The heat of the ice war

By Marta Koremba, Krzysztof Korwin-Kossakowski


May 2014 saw the completion of one of the fiercest trade mark wars fought in Poland in recent years.  In February 2007, Smyk Global Assets GmBH ("Smyk"), a subsidiary of the state-owned Polish company Smyk sp. z o.o. (a producer of children's goods), filed an opposition with the Polish Patent Office ("PPO") against the application for the trade mark "LODY SMYK NORDIS" for ice-cream in Nice Class 30, owned by the Polish company Nordis Chłodnie Polskie sp.  z o.o. ("Nordis") – a medium-sized ice cream producer domiciled in Poland.  

The opposition was based on similarity of Smyk's  earlier registered figurative trade mark – "SMYK" for goods in Class 30, including spices, wheat products, confectionary and sweets, with the exception of chocolate products.  Smyk argued that its trade mark was well-known by the Polish consumers due to its over twenty years use on the Polish market as well as significant financial investments in its promotion.  Smyk claimed that the word "smyk" was dominant in both trade marks.  According to Smyk, due to the high level of similarity customers would be confused as to the origin of the goods sold under Nordis' trade mark.  Smyk also alleged that Nordis' application infringed Smyk's company name.


 Earlier trade mark registered by Smyk  Trade mark applied for by Nordis

In response to the opposition Nordis argued that there was no risk of confusion as it has been using trade marks similar to LODY SMYK NORDIS for the past 20 years and that the trade mark filed was just a "continuation" of the previous trade mark (SMYK NORDIS NORDIS trade mark registered in 1993).


 Previous trade mark including the word “SMYK” registered by Nordis

In February 2008 the PPO decided that the two trade marks were not similar as the word part of the figurative trade mark LODY SMYK NORDIS was not as important as its graphical form.  In the PPO's opinion, any customer purchasing products bearing the LODY SMYK NORDIS trade mark would be influenced by the graphical form of the trade mark, rather than the word "smyk" itself.  The PPO also decided that there was no similarity between the goods.

The PPO's decision was challenged by Smyk, which filed a complaint to the Voivodship Administrative Court in Warsaw ("VAC").  After hearing the case the VAC decided that the PPO wrongly assessed the lack of similarity between the goods and therefore the potential risk of confusion.  As a result, the VAC overturned the PPO's decision and remitted the case to the PPO.

On 3 August 2009, in response and as a defence to the opposition proceedings, Nordis sought partial cancellation of Smyk's figurative trade mark in Class 30.  According to Nordis, the trade mark had not been put into genuine use for those kinds of goods.  Smyk relied on its offering of branded sweets in its numerous stores around Poland.  However, the PPO found this evidence insufficient to prove genuine use and in 2009 cancelled the registration of Smyk's trade mark for products in Class 30.  With the same decision the PPO also dismissed Smyk's remitted opposition.

Smyk once again appealed the PPO's decision before the VAC but after recognizing the VAC held that in light of the cancellation, the complaint was groundless and dismissed it.  The VAC indicated in particular that both companies were operating on different markets and thus use of the LODY SMYK NORDIS trade mark would not collide with the use of any trade marks owned by Smyk.  In the VAC's opinion, the use of the LODY SMYK NORDIS trade mark could not affect Smyk's company name.

Smyk appealed the judgment before the Supreme Administrative Court, which on 13 May 2014 dismissed the appeal bringing to an end the long war between the two companies.