The prominent brewery company Plzeňský prazdroj ("Prazdroj") will be breathing a sigh of relief as the Czech Supreme Administrative Court confirmed the decision of the Czech Industrial Property Office ("IPO CZ") which refused to register the trademark PILSENER ADLER QUELL because of its similarity to Prazdroj's registered trademark PILSNER URQUELL.
The facts of the case were simple. The company Astrapia a.s. ("Astrapia") filed an application for the registration of the trademark PILSENER ADLER QUELL at the IPO CZ. However, Prazdroj was concerned about parasitic use of its reputation because of the similarity of Astrapia's sign to its own trademark PILSNER URQUELL. The IPO CZ decided to decline Astrapia's trademark application based upon the objections Prazdroj filed.
Distinctive element of mark
Astrapia brought the case before the Courts and claimed that the word "Pilsener" was not a distinctive element of Prazdoj’s trademark but only a geographical indication. Therefore, the use of this word/sign in commercial relations should not be prohibited by the trademark owner if it was used in compliance with commercial customs, good manners and rules of competition. However, the Supreme Administrative Court disagreed and said that, among others, the requirement for the use of a sign in compliance with commercial customs, good manners and rules of competition meant that a sign could not be used as a trademark. The good manners between competitors must be preserved and any use of a sign in bad faith or contrary to these rules would infringe the rights of the trademark owner.
The Court also emphasised that because the protection of designations of origin is different from trademark protection, Astrapia had a general right to use a geographic indication as a way of designating the origin of their product even though they could not register it as a trademark.
Likelihood of confusion
Furthermore, the Court said it was necessary to assess the likelihood of confusion of both trademarks in a global context by taking into account all factors relevant to the particular case. In this case, the products (beer) as well as the spectrum of consumers were identical. By assessing all visual, phonetic and semantic aspects as well as overall impression and good reputation of the trademark, the Court declared a significant similarity between both signs and the existence of a likelihood of confusion. Therefore, the Supreme Administrative Court confirmed the decision of the IPO CZ and dismissed Astrapia's claim.