MIKSEŁKO VS. MILKSEŁKO ŁACIATE

Ruling of the Supreme Administrative Court of 10 April 2014 (II GSK 255/13)

This case involved a clash between marks serving to identify fats comprising a mixture of butter and vegetable fats. In 1996, the word mark MIKSEŁKO was registered. This is a fantasy composition suggesting that the goods it identifies are a mixture of fats with the addition of butter. In 2008, a competitor of the owner of the first sign successfully registered the mark MILKSEŁKO ŁACIATE. That mark is a word-graphic mark consisting of two elements. The second is very well known as an independent mark used to identify milk and a line of goods produced from cow’s milk. The first element, by using the English word ‘milk’, emphasizes that the products are derived from milk, while the first element as a whole suggests that butter is contained in products bearing the mark.

The Polish Patent Office decided to invalidate the mark MILKSEŁKO ŁACIATE. First, it determined that the goods for which both signs were registered are virtually identical. More importantly, however, it found that the similarity of the earlier mark to the first element of the later mark is so strong that the risk of consumers being misled cannot be ruled out. In the Patent Office’s view, the first element of the mark is dominant, and is therefore compared with the earlier mark. The Patent Office also pointed out that, in the case of a conflict between an earlier word mark and a later word-graphic mark, the graphic elements are not considered when assessing the similarity of the marks in dispute.

That decision was overturned by the Provincial Administrative Court in Warsaw. In its ruling, the PAC found that the Patent Office had not duly demonstrated why it had deemed that the MIKSEŁKO element of the invalidated mark dominated over the whole. Further, the court pointed out that the additional element ŁACIATE, which is an autonomous trade mark, eliminated the risk of confusion.

The ruling by the Provincial Court became the subject of a cassation appeal to the Supreme Administrative Court. That court fully shared the legal assessment made by the Polish Patent Office. In addition, it drew attention to the reprehensibility of adding one’s own trade mark to marks similar to those registered by a competitor. On the one hand, this may really eliminate confusion, but on the other (which in the Supreme Administrative Court’s view was the prevailing factor), such a practice is harmful in that it may eliminate a previously registered mark from the market, causing it to be appropriated dishonestly through the addition of another mark whose distinctiveness is not contested. As consequence of the above, the ruling of the Provincial Administrative Court was overturned, and the decision of the Polish Patent Office became final.