Letters of consent no longer much help in trademark registration

Based on recent court rulings, the Polish Patent Office will no longer register a trademark that is identical or similar to an existing trademark—even within the same capital group and with the consent of the holder of the prior mark.

The basic function of a trademark is to distinguish the goods of one business from those of others. For this reason, the Polish Patent Office will examine in a registration proceeding whether a trademark filed for registration is identical or similar to prior marks for the same or similar goods (Industrial Property Law Art. 132(1)(3) and (2)). Registration will be refused if it is found that the same or similar mark has already been registered.

Nonetheless, many identical or similar trademarks coexist on the market, used by various different businesses. In many such cases the businesses agree to the coexistence of identical marks through issuance of a letter of consent—a statement by the holder of an earlier registered mark consenting to registration by a third party of an identical or similar mark.

The previous practice of the Patent Office looked kindly on letters of consent, enabling businesses, particularly within the same capital or organisational group, to register trademarks (e.g. containing a common name or logo used within the group) despite the existence of earlier registrations for similar marks. If the applicant presented a letter of consent from the holder of the prior mark, the Patent Office would generally allow registration of the otherwise conflicting new mark.

However, there was no specific legal basis under Polish trademark law sanctioning the use of letters of consent at the Polish Patent Office. This was pointed out by the Supreme Administrative Court in its judgment of 20 December 2007 (Case No. II GSK 279/07), in which the court stated that no provision governing admission of consent or grounds for consent to be legally effective had been enacted into Polish law. This line of precedent was developed further in subsequent cases before the province administrative courts holding that a letter of consent does not require the Patent Office to register a trademark (judgment dated 27 February 2008, Case No. VI SA/Wa 1548/07) and that where there is a risk of confusion on the part of customers, letters of consent should not influence the decision of the Patent Office on whether or not to register the new mark (judgment dated 20 July 2010, Case No. VI SA/Wa 600/10).

The only exception noted by the court involved Industrial Property Law Art. 133, under which consent of the holder of a prior mark may eliminate the barrier to registration under Art. 132(1)(3) where the mark conflicts with another mark that has expired (Case No. VI SA/Wa 600/10).

Even membership in the same capital group is not supposed to have any bearing on the decision by the Patent Office. In a judgment dated 21 June 2010 (Case No. VI SA/Wa 710/10), the Province Administrative Court in Warsaw stressed that there is no guarantee that capital, organisational or personal ties between the businesses will continue throughout the trademark registration period, and neither can such ties provide a sufficient guarantee of the quality of the product sold under the trademark in question. In other words, the court found, mere membership in the same capital group is not enough to dispel the risk of confusion on the part of customers.

The practice at the Patent Office has changed following these judicial decisions. Departing from broad recognition of letters of consent, the office now states in its policy that letters of consent will continue to be taken into consideration when deciding on whether to register a new trademark, but only as an aid to assessing the risk of confusion.

Nonetheless, the institution of letters of consent has been sanctioned in European Union trademark law. Art. 4(5) of the Trade Marks Directive (No 2008/95/EC of 22 October 2008) provides: “The Member States may permit that in appropriate circumstances registration need not be refused or the trade mark need not be declared invalid where the proprietor of the earlier trade mark or other earlier right consents to the registration of the later trade mark.” Similarly, Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark permits member states to recognise letters of consent under national law.

It may be assumed that the reason Polish lawmakers have not sanctioned the use of letters of consent is concern about the coexistence on the market of trademarks that could potentially be confusing for consumers. While this argument may be valid, it is doubtful with respect to coexistence of trademarks belonging to members of the same capital group. Practice shows that trademarks function properly within groups and do not justify the fears raised by the Polish courts.

Nonetheless, so long as the Polish Patent Office refuses to give letters of consent among related companies the weight that it used to, capital groups need to review their existing policies with respect to administration of their trademark portfolio.

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

This article was published in Rzeczpospolita daily on 7 December 2010.