark Law issued preliminary injunctions against FoodCare. Under those decisions, until the hearing of the main proceedings, only Dariusz Michalczewski and Maspex are entitled to use “Tiger” related trade marks for energy drinks.

The District Court decision in Gdańsk (upheld by the Appeal Court) (i) ordered FoodCare to: cease and desist producing, selling and placing on the market or advertising any energy drink with a “Tiger” related trade marks and (ii) the seizure of any energy drinks already produced bearing “Tiger” related trade marks.

The District Court concluded that FoodCare could only use the “Tiger” nickname under the contract with Michalczewski. The Court also concluded that FoodCare’s use of “Tiger” related trade marks creates a likelihood of confusion by the consumers that the energy drinks have originated from Michalczewski (Maspex). The Court did not take into account that FoodCare has the right to other trade marks with the sign “Tiger”.

CTMs Proceedings

A few days after the above decisions, based on the CTM Regulation, the Community Court in Warsaw decided to reject Michalczewski’s motion for preliminary injunctions against FoodCare seeking the same injunctions as under the Polish trade marks proceedings. Under Article 103 of the CTM Regulation, the Court adjudicated Michalczewski’s motion for a preliminary injunction based on the same procedural regulations as in case of national trade marks.   

The Community Court reasoned that the basic function of a trade mark is to guarantee the origin of a product or service for customers (CJEU 102/77 Hoffman-La Roche dated 23 May 1978).  

The Court decided to reject Michalczewski’s motion as he did not substantiate his claim. The Court further reasoned that Michalczewski has no exclusive rights to the trade mark with the word “Tiger” for energy drinks and that FoodCare’s market activity is not making it impossible for Michalczewski to conduct normal competitive activity in the same market.

The Court concluded that a trade mark’s similarity cannot be limited to one element of a complex trade mark: a comparison needs to be made in relation to the opposed trade mark as a whole.  THE CJEU has emphasised the importance of assessing the overall impression created by a mark e.g. when comparing a word mark with a figurative mark which contains the word mark as part of a verbal element in the figurative mark.  Much will depend on whether the verbal element has an independent distinctive role which dominates the overall impression created by a figurative mark in the minds of the relevant public (CJEU C-344/05 Shaker dated 12 June 2007).

After a few months Michalczewski tried once again to block FoodCare from use of words or phrases that do not necessarily include the word “Tiger” directly but nevertheless create an association with his TIGER CTM. As in the previous case the preliminary injunction was not granted.

Summary

The difficult decision based on the same facts shows that in Poland the decision in very similar cases can vary depending on the different interpretation and understanding of trade mark law on a European and national level. Polish trade mark proceedings are still being decided by Polish civil courts that are not fully familiar with the Trade mark Law and European judicature in this area. This is clear from comparing the analysis and rationale of the decisions made by both courts.  In consequence the Community Court decision was not decisive and, based on the decisions of the District and Appeal Courts in Gdańsk and Cracow, FoodCare is still not entitled to produce and market any energy drinks marked as “Tiger”.

 

































Trademarks in the dispute


National Trademarks

FoodCareDariusz Michalczewski

BLACK TIGER

category: word


TIGER-VIT

category: word


BLACK TIGER

category: word


category: figurative trade-mark


Tiger

category: figurative trade-mark


Tiger

category: figurative trade-mark


CTMs


T.G.R. ENERGY DRINK

category: word (registration cancellation pending)


DARIUSZ TIGER MICHALCZEWSKI

category: word

 

TIGER M

category: word


Tiger

category: figurative trade-mark


Tiger

category: figurative trade-mark


Tiger

category: figurative trade-mark


 

See also:

Authors