On 3 September 2013 the Polish Supreme Administrative Court issued an important decision providing guidance as to the factors that should be taken into account when determining whether a trade mark is a well-known one.
These factors had been rather unclear in the light of statutory regulation and earlier case law. The guidance concerns, among other things, use and assessment of surveys as evidence of knowledge and recognition of the trade mark by the public. Well-known trade marks are protected once they are generally recognised as trade marks by the relevant public. Due to lack of formal registration, it is more difficult to establish when such protection starts and what its scope is.
The case concerned the marks Kucharek (owned by Prymat sp z o. o.) and Vegeta (owned by Podravka Prehrambena Industrija). Kucharek and Vegeta are popular all-purpose spices sold in Poland. Both are sold in blue packaging containing the image of a chef with fresh vegetables. The dispute between these parties goes back 14 years, with Podravka originally filing invalidation proceedings against the Kucharek trade mark in 1999.
Podravka claimed that their Vegeta trade mark is wellknown in Poland as a result of its use and advertisement over 25 years. Podravka were able to win on this argument in the lower Polish courts, which found that Vegeta is a well-known trade mark in Poland and so benefits from protection against similar marks. This conclusion was based on an assessment of surveys which proved that the name Vegeta was recognised by 98% of respondents and used by 59% of respondents.
On appeal, the Polish Supreme Administrative Court held that the court of lower instance did not investigate properly what elements were regarded by the relevant public to be the Vegeta well-known trade mark. As the surveys concerned exclusively the name Vegeta, they were insufficient to prove that the whole trade mark in question, i.e. a trade mark consisting of the name Vegeta and the image of a chef with fresh vegetables on the blue background, was well-known.
The court set out the following guidance that should be used when assessing whether a trade mark benefits from protection as a well-known trade mark:
- The description of the sign in question must be precisely established (since the trade mark is unregistered, there will be no registration documents showing the exact scope of the sign).
- A sign has to be universally known in its function as a trade mark. It is not enough to prove that the sign is widely known; the sign must be associated with a particular product as an indicator of the product’s origin.
- It is also necessary to prove that the sign in question enjoys strong public awareness as a mark that distinguishes the product from others on the market. This can be achieved through surveys, but the survey questions must concern the whole trade mark and not only its verbal element.
This guidance is of use both to owners of trade marks they believe qualify for “well-known” status and to applicants for registered trade marks. A pre-existing well-known trade mark belonging to a third party is an obstacle for the subsequent registration of the same or similar sign for the same or similar products by another party.
As such, parties seeking to register a trade mark in Poland should make a careful examination not only of the trade mark register but also of the market in which they wish to register their mark in order to identify potential well-known trade marks.
This article is part of the BrandWrites Newsletter for November 2013