The District Administrative Court has issued an interesting judgment concerning foreign names registered as trade marks in Poland.
East Sea Poland filed an opposition against figurative trade mark Bien Dong, which was registered in classes 36, 39 and 43 in the name of Aerocenter Travel Trinh Huy Hai residing in Poland.
The opponent (who has also filed for registration of Bien Dong trade marks) argued that the mark is descriptive because in Vietnamese it means the South China Sea. Moreover, the opponent claimed that this is an official Vietnamese geographical name and as such should be available for everyone. It argued as well that the mark is misleading as it refers to a sea area when the services offered by the owner of the mark concern air transport. Finally East Sea Poland believed that the mark would mislead customers as to the origin of the services as it suggested that they come from Vietnam while the firm is from Poland.
The Polish Patent Office dismissed the opposition, finding that the average Polish consumer does not know Vietnamese and will perceive the mark as a fanciful designation. East Sea Poland appealed to the District Administrative Court arguing that the customers are in fact Vietnamese, not Polish, and that the name Bien Dong is synonymous with Vietnam.
The Court dismissed the complaint and agreed with the Polish Patent Office that for an average consumer on the Polish market the trade mark Bien Dong is not descriptive. Bien Dong is indeed a foreign name and it is not questioned that in Vietnamese it means the South China Sea. However, the Court concluded that a foreign word devoid of distinctive character or descriptive in respect of the filed goods or services in that language can be registered as a trade mark in Poland if the consumers are not able to understand the meaning of the word.
The verdict is in line with the judgment in Matrazen Concord from the Court of Justice of the EU and it confirms the practice of the Office in respect of foreign names registered as trade marks in Poland.
The judgment can be appealed to the Supreme Administrative Court.
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| Monika Wieczorkowska
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Patpol
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