On 4 August 2009, the company Interton sp. z o.o. (“Interton”) applied for the word-figurative trademark “A ADORATION” – goods from class 3 (cosmetics, including eye shadow, lash mascara, lipstick, fluids, makeup foundation, nail polish). The Polish Patent Office granted a protection to the mark (R-235773). Fast forward to 21 June 2017 (and after a number of oppositions and disagreements), the Supreme Administrative Court provided a ruling dismissing the PPO’s decision.
On 30 March 2012, the company Parfums Christian Dior (“Dior”) filed an opposition with the PPO against the registration of the mark, invoking a prior right to the marks “J’ADORE”, IR-687422, and “J’ADORE”, EUTM 001160886, designated for identical goods. Dior also pointed out that the two marks are formed from the same word root “ADOR” (ADORE/ADORA), with the result that they will be perceived as similar by consumers. According to Dior, the additional elements of the letter “J” and an apostrophe in its marks, and the suffix “TION” in the contested mark, do not eliminate the similarity between the two within the scope of the elements ADORE/ADORA.
Dior also argued that:
- the attention of consumers when comparing the trademarks will be focused on the element ADORE/ADORA, which will be associated with the Polish word “adorować”;
- the mark “J’ADORE” has obtained the status of a renowned mark in Poland;
- the contested decision of the PPO is detrimental to the distinctiveness and renown of the mark “J’ADORE”.
Interton did not agree with the claims raised in the opposition, arguing that similar elements comprise less than half of its sign, and that the mark “A ADORATION” has a dominant graphic element. On 12 March 2014, the PPO dismissed the opposition, justifying its decision by a comparison of the marks on three levels – visual, phonetic and semantic – the result of which was that the marks are not similar in a way that could cause consumers to be misled, although they do share certain elements.
The PPO ruled that since the marks were not similar enough for a risk of confusion to arise, it was not necessary to evaluate the remaining conditions arising from Article 132 par. 2 pt. 3 IPL (regarding a renowned mark).
On 31 March 2015, the Administrative Court in Warsaw issued a judgment in which it found in favour of the complaint and overruled the decision of the PPO. In the view of the court of first instance, the PPO had made an improper interpretation of the above provision, in that it did not discharge its duty to first ascertain whether the earlier mark enjoys the status of a renowned mark, since, if such a circumstance is determined, the assessment of similarity should then be made using other, stricter criteria than an assessment made on the basis of Article 132 par. 2 pt. 2 IPL.
The PPO filed a cassation against that judgement claiming that it should be overruled in its entirety.
In the view of the Supreme Administrative Court, the court of first instance had rightly stated that a correct interpretation of Article 132 par. 2 pt. 3 IPL requires, when considering the identity or similarity of marks, that it should be established whether the earlier mark enjoys the status of a renowned mark. According to the Supreme Administrative Court, in the case at hand, the PPO completely neglected the circumstance of the renowned status of the mark, accepting that, when evaluating the existence of the conditions for refusing to register a trademark provided in Article 132 par. 2 pt. 3 IPL, it is enough to invoke an evaluation of similarity made on the basis of Article 132 par. 2 pt. 2 IPL, without addressing the renown of the mark.
Consequently, in a ruling of 21 June 2017 (case file No. II GSK 2782/15), the Supreme Administrative Court dismissed the PPO’s cassation.