Distinctive character of a trademark
To obtain protection for a trademark the owner must prove that a sign has a distinctive character, i.e. it is not merely descriptive. But it is often unclear whether this is the case.
A trademark can be any sign capable of distinguishing goods or services. The right of protection for a trademark cannot be granted if it consists exclusively of elements that may serve in trade to indicate a type of goods, their origin, quality, quantity, value, intended use, method of manufacture, composition, function or suitability (Art. 1291(1)(2)–(4) of the Industrial Property Law). Nor may it consist solely of elements which have become part of everyday language or are customarily used in fair and established business practice.
There is no statutory definition of the distinctive character of a trademark. While examining it, it is necessary to consider, first, whether the sign is capable of performing the function of a trademark at all (abstractly) and, second, whether the sign is capable of performing the function of a trademark for specific goods (concretely) (Supreme Court of Poland judgment of 4 December 2002, Case III RN 218/01).
In some cases, the assessment as to whether the sign has a distinctive character is not obvious and the answer is ambiguous.
The Patent Office of the Republic of Poland refused, for example, to grant the right of protection to the trademark “Absorbetka kolorów” (literally “colour absorbent”) (Z.451522) for goods in Classes 1, 3 and 21 (including fabric softeners and laundry detergents for removing dirt and stains), claiming that this term would not distinguish the product from other goods in circulation. According to the Patent Office, it is clear to an average consumer that the term “absorbent” is derived from the word “absorption,” i.e. combined with the word “colours” it will mean “colour absorbent.”
However, the court disagreed that the sign Absorbetka Kolorów is descriptive and directly indicates the nature and characteristics of the goods. In the court’s view, the Patent Office did not clarify the product in question and the characteristics of the sign in question, contrary to the “specific descriptive rule” and the “directness of the description” requirement. A descriptive sign can only be a sign that “indicates the specific characteristics of the goods for which it is intended” and “communicates information on the characteristics of the goods in question directly, clearly and unequivocally, so that it can also be understood directly and not by association.” Signs are not descriptive when they “may be used only by indirect inference to designate the characteristics of the goods” (judgment of the Province Administrative Court in Warsaw of 28 February 2018, Case VI SA/Wa2136/17).
In case of registration of the trademark “Ciepła podłoga” (literally “warm floor”), intended to stand for heating mats, the court agreed with the Patent Office that the sign does not clearly and unambiguously convey information about the characteristics of the heating mats. It only indicates the results and the effects of using these goods. In this case, the association is not straightforward and the mark cannot be denied a distinctive character, since only those signs which consist exclusively of signs which may serve, in trade, to transmit information on the characteristics of goods should be considered descriptive (judgment of the Province Administrative Court in Warsaw of 14 November 2006, Case VI SA/Wa 1705/06).
Descriptive trademarks also do not include signs which consist of both descriptive and non-descriptive elements. In case of a magnesium product with vitamin B6, whose name derives from the combination of the names of both components, the court held that the presence of descriptive elements in the trademark (e.g. a special setting of a word or a symbol indicating a certain characteristic of the product) does not necessarily make its descriptive. For the distinctive character of the trademark, it is important that “in the collective consciousness of the recipients of the product, a clear association develops between the sign and the product, distinguishing it as originating from a given trader” (Wrocław Court of Appeal judgment of 30 December 2008, Case I ACa 1047).
Lack of distinguishing power
Descriptive trademarks are signs consisting exclusively of descriptive elements.
The trademark “miodula ognista” (“fiery miodula”) intended for alcoholic products has no distinctive character. In Polish, the word miodula is an indication of a type of alcoholic product which appears on the list of traditional products of the Ministry of Agriculture and Rural Development as a vodka made on the basis of spirit, honey and water, and the word ognista (“fiery”) is an indication of the power of the product in the minds of consumers. Thus, the combination of the two words has only a literal meaning, and therefore does not have any features that would be remembered by consumers and does not allow the product to be linked to only one undertaking (judgment of the Province Administrative Court in Warsaw of 9 October 2007, Case VI SA/Wa 1451/07).
Similarly, the descriptiveness of the sign “polbar” as a trademark to designate “poultry, eggs, meat, animal feed, animal husbandry products, and veterinary aid” was accepted. The court held that since the name “polbar” has for many years been identified with a particular breed of hens and there is no graphic sign that could be associated with a particular product, the sign has a descriptive character (judgment of the Province Administrative Court in Warsaw of 30 April 2008, Case VI SA/Wa 262/08).
The Patent Office refused to grant the right of protection to the trademark “PsychoDietetyka” (literally “PsychoDietetics”) for, among other things, consulting services in the area of personal development. This expression, a neologism resulting from the combination of “psycho-” and “dietetics,” was not considered to be grammatically original and, as a result, the meaning of the combined elements remained legible to the average reader. Since the word “psychodietetics” entered everyday language as a term for a certain area of knowledge and interactions between psychology and dietetics, this designation should be considered descriptive (judgment of the Province Administrative Court in Warsaw of 15 February 2012, Case VI SA/Wa 1806/110).
There is, however, a category of trademarks which obtain exclusive rights even though they meet the conditions for descriptive trademarks. This is possible when a sign which initially did not have the characteristics of a trademark (e.g. it was descriptive) becomes so popular that it begins to be associated by consumers with a particular trader. It is then said to have acquired “secondary meaning.”
This situation is regulated by Art. 130 of the Industrial Property Law, which states that the right of protection may not be refused on the grounds of lack of distinctive character of the trademark if, prior to the date of filing the trademark application with the Patent Office, the trademark has acquired, in consequence of its use, a distinctive character in normal trading conditions.
The acquisition of secondary meaning must be proved, however, which in practice is not easy. The evidence to be provided by the owner of such a trademark may include, for example:
- Opinion polls showing that the word is associated with the goods and services for which it is intended originating from the proprietor of the sign
- Commercial evidence (e.g. invoices)
- Evidence concerning any means of advertising, the length of use of the sign at the date of application, the intensity of use of the sign, the territorial range of recognition, etc (judgment of the Province Administrative Court in Warsaw of 25 September 2008, Case VI SA/Wa 1144/08).
It is not easy to convince the Patent Office that a descriptive sign, as a result of its popularity and wide knowledge among consumers, has become a sign associated with a specific business. However, for example, the proprietors of the registration of the colour orange (trademark R.271601) and the colour violet (trademark R.310678) did succeed in doing so for designation of mobile network services.
It is necessary to examine carefully each time whether a trademark has a distinctive character. No right of protection should be granted for a descriptive sign, as this would restrict the freedom of economic activity. The granting of registration capacity cannot serve the purpose of monopolisation of public domain designations by a single business. On the other hand, if a business is denied registration of a sign because it is descriptive in nature, the Patent Office must fully justify that the sign is descriptive in its entirety (and to what extent), and whether it is unambiguously associated with certain goods.
However, it may happen that a descriptive sign is so intensely used and popular even before the application for protection that it acquires a secondary meaning. But this requires the proprietor to make a sound and persuasive case to the Patent Office.
Marzena Białasik-Kendzior, Intellectual Property practice, Wardyński & Partners