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“J’adore” vs. “A Adoration” — a privileged status of reputable trademarks[1]’ owners

The idea to share some reflections on the concept of reputation of a trademark and the status of reputable trademarks was inspired by the judgment of the Supreme Administrative Court in June (Ref. II GSK 2782/15). It concerned the refusal of the Polish Patent Office to recognize the opposition of Parfums Christian Dior from Paris against a figurative trademark “A Adoration,” submitted by a Polish company — Interton sp. z o.o. The opposing party indicated that the submitted trademark was similar to “J’adore” (emphasizing that it is a reputable trademark), which was registered as a word trademark with international rights in 1998, and as an EUfigurative trademark “J’adore” in 1999.

The Patent Office did not uphold Dior’s objection, stating that the two trademarks are not similar, which excludes the necessity to examine whether “J’adore” has the status of a reputable trademark. The Supreme Administrative Court disagreed with the interpretation of Art. 132, section 2, item 3, (now Article 1321, section 1, item 4) of the Industrial Property Law. It indicated that:

“The correct interpretation of Art. 132, section 2, item 3 of the Industrial Property Law as regards the examination of identity or similarity trademarks, is to — at the outset of the Patent Office’s actions — determine whether the earlier trademark has the status of a reputable trademark, since in the event this is confirmed, the similarity assessment should be performed by means of other, more lenient, criteria than the assessment performed under Art. 132, section 2, item 2 of the Industrial Property Law. Therefore, such a circumstance is a condition for the application of the wider protection relevant to trademarks with established reputation.”

Finally, the Supreme Administrative Court pointed out that the Patent Office should first examine whether “J’adore” has the status of a reputable trademark, and then focus on the similarity of the opposing trademark, which was undertaken by the Patent Office but in the reverse order. Therefore, if Dior proves that their mark is reputable, the Supreme Administrative Court believes a lower similarity level between the two marks will be enough for “A Adoration” not to be registered. The Patent Office will re-examine the case, taking into consideration the reputation of the “J’adore” trademark, if Dior establishes it.

What is a reputable trademark?

Unfortunately, neither Industrial Property Law nor the case law contains a legal definition of a reputable trademark. For the sake of simplification, a reputable trademark is a registered trademark which — as a result of trading on the market and due to a significant recognizability or attractiveness, as well as its positive image, has a significant value on the market, e.g. for the advertising industry. The examples of such trademarks are undoubtedly: Coca-Cola, Apple, Rolls-Royce, Google, Chanel, Prada or even Dior. Due to many years on the market, reputable trademarks build their reputation, so that buyers of specific goods and services reaching for certain goods bearing a famous trademark perceive them as unique, luxurious or that have a certain value.

The problem — still unresolved — is the criterion to determine whether the trademark has a reputable nature. The EU case law is based on a quantitative criterion, i.e. what matters is the degree to which the trademark is known thanks to the owner’s marketing activities (e.g. judgment of the ECJ of 14 September 1999 — C-375/9, and judgment of the ECJ of 6 October 2009 — C-301 / 07). It is assumed that the recognizability of a trademark is examined among its potential customers, and that the scale of its coverage should correspond to the territory of a given country. In the Polish case law, in addition to the quantitative criterion — necessary for recognizing a given trademark as reputable — there is the qualitative criterion called goodwill, i.e. the fact that the trademark and the goods or services it represents must evoke positive perception and associations — attractiveness. The flagship example of the Polish interpretation is the “Amber Gold,” which undeniably fulfills the quantitative criterion, but definitely not the qualitative criterion. In view of the different interpretations in the Polish case law, it is now safest to rely on both criteria to demonstrate the reputation of a trademark.

How does a reputable trademark differ from a “standard” trademark?

First of all, reputable trademarks are not covered by the specialization criterion. This means that even though a trademark is registered in certain classes of goods and services, its owner may lodge an objection or seek a revocation of a trademark registered in entirely different classes than his trademark. An example is submitting the Coca-Cola mark for computer programs. Such mark would not be protected due to a collision with the reputable “Coca-Cola” trademark.

What is more, only a lower degree of similarity between the trademarks is enough for them to collide, since it is sufficient only for the later trademark to be associated by the recipients with a reputable trademark, mistakenly suggesting any connection between them. Let’s return to the “J’adore” and “A Adoration” case. The Patent Office will have to investigate, if it considers that Dior has proved the reputation of the “J’adore” trademark, whether there is a similarity between “A Adoration” and Dior’s trademark. If so, “A Adoration” will not be registered.

Why are reputable trademarks privileged?

Unfortunately, reputable trademarks are tempting for entrepreneurs, mainly because of their reputation. The efforts of the owners of reputable trademarks, which translate into multi-annual expenditures on advertising and promotion of the trademark, are certainly significant. Therefore, entrepreneurs are tempted to have a mark that is associated with a trademark which already has the power to break through, thus saving on the costs associated with the promotion of their trademark. The wider protection awarded to reputable trademarks is motivated by being protected against the above mentioned free riders or the loss of reputation by a reputable trademark (e.g. submitting Dior’s trademark for a dish-washing liquid). It is also important to protect against blurring of the trademark, which may happen by having on the market several hundred products marked by a reputable trademark. The ideal, and perhaps even legendary, example of blurring the mark is that indicated by an American lawyer, Frank I. Schechter:

“If we allow for Rolls-Royce restaurants, cafes, trousers and sweets, the Rolls-Royce brand will not exist in 10 years from now.”

How to demonstrate the reputation of a trademark?

Proving that one’s trademark is reputable entails the need to provide evidence that the trademark is known (e.g. in the form of surveys) and provide, in particular, the Polish Patent Office, with evidence of a positive reception of a trademark and the goods and services it designates (e.g., in the form of awards received). The doctrine considers “famous” some trademarks the reputation of which is obvious. They do not require proving their reputation, e.g., Google. In such situation, we can only talk about the real giants on the market. Though one has to be very careful because not proving the trademark’s reputation may be risky.

As the case law indicates, it is also important to demonstrate the point at which the trademark became reputable. Gino Rossi S.A., which is a manufacturer of footwear and leather goods and has been in business since 1992 (the word trademark application was submitted as early as in 1994), applied for the cancellation of the PPUH Marcin Lorens’ trademark, which has been operating since 2006, while it submitted the first word trademark “Gino Rossi” for watches in 2008. The Supreme Court pointed out that the moment of obtaining by Gino Rossi a reputable trademark is significant in this case. The Court explained in the judgment of 10 March 2017 (III CSK 171/16) that a reputable trademark shall be investigated at the time of the infringer’s entry on the market and not only at the time of the judgment. This is because there should not be a situation where the initial activity of the offender is legal and then as a consequence of the trademark being considered famous — become unlawful. Thus, the Court of Appeal will have to supplement the evidence to determine whether the manufacturer of footwear and leather goods used a reputable trademark at the time the watch manufacturer entered the market.



[1] The article is about registered trademarks with reputation from article 1321, section 1, item 4 of the Industrial Property Law and article 8, section 5 EUTMR. The unregistered well-known trademarks from article 1321, section 1, item 5 of the Industrial Property Law and article 8, section 2, item c) EUTMR are beyond the scope of this article.


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