1 August 2011Jurisdiction reportsTomasz Rychlicki

Protecting numbers in Poland

Polish publisher Agencja Wydawnicza Technopol Sp zoo succeeded in registering various trademarks at the Polish Patent Office for goods in class 16, such as brochures, magazines, charade journals, prints and newspapers.

These trademarks were mainly made up of numerical designations and numbers. Agencja Wydawnicza Technopol’s publishing competitors asked the Polish Patent Office to invalidate these trademarks. Some of these cases have moved to the Polish Supreme Administrative Court after going through all of the lower instances in Poland.

The Polish Supreme Administrative Court, in a February 10 judgment concerning the figurative trademark ‘1001’, ruled that a trademark that lacks primary distinctiveness may acquire distinctiveness or secondary meaning through advertising.

"A WORD  WILL BE WORTHY OF REGISTRATION AS A TRADEMARK IF IT DRAWS THE CUSTOMERS' ATTENTION OR ATTRACTS THEM TO THE GOODS IN AN INDIVIDUAL WAY."

The trademark must be used in a way that makes it become associated not with the original descriptive content, but with the source of specific goods produced by a particular manufacturer. Publishers that use different numbers and numerals in magazine titles prevented 1001 from acquiring a secondary meaning.

The Polish Supreme Administrative Court said that while assessing whether a sign has distinctive character or not, the economic interests of all market participants should be considered, particularly when free access to all signs that provide information about the name or characteristic features of goods or services is discussed.

On this basis, the Polish Supreme Administrative Court ruled that purely informative signs cannot serve as trademarks.

“A word (letter, number, syllable or a combination of these) will be worthy of registration as a trademark if it draws the customers' attention or attracts them to the goods in an individual way." Furthermore, the Polish Supreme Administrative Court released a judgment in a case concerning the figurative word trademark ‘80’ on March 15, 2011.

The Polish Supreme Administrative Court ruled that a sign may become capable of distinguishing the goods of one undertaking from the goods of a similar undertaking by its impact on customers.

This kind of mark must be unique, and therefore memorable. The mark will be distinctive as long as it is recognisable as an indicator of source. A word (letter, number, syllable or a combination of these) will be worthy of notice and registration as a trademark if the word draws the customers’ attention or attracts them to the goods in an individual way, such as humorous association.

A figurative mark that includes the number 80 and graphic features may only have informational character, and so its registration is impossible. However, if the combination of graphic features and a number are sufficiently expressive, it will be impossible to assess whether or not the number itself is the only element of the whole trademark that is memorable.

The Polish Supreme Administrative Court, in another May 15 judgment, held that the designation ‘100’ is highly informative for magazines and journals containing crosswords. This means that it cannot be monopolised by those that would use it for marking crossword magazines.

The Polish Supreme Administrative Court also noted that adding a graphic image to such a trademark does not make it distinctive. The findings of the Polish courts have been confirmed in European case law.

Agencja Wydawnicza Technopol tried to register ‘1000’ as a community trademark (for goods in classes 16 (posters, placards, brochures, periodicals, including periodicals containing crossword puzzles and word puzzles, printed matter and newspapers), ‘28’ (brain teasers, riddles and puzzles) and services in class ‘41’ (organising contests and publishing texts).

The Office of Harmonization for the Internal Market refused to register the mark for the goods in class 16. Agencja Wydawnicza Technopol filed a complaint with the Court Of First Instance.

In a November 19, 2009 judgment, the court dismissed the case and ruled that the figure 1000 is descriptive in respect to the goods covered by the application. The appeal was also dismissed by the Court of Justice in Agencja Wydawnicza Technopol Sp. z o. o. v OHIM.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Jurisdiction reports
25 May 2021   It has now been over a year since the most recent restructuring of Polish IP law. One of the aims of the update was closer harmonisation with regulations in other EU countries and with the European Patent Convention. Despite these efforts, however, many differences in procedure, and perhaps more importantly, in substantive matters, persist.