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On Christopher Columbus, tobacco and two cities in the US…

Even if two trademarks are almost identical, sometimes there is a long way to prove it…The voyage begins before the Polish Patent Office in November 2006, yet the horizon clears only in June 2011 before the Supreme Administrative Court.

In November 2006 the Polish Patent Office granted protection right to the company ‘ORION’ for the trademark COLUMBIA no. R-182641 intended to designate goods in class 34: among others, cigarettes as well as services in class 35 related to the sale of such goods. A notice of opposition against this decision was filed by the company IMPERIAL TOBACCO (hereinafter I.T.), holder of the international trademark COLUMBUS no. IR-613016 with priority, also intended to designate goods in class 34.

In the notice of opposition the opponent represented by one partner at LDS raised that:

- Visually both marks have an identical component ‘COLUMB-‘ and addresses’ attention is strongly attracted to the distinctive elements ‘CO-‘, ‘LUM-’, whereas no notice is taken of the endings;

-  Phonetically both marks are similar;

- Semantically, the marks have a common element ‘COLUMB-‘ which is inextricably linked to the prominent figure of Christopher Columbus.

In his response to the notice of opposition, the holder of the mark COLUMBIA stated that the opposition is groundless due to the fact that addresses of goods and services are perfectly aware of the brands they select. Phonetically, the designations are also different as the endings ‘-IA’ and ‘-US’ render them such. Likewise, there is no similarity on the semantic level, as COLUMBIA refers to a city in the central part of the USA and the first American space shuttle, whereas COLUMBUS is a city in the eastern part of the USA. Additionally, the holder of COLUMBIA pointed to the fact that whereas the mark COLUMBIA serves to designate goods in class 34 and services in class 35, the mark COLUMBUS only serves to designate goods in class 34 other than cigarettes.

In March 2009 the Polish Patent Office dismissed the opposition and deemed that goods and services are indeed identical or similar, however, the marks themselves differ sufficiently to eliminate the likelihood of confusion.

This decision was immediately followed by an appeal filed to the Voivodeship Administrative Court  in Warsaw (“VAC”) . The court, however, dismissed the appeal on 25 January claiming that:

-  The PPO’s decision on lack of the likelihood of confusion was right, based on a comparison of both trademarks on all levels;

- The designations COLUMBIA and COLUMBUS are different owing to the difference of the two last letters ‘-IA’/’-US’;

- The sounds ‘-BIA’/’-BUS’ are sufficiently distinctive in pronunciation;

- The two first syllables are identical, however it’s insufficient for causing clients’ confusion;

- On the visual level, the final syllables are markedly different;

- Semantically, both marks refer to the names of two different American cities, the associations with the figure of Christopher Columbus cannot be a decisive factor for the likelihood of confusion.

The Court also pointed to the fact that smokers purchasing a packet of cigarettes or related goods are equipped with sufficient knowledge of the name of such products and sufficiently attentive when purchasing them to avoid confusion. Moreover, cigarettes or related goods are never purchased directly through being taken from a shelf by a customer himself/herself, yet he/she must request a shop assistant for a brand of his/her choice.

To sum up, VAC stated that the marks under comparison, assessed as a whole, are sufficiently distinctive so as to impress the customer differently and eliminate the likelihood of confusion.

I.T. did not concede and filed an appeal against the verdict of VAC and moved for overruling of the appealed verdict in its entirety and remanding the case for re-examination to VAC . The Supreme Administrative Court decided by the verdict of 15 June 2011, file no. II GSK 666/10 that the case deserves reconsideration and in the grounds pointed out that VAC entirely ignored the fact – widely acknowledged in the case-law and in the doctrine – that consumers’ attention is primarily focused on similarities and on the initial part of a trademark, and consequently decided that eight – letter marks in which six letters are identical and arranged in the same order are not sufficiently similar to result in confusion. Furthermore, VAC failed to explain why, in its opinion, the marks are associated with the American cities rather than with Christopher Columbus who in fact brought the custom of smoking tobacco to Europe. It is also unclear why VAC disregarded another significant fact that apart from the relevant marks of I.T., there was only one mark on the Polish market for goods in class 34 with the stem –‘COLUMB’- (the trademark COLUMBO R-136425), which was consequently taken over by I.T.  Thus, I.T. is the only competitor with a registered mark containing the stem –‘columb-’ for goods in class 34 on the Polish market.

Let us now wait how (and when)  VAC and the PPO will implement the guidelines of the Supreme Administrative Court

A (sad) conclusion can be drawn that though for some, things and associations they evoke might be evident, such as in this case where the role of Christopher Columbus as a promoter of the custom of smoking tobacco is unquestionable, it sometimes takes years to obtain a decision stating this fact.

Author: Magdalena Michalkiewicz

For any questions on this article contact: Marek Lazewski

Author: admin