Goods and the service of selling them-a trademark sandwich


Under trademark law, the service of selling products is considered inseparable from the products themselves.

The basic function of a trademark is to distinguish the goods or services of one producer from those of others. Thus, under the Polish Industrial Property Law, a trademark will not be registered if the same or a similar mark has already been registered for the same or similar goods or services (Art. 132(1)(3) and (2)). According to the case law from the Polish courts, in line with the European Court of Justice precedent, the similarity of goods or services is determined by whether customers might think that they come from the same producer (likelihood of confusion). And, as the ECJ has held, when assessing the similarity of goods or services, “all the relevant factors relating to those goods or services themselves should be taken into account,” including “their nature, their end users and their method of use and whether they are in competition with each other or are complementary” (Canon v MGM, Case C-39/97, judgment of 29 September 1998).

The concept of “complementary goods” is recognised in the case law to mean “goods which are closely connected in the sense that one is indispensable or important for the use of the other so that consumers may think that the same undertaking is responsible for the production of both goods.” (Sergio Rossi SpA v OHIM, Case T-169/03, judgment of 1 March 2005).

Similarly, the issue of “complementary services” involving sale of goods, and the specific goods that are being sold, has been considered by the Polish Patent Office and the Polish courts. Following EU precedent, the Patent Office refused to register a trademark for the service of selling clothing (“the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in retail stores or wholesale outlets offering lingerie, clothing and footwear”—part of Class 35 of the International Classification of Goods and Services for purposes of trademark registration under the Nice Agreement) because there was a similar trademark previously registered for goods that included clothing and footwear (part of Class 25). On appeal, the administrative court upheld the ruling by the Patent Office, holding that the similarity of goods from Class 25 and services from Class 35 was indisputable, because a producer of lingerie, clothing or footwear could easily operate a boutique offering its own brand of goods (Province Administrative Court in Warsaw, judgment dated 23 October 2007, Case No VI SA/Wa 1413/07).

The Patent Office took a similar line when it partially refused registration of a trademark for the service of retailing “cosmetic, dermatological and parapharmaceutical products.” In this case, the barrier was prior registration of the same trademark for goods in Class 3 (cosmetics) and Class 5 (pharmaceuticals). Again, the administrative court upheld the determination by the Patent Office that the services of selling the goods were inseparable from the goods themselves, and the trademark previously registered for the goods was closely connected with the service of selling those goods, for which registration was sought later. The Patent Office and the court stressed that sales services under the same brand might be offered at locations where goods under the previously registered brand were offered. For example, the goods might be sold at department stores, but the producer could also operate its own retail outlets, or enter into distribution agreements authorising the distributors to use the trademark for their sales services. This would suggest the existence of an affiliation, such as intermediation, between the seller and the producer of the goods (Province Administrative Court in Warsaw, judgment dated 26 January 2011, Case No. VI SA/Wa 1850/10).

In another recent case, the court upheld a similar decision by the Patent Office involving services of selling paper goods under a trademark previously registered for the specific paper goods (Class 16), because the producer of the trademarked goods might sell them in stores with the same name (Province Administrative Court in Warsaw, judgment dated 18 March 2011, Case No. VI SA/Wa 2379/10).

The principle cuts both ways. Prior registration of a Community trademark for “agency services involving retail and wholesale of foods to others” was held to bar subsequent registration of the same trademark for a line of food products under classes 29 and 30. The court held that the Patent Office had correctly determined that the service of selling food products was “functionally connected” with the food products. The goods and services are thus complementary, and serve the same purpose: satisfying human hunger (Province Administrative Court in Warsaw, judgment dated 23 July 2009, Case No. VI SA/Wa 334/09).

Nonetheless, in another case the Patent Office took a different view. The holder of a prior trademark for clothing (Class 25) objected to registration of a later trademark for the services of “commercial intermediation with respect to clothing.” The Patent Office found that operating a clothing store is a service unlike the clothing itself. The courts agreed, holding that “services of commercial intermediation may be supplementary to the activity of the producer of the clothing, but there is no risk of confusion in this instance, because the trademark registered for the clothing is not a service mark, and using the related services is connected with making determinations concerning the clothing to attract the customer’s attention.” (Province Administrative Court in Warsaw, judgment dated 16 January 2009, Case No. VI SA/Wa 1671/08, and Supreme Administrative Court judgment dated 23 March 2010, Case No. II GSK 533/09).

While the practice concerning complementary trademarks for goods and sales services has not been uniform, the predominant view appears to be that the service of selling trademarked goods under the same or a similar brand causes a risk of confusion. It is easy to imagine that the customer will link a store operated under the same brand as the goods sold in the store, thinking that they derive from a common commercial source.

Marzena Białasik-Kendzior, Intellectual Property practice, Wardyński & Partners