A trade mark for Columbia was recently registered, for goods in class
34 (tobacco products and their accessories) and services in class 35
(wholesale and retail sale of tobacco products).
An opposition was filed by the owner of the trade mark Columbus, also
for tobacco products. It argued that the two marks were similar on all
three levels of perception, visual, phonetic and conceptual, and risked
misleading consumers. The owner of the later registration claimed that
consumers of the goods and services easily recognise different cigarette
brands and do not confuse them, so the two trade marks would not be
Both the Polish Patent Office and in the further instance, the
District Administrative Court shared the view of the owner of Columbia
and considered the opposition groundless. Finally, the matter reached
the Supreme Administrative Court, which in its judgment on June 15 2011
criticised the District Administrative Court, saying that while
examining the trade marks it should have been looking for similarities,
not differences, according to court jurisprudence.
The Supreme Administrative Court also said that the lower court did
not consider that consumers pay more attention to the first part of a
word that constitutes a trade mark. Additionally, the Supreme
Administrative Court claimed that the District Administrative Court
uncritically accepted the Polish Patent Office's standpoint that the
Polish consumer of tobacco accessories will associate the first part of
the trade mark, "columb-" , with cities in the United States and not
with the traveler Christopher Columbus, who brought tobacco to Europe
and spread the habit of smoking.
Another point made against the District Administrative Court was that
it did not take into consideration the argument raised by the opponent,
that the similarity between the trade marks and consequently the risk
of misleading consumers also applies to a risk of associating the
manufacturers of the goods and services.
The matter returned to the District Administrative Court which, in
accordance with the legal interpretation of the Supreme Administrative
Court, revoked the decision of the Polish Patent Office, dismissing its
judgment of September 28 2011.
The District Administrative Court stated that the matter requires
detailed examination of the argument that the Polish consumer will most
likely associate the element "columb-" with the cities in the United
States and not with Christopher Columbus and if so, an appropriate
reasoning should be provided. Additionally, the Court ordered the Polish
Patent Office to take into consideration that a risk of misleading the
consumers as to the origin of goods and services constitutes a bar for
registration. Therefore, such a risk has to be evaluated by the Office
after evaluating the risk of misleading consumers.
In conclusion, the District Administrative Court stated that during
the examination the following order has to maintained: if the goods are
identical, then the similarity of the compared designations has to be
examined and next, the risk of misleading consumers.
The purpose of trade marks' distinctiveness is to help customers to
relate the goods to their manufacturers and to avoid any confusion.
162J Nowoursynowska Str, 02-776 Warsaw
PO Box 168, 00-950 Warsaw, Poland
Tel: +48 22 644 96 57 / 96 59; +48 22 644 96 68 / 97 69;
Fax: +48 22 644 96 00 / 44 02