1 December 2012Jurisdiction reportsMarta Skrobot

Acquired distinctiveness: is any category of marks exempt?

Sufficient distinctiveness is one of the basic requirements for a trademark to be applied for at the Polish Patent office. This means that a trademark must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. If this requirement is not fulfilled, a trademark will not be considered eligible for protection. However, the Patent Office cannot refuse registration if the mark has acquired distinctiveness as a result of being used before the application date.

On April 16, 2007, a company Scotts Poland Sp.z o. o. filed with the Polish Patent Office an application for registration of a word trademark ‘Tarcznik BR’ for ‘fertilisers’ in Class 1 and ‘plant protective preparations’ in Class 5. The mark was subsequently found eligible for registration and obtained the right of protection No. R-210641.

In January 2009, a third party filed with the Polish Patent Office a request to cancel the trademark ‘Tarcznik BR’, claiming that the mark lacked sufficient distinctiveness as it was composed of word elements only indicating the intended purpose, function and use of the goods under the mark. Therefore, it claimed, granting protection for this kind of trademark resulted in depriving other parties of the possibility of conveying similar information about their competing products.

In response, Scotts Poland argued that its trademark was extensively used and advertised on the Polish market for eight years from 1999 to 2007. During that period, no other company brought to market a similar preparation named Tarcznik BR. Therefore, the products under the mark were associated by consumers directly with Scotts Poland. Consequently, the trademark ‘Tarcznik BR’ developed distinctive character in the course of trade, and now it enjoys distinctiveness.

“THE PATENT OFFICE MISTAKENLY ABANDONED THE EXAMINATION OF ALL EVIDENTIARY MATERIALS FILED IN THE MATTER TO INVESTIGATE WHETHER THE MARK AT ISSUE HAD INDEED ACQUIRED DISTINCTIVENESS.”

Despite filing evidence that the trademark had acquired distinctiveness in use, the Patent Office decided on cancellation, arguing that the term ‘Tarcznik BR’ is descriptive in respect of the goods for which it is destined.

The Patent Office argued that the word ‘tarcznik’ means an insect from the family of scale pests, most of which are parasites on plant crops, and the letters ‘br’ only indicate the form in which the preparation is used (briquette).

As for the evidence that the mark enjoys acquired distinctiveness, the Patent Office, referring to the earlier case law, found that the designation ‘Tarcznik BR’ belongs to the category of descriptive marks which are not capable of acquiring distinctiveness.

According to the Patent Office, the designation in question must be available for all participants in the market, so that its free use is guaranteed, contrary to which the owner of the mark ‘Tarcznik BR’ has already requested that the opposite party stopped using its designations with the word element at issue.

Scotts Poland complained to the District Administrative Court against the Patent Office’s decision. By virtue of a judgment of June 20, 2011, the court dismissed the Patent Office’s decision. According to the court, it is true that the trademark ‘Tarcznik BR’ does not have initial distinctiveness.

However, the Patent Office made a wrong assumption that under the law there is a category of marks which shall be denied registration on the grounds that they are unable to acquire distinctiveness through being used prior to the date of application in the Polish Patent Office. Consequently, the Patent Office mistakenly abandoned the examination of all evidentiary materials filed in the matter to investigate whether the mark at issue had indeed acquired distinctiveness.

According to the court, the Patent Office must make an overall evaluation of all the evidence in order to determine whether the trademark ‘Tarcznik BR’ has acquired distinctiveness through use prior to its application date, taking into consideration all the arguments of the trademark owner. Therefore, the decision was returned to the Patent Office for re-examination.

If a trademark is not inherently distinctive, it may acquire distinctiveness in turnover. There are not any specific categories of marks that would be exempt from acquiring distinctiveness through use, so each case must be examined individually, taking into consideration all relevant evidence.

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