30 September 2014TrademarksAgnieszka Skrzypczak

Poland: trading on a good name

Among all the trademarks commonly used, one can select a group of marks that are not only capable of distinguishing the goods or services in respect of their source of origin but also embody consumers’ ideas about the products marked by them. What is more, these marks may carry some additional value that is independent of the goods or services to which they are attached.

What is characteristic of these trademarks, apart from being designations of origin and quality of the goods or services to which they are attached, is that they also perform an advertising function. Therefore, for average consumers, they carry a whole set of positive associations surrounding the mark itself, which is called “reputation”, so they are frequently referred to as “trademarks with reputation”.

According to Article 132 clause 2 point 3 of the Polish Law on IP of June 30, 2000 (Journal of Laws No. 119 item 1117 with later amendments), a right of protection for a trademark shall not be granted if the trademark is identical or similar to a trademark with reputation registered or applied for registration with an earlier priority in respect of any kind of goods or services if it would bring unfair advantage to the applicant, or be detrimental to the distinctive character or the reputation of the earlier mark.

There is no separate list of marks with reputation in Poland, so if a trademark is claimed to have a reputation, the burden of providing evidence lies with the owner.

To give examples, the reputation of three trademarks has already been proved before the Polish Patent Office: Lexus, Chanel and BMW.

The relevant database (Register Plus) was consulted to check whether it is possible to obtain a national registration in Poland for a trademark that is identical to or similar to an earlier mark with reputation but is destined for different goods or services.

The first example is the trademark ‘Chanel’, the reputation of which in Poland is unquestionable. The mark is owned by Chanel SARL from France. The company owns six Polish registrations in classes 03 (cosmetics), 09 (sunglasses), 14 (artificial jewellery), 18 (leather goods), 24 (fabrics) and 25 (clothing, such as coats, dresses, suits, blouses, jackets, sweaters, women’s underwear, hats, scarves and footwear).

According to Register Plus, five other companies applied for registration of marks including the word Chanel: ‘Chanellie-Classic’ No. Z-102399 (class 03), ‘Chanel’ No. Z-153099 (class 03), ‘Chanel’ No. Z-155692 (class 34), ‘Chanelhomme’ No. R-183660 (registration in classes 38 and 42), and ‘Chanel-g’ No. Z-92803 (class 24).

However, Register Plus shows that today Chanel SARL is the only holder of Chanel trademarks in Poland. As regards the trademark applications ‘Chanellie-Classic’ No. Z-102399, ‘Chanel’ No. Z-153099, ‘Chanel’ No. Z-155692 and ‘Chanel-g’ No. Z-92803, the proceedings before the Polish Patent Office were either discontinued or the marks were refused protection (decisions are already final).

As for the trademark registration ‘Chanelhomme’ No. R-183660 in classes 38 and 42, the Patent Office initially decided on the grant of a right of protection but the decision was verified later in litigation proceedings, which resulted in cancellation of the right of protection (final decision on cancellation).

"if a trademark is claimed to have a reputation, the burden of providing evidence lies with the owner."

Another mark enjoying undeniable reputation in Poland is ‘BMW’, owned by the company Bayerische Motoren Werke Aktiengesellschaft from Germany, the holder of three Polish national registrations in classes 37 (maintenance and repair of motor vehicles and their parts; cleaning and washing of vehicles), 12 (cars, passenger cars) and 36 (financial services).

According to Register Plus, three undertakings applied to the Patent Office for registration of trademarks including the word BMW, namely: Z-148782 ‘BMW’ (class 34), Z-358270 ‘Radość Na BMW’ (class 35) and Z-414220 ‘’ (classes 37 and 42). However, Bayerische Motoren Werke Aktiengesellschaft is currently the only owner of trademarks with the word BMW in Poland. The proceedings in respect of the trademark applications Nos. Z-148782 ‘BMW’ and Z-358270 ‘Radość Na BMW’ were either discontinued, or a final decision on refusal of registration was issued. The proceedings concerning the trademark Z-414220 ‘’ applied for in classes 37 and 42 are still pending.

The meaning of ‘lex’

The last example of a mark with reputation in Poland is ‘Lexus’, owned by Toyota Jidosha Kabushiki Kaisha (Toyota Motor Corporation), having nine registrations in class 12 (passenger cars and their parts).

As can be seen from information in Register Plus, a number of other companies applied for the trademark ‘Lexus’, and some of them even managed to obtain registration. These were: R-89447 ‘Lexus’ (classes 9, 11 and 37), R-93130 ‘Lexus’ (class 5), R-111314 ‘Lexus’ (class 36), Z-171151 ‘Lexus’ (class 34), Z-172764  (classes 11, 17, 21), R-124464 ‘Lexus’ (class 03), R-140774 ‘Lexus’ (class 33), Z- 215198 ‘Inter Pack Bagażniki Od Garbusa Do Lexusa’ (classes 12, 37), R-151677 (class 34), Z-222066 ‘Lexus Vor Vip’ (classes 19, 27), R-155474 ‘Lexus’ and R-155476 ‘Lexus’, as well as R-160344 ‘Lexus’ and  R-160345 ‘Lexus’  (class 34), R-175422 ‘Lexus’  (classes 11 and 12), RR-178041 ‘Lexus Grupa Finansowa’ (class 36), R-194634 ‘Lexus’ (classes 06, 19, 20, 37), and Z-345221 ‘Lexus’ (class 36).

Currently none of these registrations or applications remains alive, as they were either refused registration, or were cancelled despite initial decisions to grant protection.

Nonetheless, there are a number of registrations containing the element Lexus in service classes, namely: R-124464 ‘Lexus’ (class 03), R-177504 ‘Lexus Kancelaria Prawna’ (class 36), R-192336 ‘Lexus’ (class 35), R-188980 ‘Lexus Finanse’ (class 36), R-241349 ‘Centrum Doradczo-Uslugowe Lexus Marzena Dwórznik’ (classes 36 and 41) and R-248876 ‘Lex§us Lexus Kancelaria Prawna’ (classes 35 and 45).

Registration of the trademark ‘Lexus’ in classes 35, 36, 41 and 45 covering legal services in a broad sense was possible because they were based on the Latin word ‘lex’ relating to law, so it was deemed that they could not be confused with the trademark Lexus used in the automobile sector.

Agnieszka Skrzypczak is a Polish and European patent and trademark atttorney at Patpol. She can be contacted at:

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