POLISH PATENT OFFICE, DECISION OF 20 DECEMBER 2010, NO. SP. 457/08

The Patent Office of the Republic of Poland (PPO) decided on claims for the revocation of Unilever's 3D trademark due to non-use. It noted that the owner of a trademark for the shape of a bottle, including a label, cannot claim use of another trademark consisting of the same shape of the bottle but without the label by using the bottle with the label. It does not constitute an obstacle to the revocation of a trademark if the mark is reputed.

Unilever is the owner of the Polish 3D trademark registration R-134678 for the plain shape of the "Domestos" green bottle with a red cap, though without any label. It also owns other Polish and international trademarks for this bottle shape with additional features, e.g. the following mark on the right.

Please click here to view Unilever's Polish trademarks (left R-134678)

Based on its trademark R-134678, Unilever had claimed the invalidity of an industrial design for a bottle with a cap owned by Zakład Produkcji Opakowań Rosiński i S-ka sp.j. (Zakład).

Please click here to view Zakład's industrial design

The PPO invalidated the design. The Administrative Court confirmed the decision. However, the Supreme Administrative Court overruled it and returned the case to the Administrative Court which then returned it to the PPO for reconsideration.

While these proceedings were still pending, Zakład filed for the revocation of Unilever's trademark R-134678, on the ground of non-use. Zakład argued that the bottle actually used for Domestos differed from Unilever's trademark R-134678 and had a characteristic and distinctive label which attracted the attention of customers by taking up more than 50 percent of the surface. Unilever replied that the trademark was broadly used and presented a series of evidence showing that the Domestos bottle was widely advertised and recognized among the customers.

The PPO considered that the case was of particular importance and therefore heard it before the Adjudicative Board, composed of five members, while in general it hears matters before a three-member Board.

In its decision, the PPO held that the evidence presented by Unilever referred to the use of the bottle with a label but it did not prove use of the trademark R-134678. In fact, Unilever had substantiated use of a different trademark. The PPO stated that if two similar trademarks were registered for one company and one of them contained an additional element (a label), the trademark owner could not claim use of both trademarks if only the trademark with the label was actually used. It also emphasized that the reputation of a trademark did not justify non-use and could not be regarded as an obstacle to the revocation of the trademark.

Consequently, the PPO decided to revoke the trademark on the basis of non-use.

Under Polish Industrial Property Law, the use of a trademark covers the use of the mark varying in elements if this does not alter its distinctive character. The decision of the PPO confirms, however, that this does not apply if the trademark owner is also the owner of another trademark which differs in some features. In this case, the different form of the trademark is protected separately and its use cannot, at the same time, constitute the use of the other trademark. A different understanding would allow a company to register two similar trademarks without the obligation to use both trademarks