Marzena Białasik-Kendzior

The renown of a famous trademark must be proved

There is no statutory definition of a “renowned” trademark under EU or Polish law, but the concept functions in legal practice, and reliance on a renowned trademark may be an important argument in the event of litigation.

The primary function of renowned or famous trademarks, like other trademarks, is to identify a specific producer as the source of goods. But they also indicate special characteristics of the product, such as its exclusivity or high quality. The notion of “renown” clearly is associated with prestige, trust and uniqueness. Renowned trademarks are therefore especially powerful at attracting customers.

Because of their great attractiveness, renowned trademarks are more exposed to attempts at encroachment than other trademarks. For many, basking in the aura of a famous brand is regarded as a method for winning customers without the arduous labour of building up one’s market position. We know of cases where a renowned trademark previously used only for luxury jewellery began to be used for shoddy footwear—or a trademark that may lawfully be used only for exclusive perfume or clothing suddenly being used to sell pots and pans or promote a hair salon.

We have been tracking these market practices for a long time. One of the earliest cases in Poland occurred in the early 1990s and involved the use of a well-known cigarette brand, Golden American, to apply to coffee. A court in Gdańsk granted interim relief to secure the claim in that case, finding that Golden American was a renowned mark and could not be used for other products.

In many instances the fame of a trademark appears to be public knowledge, and it might seem easy to demonstrate this, but the judicial practice is different. In order for a trademark to be found to be renowned, it must be backed by evidence. The question is what sort of evidence, since there is no direct evidence of “renown.” Such cases also cannot go forward without establishing clearly when the mark became renowned.

The guidelines from EU case law on the nature of the materials and evidence which may be used to prove renown are rather enigmatic. They indicate that a renowned trademark must be known to a significant portion of the target group. And in examining the renown of a trademark, other relevant circumstances should be taken into consideration as well, particularly the market share held by the trademark, the intensity, geographical range and duration of the use of the mark, and the expenditures incurred to promote products with the trademark.

Our practice has shown that in Poland, somewhat different criteria are used, placing greater weight on qualitative features (such as prestige or a positive image of products with the given mark) than the quantitative aspects valued in some other legal systems (e.g. range and intensity of use, and common familiarity with the mark). It is hard to disagree with this approach, since the renown of a trademark often extends beyond the dimensions of the market presence of goods with the given mark. Nonetheless, it is worthwhile to present evidence that includes copies of invoices, financial reports and other commercial documents demonstrating the level of sales and the length of time the brand has functioned on the market. Documents demonstrating the range of use of the mark, e.g. materials documenting the existence of a network of boutiques or distributors, are also relevant. Advertising initiatives should be described as precisely as possible and documented with such materials as broadcast spots, catalogues, brochures and posters. A breakdown of the costs incurred by the owner of a famous trademark in advertising and marketing its products should also be presented.

It is much more difficult to prove qualitative characteristics. It is not easy to convey in a tangible manner the image that consumers have of products or services bearing a certain trademark. Our recent experience demonstrates, however, that for the Polish Patent Office, there is added value in certificates showing that the products have won awards or distinctions in prestigious competitions, as well as documenting the presence of the brand (not necessarily the products themselves) at public events. We have also successfully used reports from various types of rankings of the most valuable brands.

Press monitoring appears to be an important tool for gathering opinions about famous trademarks. Publications in the press—Polish or international—have proved to be valuable evidence, particularly when they stress the uniqueness and fame of the products bearing the given trademark.

The internet should not be overlooked. Much valuable information may be found there, for example on various types of forums where internet users comment freely on specific brands, demonstrating the values they associate with the brand. In one of our cases, the evidence that was considered included printouts from websites demonstrating the existence of fan clubs in Poland whose members were aficionados of our client’s products. This was treated as confirmation of the close associations consumers have with the brand, and in consequence the importance and value of the trademark.

While it may seem an unnecessary hurdle in litigation to have to prove the renown of such famous and universally recognised brands as Coca-Cola, Chanel or Mercedes, it is nonetheless important to rise to the challenge. In such obvious situations the courts typically display a great degree of pragmatism when it comes to evidentiary issues, but a highly formalistic approach may also be encountered. The holder of a famous brand can certainly count on the adversary to try to undermine the renown of the mark by arguing that insufficient evidence of renown has been presented by the holder.

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