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Polish dumplings under threat?

In 2006, OHIM registered the graphic trademark PIEROŻEK

for goods and services in class 30, 35 and 43 (CTM 004257432), among others surprisingly for potato dumplings. Any reader having visited Poland surely did not leave without tasting the famous Polish dumplings, called “pierogi” or diminutively “pierożki” (a “pierożek” in singular)?

However, the author of this article was always confident that any court or the Polish national office considering the above mark in its ex officio search for relative grounds would understand that the scope of protection of the said CTM was particularly small and not stretching to the word component, bearing in mind that the word is entirely descriptive for the dish itself.

As the applicant for the word mark BAR PIEROŻEK (meaning “bar little dumpling” in Engl.) in class 29, 30 and 43 before the Polish Patent Office however learned, this is not an established truth. The Polish Patent Office issued a rejection against the said application, citing the CTM PIEROŻEK as an obstacle to the application, and finding the goods and services similar in the case at hand.

The applicant’s appeal against this decision to the Administrative Court in Warsaw has just been rejected. The Court found that the dominant element in the prior CTM is the word element PIEROŻEK  which it did not consider less distinctive than average for the goods at hand. Therefore, since it is wholly reproduced in the later trademark application and the applied for trademark was a word mark – being able to be reproduced in any graphic form-, and using the established rules of a likelihood of confusion test, the Court found there exists such a risk and rejected the appeal.

The undersigned can only hope that the verdict will be appealed to the Supreme Administrative Court as the issue of the limits of distinctiveness of the word “pierożek” would merit a more detailed review. Let me comfort the reader by adding that the unlucky applicant has obtained the following graphic mark however:

And, a second mark for another applicant has just been registered for the same goods and services (in Engl. “Mister Dumpling”) by the Polish Office:

Confused? So are we.

Author: Berenika Depo
For more information on this verdict, please contact Berenika Depo.

Author: admin