Dr Monika Żuraw

Tiffany to shoemaker: don’t tread on me

A renowned trademark may be protected in Poland even if the mark is not used or registered here.

In July 2008 the Province Administrative Court in Warsaw issued a judgment (Case No. VI S.A./Wa 237/08) holding that the international character of the renown of Tiffany’s trademarks justifies invalidation of the registration of a similar mark by another company.

Tiffany and Co., based in New York, designs, produces and sells luxury goods, including jewellery made from precious stones and metals. Tiffany’s business model is based on a limited distribution network, and in Europe it has just a few boutiques in selected cities. Tiffany’s does not offer its products in Poland, and it has not registered its trademarks here. Nonetheless, the trademarks are familiar to Polish consumers. One source of the fame of the brand is the film version of Breakfast at Tiffany’s, starring Audrey Hepburn.

Tiffany and Co. filed a motion with the Polish Patent Office to invalidate the registration of the trademark TIFFANY R-128063, issued to Tiffany & Broadway Inc., a division of Texpol Corporation in Houston, Texas, for shoes. The motion to invalidate the mark was based on an allegation of infringement of Art. 8(1) of the Trademark Act of 31 January 1985; in other words, the registration was issued in violation of public policy (“principles of social coexistence”).

The province administrative court held that the failure to conduct activity in Poland does not deprive Tiffany’s of standing to challenge the registration of a trademark identical to its own, which was neither registered nor used in Poland. The court also shared the view of the Polish Patent Office that the Tiffany trademark enjoys international renown with respect to jewellery, and in light of the transnational nature of its renown it is not necessary to make a separate showing of renown in Poland. After all, a demonstration of international renown of the mark also includes Poland.

In July 2009 the Supreme Administrative Court reversed the previous judgment (Case No. II GSK 1111/08) and remanded the case for reconsideration by the province administrative court. The Supreme Administrative Court held that there is no protection for international renown as such, and it is necessary to demonstrate that the trademark is renowned in Poland. Significantly, the Supreme Administrative Court did not dispute that Tiffany’s trademarks are renowned and entitled to protection even though they are not used in Poland. Maintaining this line of precedent will enable protection of brands that deliberately limit their scale of operations—a typical business model for top-shelf luxury goods. The subject of protection is then the very renown of the trademark, that is, the prestige that the mark enjoys in the eyes of consumers.

The proceeding is pending, and the case has been submitted to the Patent Office for reconsideration.