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11 May 2015
Industrial Property Law
Patent Office decisions
Viewpoint of courts
This update examines the trademark protection of a product's shape and packaging under Polish trademark law. The criteria that the Patent Office applies for the registration of marks that consist of a product's shape or packaging and the viewpoint of the courts concerning the scope of protection of such trademarks from infringement, are analysed below.
The Industrial Property Law complies with the EU Trademarks Directive (2008/95/EC) and sets out that the shape of a product or its packaging may qualify for trademark protection if:
Pursuant to Article 120(2) of the Industrial Property Law, a trademark may be any mark that is capable of being represented graphically, if it is capable of distinguishing the goods or services of one undertaking from those of another. Article 131(2)(6) of the law provides that a sign can be registered as a trademark if it:
Under this European-harmonised trademark law, rules regarding signs which consist exclusively of shapes that are indispensable – for technical or other reasons – are in place to ensure that those signs can never obtain protection, as doing so would prevent others from competing in specific markets irrespective of the level of distinctiveness they may have acquired through use.
Few Patent Office decisions have assessed the functional features of trademarks. Among its decisions, the Patent Office refused to register the following shapes of products on absolute grounds for refusal because of a functional feature:
Z- 215529 (Classes 21, 31)
Z-308325 (Class 09)
Z- 364726 (Classes 11, 16)
Z- 220995 (Class 32)
Conversely, the Patent Office registered the following product shapes and reasoned that there were no grounds to refuse them on the absolute ground of functionality or substantive value of a shape:
R-137173 (Class 12)
R-102131 (Class 33)
R-169658 (Class 33)
In its July 18 2014 judgment the Voivodeship Administrative Court in Warsaw dismissed Danone's appeal of the Patent Office's decision in which it refused to register the specific dual chamber package of Danone's Fantazja yogurt as a trademark. The court stated that the shape of the yogurt packaging was a technical feature and that the dual chamber package had functional significance. Further, the court stated that trademark registration in such a case would circumvent the limited time of patent protection, which is a means to protect technical features.(2)
IR-700040 (Classes 5, 29, 30 and 32)
In its September 23 2013 judgment the court concluded that the absolute grounds for refusal "exclusively result from the nature of the good itself", meaning that the shape is not separate from the sign per se. Further, the court observed that the absolute ground of functionality or substantive value of the shape applies only to three-dimensional (3D) trademarks, and not to other types of sign (eg, figurative or position marks).(3)
In its May 29 2005 judgment the Supreme Administrative Court observed as follows:
Further, Polish jurisprudence elaborates on the permissible usage and scope of protection of 3D trademarks. In its January 21 2014 judgment the Court of Appeal ruled that:
In a controversial July 5 2012 judgment concerning infringement claims, the Supreme Court concluded that the holder of the following trademark could not prohibit other traders from using the mark:
IR-736770 (Class 29)
Alleged infringer's product
The Supreme Court indicated that a trademark monopoly does not confer a mere idea or its source; rather, it confers a concrete representation as presented in the form of a trademark. Therefore, presenting a figurative representation of a 3D trademark on packaging does not constitute trade use and thus the trademark was not infringed in this case.(7)
In trademark decisions that invoke functionality as a ground for refusal, features of technical necessity lead to the majority of rejections. In Poland, as in other EU member states, the courts and the Patent Office seem to be wary of far-reaching consequences and exercise caution when applying exclusion clauses. This approach has several practical implications:
For further information on this topic please contact Szymon Gogulski or Agnieszka Sztoldman at Soltysiński Kawecki & Szlęzak by telephone (+48 22 608 7000) or email (email@example.com or firstname.lastname@example.org). The Sołtysiński Kawecki & Szlęzak website can be accessed at www.skslegal.pl.
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