Polish PTO Invalidates Unilever’s Trademark

On December 20, 2010, the Polish Patent Office (PPO) ruled against Unilever, owner of many of the world’s consumer product brands, in the trademark infringement dispute against the Polish packaging manufacturer Rosinski i Sk-a.

The PPO had invalidated the industrial design registration “bottle with cap” (Rp-2543) belonging to Rosinski, following Unilever’s claim that the design infringed its 3D trademark (R-134678), registered on March 20, 2002 (with a priority date of January 29, 1999) in Classes 3 and 5 covering products such as detergents, soaps, deodorants, fungicides, germicides and insect repellents. The disputed bottle is used for Domestos, a liquid toilet cleaner.

The Polish manufacturer first filed an appeal with the Voivodeship Administrative Court (county), which upheld the PPO’s decision, and later a cassation appeal with the Supreme Administrative Court, which ruled that the PPO should reconsider its decision.

Rosinski also requested that the PPO invalidate Unilever’s 3D trademark, arguing it is a “weak mark”, because the bottle alone, without the label, is not significantly different from other liquid detergent bottles on the Polish market. Rosinski emphasized that 50 percent of Unilever’s bottle is covered with the Domestos label, and that the bottle with the label is registered separately as a trademark (figurative trademark DOMESTOS SPRING FRESH THICK DISINFECTING CLEANER KILLS ALL KNOWN GERMS, Registration 155952). Rosinski therefore argued that Unilever did not use the 3D mark in its registered form.

In response to Rosinski’s arguments, Unilever tried to prove that the 3D trademark was put to genuine use by presenting evidence in the form of a 2009 market research showing that consumers recognized the shape of the Domestos bottle. Unilever also showed evidence of its significant investment into both print and television advertising campaigns. Finally, Unilever submitted several judgments issued by French and German courts that supported its arguments.

The PPO however ruled that the evidence Unilever provided was insufficient because it failed to prove that the 3D mark was used in its registered form on the Polish market for five consecutive years since the date of its registration.

The PPO further noted that the television commercials were of poor quality and without dates and that Unilever did not provide evidence that they had ever been aired in Poland. As for the print advertisements, Unilever failed to provide dates as well as the names of newspapers in which the advertisements appeared. The PPO also noted that the foreign court judgments that Unilever presented were not legally binding in Poland.

In addition, the PPO determined that Unilever’s invalidation of Rosinski’s industrial design was done in bad intention and infringed upon Rosinski’s freedom to conduct business-related activities.

At the time we distributed our newsletter, we did not have information on whether Unilever filed an appeal with the Voivodeship Administrative Court.

For more information, please contact Masa Lopicic at our Balkan Regional Office.

Source: Polish IP news portal, Rychlicki.net