In order to prove that a trade mark is famous it is necessary to show, among other things, that ordinary customers associate the mark with a high quality of the goods or services on which it is used.

In a recently published decision, the Warsaw Regional Administrative Court upheld a decision of the Polish Patent Office refusing the cancellation of the trade mark Magnum registered by Browary Dolnoslaskie Piast SA in respect of non-alcoholic products in class 32 (decision of October 7 2005, case number SA/Wa 662/05).

Piast applied for a trade mark for Magnum on July 16 1997. On November 18 2003 Unilever filed a request to cancel the registration of the mark. Unilever argued that the trade mark Magnum, registered earlier in its name and destined for the marking of ice cream in class 30, was a famous mark, enjoying special legal protection, and that it had acquired a unique and positive power of having an impact on customers owing to: long-lasting use in economic turnover; extensive advertising; and a high degree of knowledge, as confirmed by the results of an opinion poll.

Unilever argued that the actions of Piast, which filed an application and obtained the right of protection to the trade mark Magnum for the marking of non-alcoholic beverages, are contrary to the principles of social coexistence, as Piast intentionally wanted to use the fame of the trade mark belonging to Unilever.

By a decision of November 29 2004, the Patent Office dismissed the request for cancellation. It held that in the light of the presented materials, there was no basis for admitting that at the date Piast filed its application to register the trade mark Magnum, Unilever's mark Magnum had already been a famous mark, which would justify extended protection for that mark going beyond the range of similar goods.

The Patent Office argued that the fame of a trade mark was not simply a consequence of it being used and promoted, but it was also a profound and well-established notion set in customers' minds of the high quality of the products under the mark. Unilever had not served evidence that at the date of application of the questioned trade mark its trade mark had already gained a reputation among customers of being a guarantee of the quality of the products under the mark, and consequently encouraged the customers to buy those products.

Unilever filed with the Warsaw Regional Administrative Court a complaint against the decision of the Patent Office. The Court dismissed the complaint and argued that because there is no legal definition of a famous trade mark, each case should be examined individually. This examination, in addition to making an evaluation of how well the mark is known on the market, should also involve the following aspects:

• scale of participation in market activity;
• range and duration of advertising;
• territorial and time extension of use of the mark;
• licences granted for the use of the mark, quality control;
• value of the designation according to the evaluation of independent financial institutions;
• volume of spending on promotion of the mark;
• price relative to substitute goods;
• whether and to what extent the mark is used by third parties.

All these aspects form together a general notion that is positively associated by customers with the goods used under the mark. Thus, a famous trade mark becomes a symbol of confirmed quality of the goods or services in relation to which it is used.

Anna Zakrocka

Patpol
162J Nowoursynowska Str.
02-776 Warsaw
Poland
Postal address
PO Box 168
00-950 Warsaw
Tel: +48 22 644 96 57 / 96 59; +48 22 644 96 68 / 97 69
Fax: +48 22 644 96 00 / 44 02
patpol@patpol.com.pl 
www.patpol.com.pl