Fighting for control over the alcohol market in Poland

May 14, 2019

Numerous disputes over known Polish alcohol brands have taken place recently. Competitors often attempt to invalidate the trademark or force it to expire, e.g. Wiśniówka, Krupnik, Starka or Sophia, claiming they do not have trademark distinctiveness.

One method to gain the rights to use a known trademark, registered to a competitor, is demanding its expiry due to so-called degeneration. According to art. 169, item 1, point 6 of the Industrial Property Act dated 30 June 2000 (“IPL”)a trademark expires due to the loss of distinct elements as a result of actions or negligence of the right holder, that lead to the mark becoming a common mark, consisting only of elements that in trading can only be used to signify, in particular, a type of the item or its other properties. If the Patent Office of the Republic of Poland declares a trademark expired, other market players can use it freely. Such a dispute was raised regarding, inter alia, the trademarks of Krupnik and Wiśniówka – known Polish alcoholic beverages, as well as the trademark Sophia related to Bulgarian wines.

The Office and administrative courts are correct to recognise that a degeneration of a trademark can be declared only in specific cases. Two criteria listed in art. 169, item 1, point 6 need to be met, i.e. generic or descriptive meaning of a trademark functioning in the market, or actions or negligence of the right holder, which led to the trademark losing its distinctiveness. The key factor here is the reception of the trademark by consumers, and not, for example, definitions in dictionaries or other publications.

The party applying for trademark expiry needs to submit proof of how the trademark is seen by consumers, i.e. if it is seen as an indicator of originating from a certain source, or a generic mark. It then seems necessary to conduct market research for every case. Jurisdiction concerning assessing the results of this research is scarce. In particular, it has not been specified what quantitative criterion dictates that a trademark is considered degenerated. It is clear that every case needs to be assessed while taking all of its specific circumstances into consideration, while all uncertainties should be decided in favour of the trademark right holder.

With respect to actions taken by the trademark right holder, it is important not to neglect using their trademark and enforcing the rights to it. With this in mind, the main argument of applicants for trademark expiry is use of the trademark by numerous market entities. In this case the right holder needs to provide proof that a competitor using the trademark was an infringement, which he prevented.

It stems from the above that it is not enough to simply register a trademark to fully benefit from it. It needs to be used and protected from third party infringements. In the case of trademarks that risk degeneration, it is also necessary to monitor press and dictionaries to prevent them from being degenerated. It is also possible to request that there is a note that a term placed in a dictionary is a registered trademark (art. 296 ust.13 IPL in the act enacted on 20  February 2019 r.).

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