The Supreme Administrative Court in Warsaw has confirmed in a recent judgment that in a court case there is a requirement to prove that a trademark is a trademark with reputation – the judgment comes in a case concerning a claim for invalidation of a trademark. The court also said that to rely on protection of trademarks with reputation, one of the types of infringement of reputation has to be demonstrated, which means proving that registration of the disputed trademark would give the proprietor unfair advantage or be detrimental to the distinctive character or repute of the trademark.

The judgment was issued in a case concerning the pharmaceutical market, and specifically popular OTC painkillers in class five of the Nice Classification. The claim concerned the trademark Ibuvit C, and claim for invalidation was filed with the Polish Patent Office, citing grounds which included the earlier trademarks IBUM and JUVIT.

The applicant argued that the disputed trademark was similar to earlier trademarks, and that the goods bearing the trademarks being compared were also similar or even identical. He also claimed that the earlier trademarks were renowed trademarks.

The Polish Patent Office compared in a global manner the trademark “IBUVIT C” and the earlier “IBUM” and “JUVIT” trademarks, and found that there was a common element between the trademarks “IBUVIT C” and “IBUM”, which was “IBU-“, while even though the trademarks “IBUVIT C” and “JUVIT” shared the element “-VIT“, the trademarks being compared also contained different elements, which overall rendered the compared trademarks sufficiently distinctive. The Office also found that the applicant had submitted evidence confirming reputation, but had not proven that registration of the disputed trademark would give the proprietor unfair advantage or be detrimental to the distinctive character or repute of the IBUM trademarks. In the view of the Polish Patent Office, these types of infringement had not been proven, for example by demonstrating the unfair advantage gained by the proprietor, or a decline in sales of the applicant’s goods as a result of presence on the market of goods bearing the disputed trademark.

The applicant only stated that ‘the proprietor must have encountered goods bearing the IBUM marks with reputation before applying for the disputed trademark‘. As it follows, the applicant had evaluated the level of awareness of the proprietor, and not facts relating to the position of the applicant’s goods on the market. The Polish Patent Office also concluded that the applicant had not demonstrated that the proprietor had acted in bad faith when applying for the disputed trademark. As a result, the Office found the  claim for invalidation of the disputed trademark to be unfounded. Both the Voivodship Administrative Court, which reviewed an appeal lodged against the Polish Patent Office’s decision, and the Supreme Administrative Court as the highest instance, concurred with the Polish Patent Office.

The Supreme Administrative Court emphasized that the proprietor of the earlier trademark with reputation was required to present substantiation of a future, non-hypothetical, likelihood of unfair advantage or detriment. According to CJEU case law: ‘the proprietor of the earlier trademark must adduce proof that the use of the later mark ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark’[1].

Thus the proprietor is required to demonstrate that use of the later trademark does indeed have an adverse effect on the earlier mark with reputation, or that there is a likelihood that this will occur in the future.

Consequently, it is also not sufficient to merely suspect that the use of the later trademark might result in the taking of unfair advantage of the distinctive character or the repute of the earlier trademark[2]. Moreover, in Intel Corporation Inc. C-252/07, the CJEU pointed out that ‘proof that the use of the later trademark is or would be detrimental to the distinctive character of the earlier trademark requires evidence of a change in the economic behaviour of the average consumer of the goods or services for which the earlier trademark was registered consequent on the use of the later trademark, or a serious likelihood that such a change will occur in the future’[3].

In conclusion, the owner of an earlier reputed trademark should demonstrate one of the three forms of interference with the right of protection of a reputed trademark, i.e. the likelihood of unfair advantage, damage to the distinctive character or reputation of the earlier trademark, as it is the owner who bears the burden of proof under the provisions of the Polish Act.The ruling is further confirmation of the extent of the burden of proof that rests with a proprietor that relies on provisions on protection of trademarks with reputation. Merely providing proof of reputation is not sufficient.

[1] Judgment of the Court (First Chamber) of 27 November 2008.

Intel Corporation Inc. v CPM United Kingdom Ltd, EU:C:2008:655, point 37.

[2] R. Skubisz, System Prawa Prywatnego. Prawo własności przemysłowej, volume 14B, Warsaw 2017, p. 810.

[3] Judgment of the Court (First Chamber) of 27 November 2008.

Intel Corporation Inc. v CPM United Kingdom Ltd, EU:C:2008:655, point 81.