Single words: protected as trademarks or copyrights

On June 22, 2010, the Supreme Court held that single words, neologisms, words deriving from common language and those that are unknown are devoid of creativity.

In this case, the plaintiff filed a motion in a district court to be awarded compensation for a wilful infringement of its copyright to the ‘JOGI’ word trademark. The plaintiff had previously obtained copyrights to a label and a figurative trademark JOGI, designated for yogurt. It had also previously won a copyright case about the mark.

The district court dismissed the case and the plaintiff filed a complaint to the Court of Appeal. The court held that the word JOGI did not fulfil the criteria for being regarded as a work. It also stated that the idea for a word JOGI (which earlier existed in the public domain) to designate drinking yogurt was devoid of creativity or originality.

According to the Court of Appeal, the subject designation lacked the bare minimum of individuality, and did not have any originality, creativity or personal quality—the basic features that a work must have in order to secure copyright protection under the law.

As a result, the plaintiff filed a cassation complaint to the Supreme Court, claiming that the Court of Appeal had made the wrong assumption that originality may only refer to the works that are ‘new’ in an objective sense, and that originality cannot be reflected by using an already invented name as a word trademark for the marking of specific products.

The Supreme Court stated that, in principle, single words are excluded from being regarded as works. The court noted, however, that occasionally oneword titles or slogans break the principle. In such exceptional situations, the words are surprisingly expressive and contribute to the meaning of the work.

“The Supreme Court stated that, in principle, single words are excluded from being regarded as works. The court noted, however, that occasionally one-word titles or slogans break the principle. In such exceptional situations, the words are surprisingly expressive and contribute to the meaning of the work.”

In general, small works of human activity, which are assumed to be for common use or exclusively practical purpose, are not denied copyright protection. The creation of works intended for practical purposes is a characteristic subject of industrial property, in particular industrial designs and trademarks. Under the Polish law, some rights for intangible assets may cumulate, including the accumulation of copyright and trademark rights or copyright and industrial design rights. It is also permissible to use an existing work as a trademark, including an autonomous work (independent of potential commercial application in the future). The case is different when a trademark is invented for particular goods with the intention of marking a specific product. In that case, a work in the meaning of copyright would be created alongside inventing a trademark.

A word designation must be, nevertheless, always evaluated with regard to its independent creative content. Abandoning this idea would lead to a situation where each trademark could be regarded as a work, as the idea of using a word for a particular purpose is always expressed in a trademark. A designation functioning as a trademark may simultaneously constitute a work, but only on condition that it shows independent creative value.

Cumulative protection of intangible assets is definitely permissible, but one should not blur the difference between the respective rights, the nature of which substantially differ. As a result, protection should be always based on the appropriate legal basis determined by the nature of the work.

According to the Supreme Court, using a word as a trademark does not have an impact on the possibility of recognising it as a work, as the existence of a work cannot be conditioned by its specific destination. The way in which some creative work is used does not determine whether it has obtained the status of a work eligible for copyright protection.

In view of the above, the originality of the word JOGI is not sufficient to be an exception from the principle that single words do not have features of creativity. It is devoid of autonomous characteristics of a work and does not become a work as a result of its particular use as a trademark.

Monika Wieczorkowska is a European patent and trademark attorney at Patpol in Warsaw. She can be contacted at: monika@patpol.com.pl