The Polish Supreme Court (Sąd Najwyższy) has overturned a judgment of the Warsaw Court of Appeal Court (case no. I ACa 962/16) on the basis that courts should assess the overall similarity of a trade mark, whether it is phonetic, graphical or conceptual.

Conceptual differences may not be enough to eliminate infringement. For renowned trade marks, the similarity required for a finding of likelihood of confusion is less than in the case of ordinary trade marks.

The Swiss company Omega which specializes in manufacturing luxury watches (and time measuring equipment) is the owner of EU trade marks for "Omega" and "omega.timing" (used in the domain name).

In 2014, Megatiming started using "Mega" and "megatiming" in a domain name for devices used for measuring swimming times. Omega claimed infringement of its renowned trade marks and unlawful copying amounting to unfair competition under Polish law.

At first instance and on appeal, the Warsaw courts granted Omega limited protection, although not for all the allegedly infringed trade marks.

The courts ruled that "megatiming" did not infringe Omega's trade mark "omegatiming" because the relevant consumers who were aware of the sport understand that, in the context of swimming, "mega" and "timing" related to measuring the distance or speed and not to Omega's brand.

According to the courts, relevant consumers may not see a link between "megatiming" and "omegatiming". Also, the Warsaw Court of Appeal underlined that similarity was a primary criterion for infringement of trade marks, irrespective of their reputation.

On appeal, the Polish Supreme Court concluded that even though the assessment of renowned trade marks required a lower degree of similarity, there has to be similarity between signs. Even though from the consumer's perspective, the signs at issue might have different meanings, the courts should also assess their graphical or phonetic similarities.

Thus, conceptual similarity weighs only equally to phonetic or graphical, when assessing the infringement of renowned trade marks. Conceptual dissimilarity alone may not eliminate the risk of confusion or of taking unfair advantage of renowned trade marks. The Polish Supreme Court also concluded that the word trade mark "megatiming" is not similar to Omega's word trade marks.

Furthermore, the Polish Supreme Court pointed out that in assessing the infringement of a renowned trade mark, as part of the overall examination to assess whether or not there is a link or risk of association, it cannot be merely noted that trade marks are dissimilar because of their potential different meanings for relevant consumers and therefore conclude that the marks are overall dissimilar. This requires that they are also dissimilar either phonetically or graphically.

When assessing the infringement of renowned trade marks, the degree of similarity may be less. The Supreme Court annulled the judgments of the Warsaw Court of Appeal and remitted the case for re-examination, on the unfair competition part.

This decision is welcome as it extends the scope of renowned trade marks under Polish law and practice and appears to be in line with EU trade mark regulations. Reputed trade marks deserve an extensive scope of protection by law. While the degree of similarity may be less, it should not be inconsiderable or slight.

Referring to the CJEU case law (C-254/09 Calvin Klein Trade mark or joint cases: C-581/13 and C‑582/13 Ballon d'or), the link between signs must be sufficient in consumers' minds. The fact that consumers may understand signs differently should not completely outweigh the phonetic or graphical similarity.

This position of the Polish Supreme Court is also in line with earlier domestic jurisprudence.

Perhaps the Polish Supreme Court could have considered the relevant consumers more extensively. The more specialized these are, the more they would be aware of the differences between signs.

The specialized consumers who are in the market for devices to measure swimming times should be more aware of the differences between "Omega" and "Mega" brands. The courts should also assess that "mega" may appear indistinctive as it refers to the means of measuring in this case.

Polish Supreme Court, Civil Chamber, 9 May 2019; Case No. I CSK 263/18