Proving the fame of a trademark for alcoholic beverages before the Polish courts
The fame or renown of a trademark is not a concept defined in Polish or EU law. The courts try to clarify this notion by pointing to the criteria that must be met for a mark to be regarded as renowned. Although these criteria are already well-established in the EU case law, the Polish courts sometimes add new requirements.
Both the Polish and EU courts agree, however, that in every case—even when the fame of a trademark seems obvious to everyone—it must be proved with evidence. Moreover, due to the expanded protection of renowned marks, as it applies even when there is little similarity with the infringing mark and the goods differ, the standard for the required evidence is high. In the case of trademarks registered for alcoholic beverages, proof of renown is objectively harder. This is primarily due to the limitations on advertising in force in many countries, including Poland, which narrows the range of available evidence. But despite such difficulties, demonstrating the renown of a trademark for alcoholic beverages is possible. This is demonstrated by cases where the courts have found names of vodkas or whiskies to be famous.
EU and Polish courts don’t assess the renown of trademarks uniformly. According to the EU courts, fame is determined on the basis of a quantitative criterion, i.e. based on the level of familiarity among the target customers for the goods or services bearing the trademark. The prior trademark must be known to a significant proportion of the audience, but it cannot be required that the trademark be known by some specific percentage of the audience. Any associations with the quality of the product bearing the mark are irrelevant for finding that the prior mark is renowned. Quality may only be relevant for evaluating the possible loss to the holder of the renowned mark or gains obtained by the holder of a mark similar to an earlier renowned mark.
The Polish courts regard renown somewhat differently. In recent years, the Polish courts, led by the Supreme Court, have developed a definition of a renowned mark in which renown is determined on the basis of mixed quantitative and qualitative criteria. The renown of a mark means its power of attraction, its advertising value, and its capacity for stimulating sales of goods bearing the mark. A renowned trademark is thus a trademark known to a significant proportion of the target audience for the goods and services bearing the mark, which also has great appeal and advertising value resulting from its long-term use, intensive promotion, and firmly established belief in the awareness of the audience of the outstanding characteristics of the goods bearing the mark.
This definition is applied by the Polish common courts considering trademark infringement. An exception is the EU trademark courts (i.e. designated units of the Warsaw Regional Court and the Warsaw Court of Appeal), which entirely follows the guidelines from EU case law requiring reliance only on the quantitative criterion of familiarity with the trademark.
But because most cases involving infringement of renowned trademarks are considered by the common courts, and the final instance for appeals from rulings by the EU trademark courts is the Supreme Court of Poland, a mixed definition of a renowned trademark is regarded as predominant. This in turn directly affects the evidence that the proprietor of the mark must present in court to demonstrate the fame of the mark and infringement.
Because the quantitative criterion is not rejected by the Polish courts, the proprietor of the mark must demonstrate the level of familiarity with the mark among target audiences.
Like the EU courts, the Polish courts require the proprietor of the mark to present evidence demonstrating the frequency, geographic range and period of use of the mark, its market share, and the amounts spent on promoting the mark. Thus, regardless of what goods or services the mark is registered for, it is helpful to present any contracts or orders with ad agencies, designers or patent attorneys concerning development of the mark or research on the distinctiveness of the trademark. Invoices confirming introduction of the first products onto the market, a list of shops and locations where the product is available, and the sales results are also desirable. Apart from the expenditures on promotion of the trademarked products referred to above, information on the type of advertising and promotional campaigns conducted, and the place and frequency, is also relevant, as it can show what portion of the target audience would encounter the mark.
In the case of trademarks registered for alcoholic beverages, advertisement of the products is prohibited or restricted by the applicable regulations. Providing information about sponsorship of sports events or concerts is also greatly limited. Complete freedom to promote alcoholic beverages applies only at locations conducting exclusively sale of alcoholic beverages and points of sale that are also locations for consumption of alcoholic beverages. For this reason, any materials concerning promotional campaigns conducted for example at clubs, restaurants, pubs or cafés will be helpful for demonstrating familiarity with a trademark registered for alcoholic beverages among a large portion of consumers.
Under the latest case law, great evidentiary weight is also given to market research commissioned by the proprietor of the mark, depicting the level of recognition of the trademark. In the Supreme Court’s view, such market research is treated as a private opinion and an element of the party’s litigation stance as to the facts and their legal assessment. Arguments asserted in a private opinion can also serve as grounds for showing the need for an opinion from a court-appointed expert. But the recent rulings indicate that such private evidence cannot be ignored by the court; to the contrary, it should be carefully considered by the judges.
Thus the range of evidence showing familiarity with a trademark is very broad. Unfortunately, however, in the view of the Polish courts such evidence is sometimes regarded as insufficient to prove the fame of a trademark. A renowned mark must also possess certain qualitative characteristics. The courts indicate prestige, appeal, advertising value, and a belief among audiences that the trademarked goods have outstanding properties.
In the case of trademarks registered for alcoholic beverages, quality is generally not measurable by objective criteria. Properties of taste and aroma fall within the consumer’s individual judgment. Nonetheless, even in the case of this category of products, a range of evidence can be gathered demonstrating at least indirectly that the product has a high reputation. Such evidence includes more specifically awards for alcoholic beverage brands for exceptional taste, unique packaging, or rankings of the most valuable or best-selling brands, where the trademark in question wins a high position. High rankings of the brand by independent ratings institutions can also be persuasive. Certainly the high quality of an alcoholic beverage can be demonstrated indirectly by its relatively high price. The history of the distillery, brewery or cellar, and the longevity of the recipe and production methods, surrounding the brand with an aura of specialness and prestige, can also have probative value.
Thus, as compared to the EU courts, the Polish courts somewhat raise the evidentiary bar for demonstrating the fame of a trademark. Apart from evidence showing the familiarity with the brand among target consumers of the goods, the Polish courts require additional arguments and allegations demonstrating the particular quality of the trademarked goods. Thus the status of a renowned trademark will be awarded by the Polish courts to alcoholic beverages that are not just well-known, but also enjoy recognition and a good reputation among consumers, evoking the prestige, exceptionality and exclusivity of the product. For these reasons, renown is much easier to prove in the case of marks registered for Scotch, bourbon, brandy or champagne, and harder in the case of trademarks for cheaper, mass-market beverages like beer or table wines. In the case of vodka, the Polish courts tend to find renown in the case of certain brands, even though the product itself is regarded as mass-market. In any case, the proprietor of the trademark must gather evidence regularly and thoroughly.
Katarzyna Pikora, legal adviser, Intellectual Property practice, Wardyński & Partners
