The case of a challenged trademark turned on the assessment of similarity between it and the well known luxury brand’s mark, as Agnieszka Skrzypczak reports.
Swiss company Cartier International is the owner of a number of trademark registrations in Poland for the word ‘Cartier’. One such mark is registration number 51277, which has priority from September 6, 1972. It covers goods in Class 3 such as “perfume extracts, toilet water, make-up powder, rouge, lip liners, mascara, eyebrow pencils and perfumery products”.
Another registration is a word-figurative trademark for ‘Cartier’, with the registration number 59579, which has priority from February 18, 1982. It covers the following goods in Class 3: perfumes; perfumery; toilet water; ethereal oils; beauty care preparations; cosmetics; creams; powders; make-up preparations; milk for toilet purposes; lotions; toilet soaps; shampoos; toothpaste; bath salts; bath oils; sunscreen and sun-tanning preparations; all the aforesaid goods in solid, liquid or spray form.
On June 30, 2006, Polish company Marek Asenkowicz Firma Handlowa A&S Parfume Factory, from Katowice, filed an application in the Polish Patent Office (PPO) for the word-figurative trademark ‘Chatier Purl’, with an application number Z-312586.
Application number Z-312586
The mark was subsequently granted the right of protection for the following goods in Class 3: cosmetics; cosmetic balms; skin creams; cosmetic creams for face and hands; cleansing creams for cosmetic purposes; beauty masks; cosmetic milk, tonics; cosmetic gel; peelings; shampoos; lotions; colourants; conditioners; foams; hairspray and hair gels; cosmetic soaps; deodorant soaps; lipsticks; cosmetic pencils; pastels and eye shadows; mascara; cosmetic powders; perfumery; deodorants for personal use; eau de cologne; toilet and scented water; aftershave; nail varnish; cosmetic kits for children and adults; cosmetic kits for women and men; bubble bath; bath oils; sun-tanning oils; talcum powder for cosmetic purposes; antistatic preparations for household use; cleaning preparations; bath cosmetics; deodorants for household use; washing preparations; shoe polish; floor and furniture polish; toothpaste and tooth powders and liquids; laundry preparations; windscreen cleaning liquids; and petroleum jelly for cosmetic purposes.
Cartier filed a request to cancel the ‘Chatier Purl’ trademark, basing its claims on Article 132, clause 2, points 2 and 3 of the Polish Law on Industrial Property, in connection with Article 131, clause 2, point 1—on the basis of similarity of the trademarks and goods, and bad faith filing.
According to Cartier, ‘Chatier Purl’ is similar to its trademarks to the extent that it may mislead consumers as to the origin of goods under the marks in question. Besides, Cartier believed that the grant of ‘Chatier Purl’ may bring the Polish company undue profits and is detrimental to the renowned character of the ‘Cartier’ trademarks, as it weakens their strength and attractiveness. Consequently, Cartier said, it would result in the company losing consumer trust. It also said that ‘Chatier Purl’ was filed in bad faith.
In response, the owner of the ‘Chatier Purl’ trademark, Marek Asenkowicz, petitioned to dismiss the cancellation request. The Polish company admitted that the marks cover similar goods, but said that the trademarks differ from each other: the word elements ‘Cartier’ and ‘Chatier’ have different beginnings. The mark registered in the name of the Polish company also has an additional element, ‘Purl’, so the pronunciation of the names is different.
Marek Asenkowicz also declared that the goods under the marks have different price categories. The company questioned the renowned character of the ‘Cartier’ trademark and stated that the Swiss company failed to prove that its trademarks had fulfilled the statutory requirements for obtaining renowned character specified under Article 132, clause 2, point 3 of the Polish Law on Industrial Property.
The PPO examined the arguments of the parties at a hearing on September 1, 2009 and decided to cancel the ‘Chatier Purl’ trademark. According to the PPO, the goods in Class 3, which both marks cover, are similar, and the assessment of similarity between the trademarks led to a conclusion that there is a risk of misleading the average consumer.
According to the PPO, Cartier also provided sufficient evidence to confirm the renowned character of its mark on the Polish market, according to which it is clear that consumers associate the mark with one of the most prestigious brands in the category of luxury perfumes and jewellery. It has been shown that the brand has won a high esteem among consumers and that Cartier products are famous for their high quality.
The PPO’s standpoint was subsequently upheld by the District Administrative Court in a decision dated September 6, 2011, and the Supreme Administrative Court in Warsaw, on April 23, 2013. The cancellation of ‘Chatier Purl’ was then recorded in the Trademark Register of the PPO. n
Agnieszka Skrzypczak can be contacted at: email@example.com
Agnieszka Skrzypczak is a European and Polish patent attorney. At Patpol she focuses on trademark litigation, arbitration, licences and searches, and appeal and court proceedings.
This article was first published on 01 April 2014 in World IP Review
cosmetic, trademark, Cartier