What cannot be a trademark?

As it has already been mentioned a number of times on our IP blog, a trademark may be any sign capable of distinguishing the goods and/or services of one undertaking from those of other undertakings, which is also capable of being represented in the trademark register in the manner allowing to identify clearly and precisely the subject matter of protection granted for the mark.

In other words, protection may be granted for a trademark if it jointly meets two criteria:

• it must be capable of distinguishing the goods and/or services of one undertaking from those of other undertakings,

and

• it must be capable of being represented in the trademark register.

A trademark, for which a right of protection is to be granted should, at the time of filing an application with the Polish Patent Office, should have sufficient distinctive features – (inherent distinctiveness) – namely, the general issue is whether the sign applied as a trademark is suitable for distinguishing in trade the goods and services for which it has been applied.

The Patent Office always makes the assessment of distinctiveness of a sign as a whole.

The assessment of distinctiveness is the resultant of two factors. On one hand, the form of a trademark by itself must be sufficiently distinctive to be capable of identifying the relevant goods. On the other hand, the form must guarantee the consumer the possibility of making choice on its basis without having to determine the origin of the designated goods or services by a roundabout way, namely by searching for the name of the trademark owner.

What happens if a sign is devoid of sufficient distinctiveness?

Art. 129¹ par. 1 pt. 2 of the Polish Law on Industrial Property indicates the signs which are considered to be devoid of distinctiveness, namely the signs which do not have any characteristic elements at all that would allow the recipients of the designated goods or services to individualize them in trade, and therefore they cannot function as trademarks.

Such signs are for example simple graphic figures: a line, a circle, a rectangle, or spatial signs, which do not carry any information which may be useful for the consumers about the designated goods, so consequently they are not perceived as trademarks. Below there are a few examples of spatial signs, in respect of which the Polish Patent Office issued a decision on refusal of granting protection due to the lack of distinctiveness:

The sign was applied under the number Z.220995 for goods in class 32: mineral waters, aerated mineral waters, table waters, non-alcoholic beverages.

Trademark application No. Z.215529 for goods in classes 21 and 31: containers, in particular containers for storage of food; food, in particular food for humans.

In addition to the above, in Art. 129¹ par. 1 pt. 3 of the IP Law, there has been mentioned a list of non-registrable signs consisting exclusively of elements which may be used in trade for indicating certain features, including in particular: the kind of goods, their origin, quality, quantity, value, purpose, method of manufacture, composition, function or usefulness. These signs are descriptive, that is the signs which are merely describing the applied goods or services. A sign deemed to be descriptive is a sign that indicates a direct and specific relationship with the goods or services covered by the application and therefore such signs cannot be trademarks.

The above mentioned catalogue of informational features that may be carried by a sign is open, and the term “in particular” is only intended to indicate the most common examples of descriptive marks.

Word marks are the core category of trademarks which are most frequently considered to be descriptive. Below there is a number of examples of word marks, which have been regarded as descriptive and consequently cannot be trademarks:

TM Application no. Z.250154 Złote piwo jasne [„Golden light beer”] for „beer” in class 32;

TM Application no. Z.284881 Kiełbaski do piwa [„Sausages to go with beer”] for „meat, meat products” in class 29;

TM Application no. Z.199925 Herbatniki tradycyjne [„Traditional biscuits”]  for „non-perishable confectionary product” in class 30.

TM Application no. Z.400576 Centrum Badania Opinii Publicznej [„Public Opinion Polling Centre”] – for „public opinion polling” in class 35;

TM Application no. Z.230172 Konto osobiste standard [„Personal account standard”] for „services consisting in running personal accounts for gathering saving deposits and making monetary operations” in class 36;

TM Application no. Z.536450 O! jajo [„Look! An egg”] for „eggs” in class 29.

A common form of descriptive designations are word designations that are a combination of two or more words into one forming a neologism, that is, a word which as a whole does not appear in dictionaries. Nevertheless, in the case of a neologism, its descriptive character in relation to the goods and services designated therewith is also assessed. The assessment is also made with regard to how the neologism is understood by the public. The Polish Patent Office or the EUIPO had issued decisions on refusal of granting protection, which were later confirmed by court rulings, in respect of the following neologisms:

DigiFilm and DigiFilmMaker – both trademarks applied for services in the field of digital photography.

RadioCom – a trademark applied for services connected with broadcasting of radio programs over the Internet.

PsychoDietetyka – (Z.325335) – a trademark applied for the following services: “psychological testing, personal management consulting, nutrition consulting, personal development consulting, sales promotion, transmission of information, organization of tours, supplying goods, practical training, teaching services, correspondence courses, congresses, competitions, health clubs, information on recreation and education, club teaching services, entertainment, film production, radio entertainment programs, television entertainment programs, holiday camps, vacation camps (organizing camps, entertainment); fashion services, intellectual property licensing, computer software services, consulting, catering services and meal delivery, restaurants, snack-bars, seminars, boarding houses; psychological consultancy, medical assistance, pharmaceutical advice, medical clinics – private, massage, physiotherapy, physical therapy” in classes 35, 38, 39, 41, 42, 43 and 44.

What may also be assessed as word marks lacking distinctiveness are designations applied as word trademarks in a foreign language. As regards this issue, the PPO, when evaluating such a sign in terms of descriptiveness, mainly takes into account the degree of knowledge of a given foreign language among the group of recipients, to whom the goods or services marked with a given sign in a foreign language are addressed. As a rule, it is assumed that, for example, the knowledge of English among Poles is greater than the knowledge of Chinese or Japanese. The following are examples of signs, for which a refusal decision has been issued by the PPO, precisely because of the descriptive nature of the sign in a foreign language:

Z.294260 TRADITIONALLY POLISH BEER – destined for the marking of “beer, alcohol-free beer, beverages on the basis of beer” in class 32;

Z.308469 Fruity tea – destined for “medicinal herbal teas, medicinal herbs and teas” in classes 05 and 30.

Z.278422 Majtki-shop [Eng. “Panties-shop”] – destined for goods in class 25: “panties; clothing”.

Descriptive signs, i.e. signs that cannot be trademarks, may also be signs indicating the origin of goods by reference to geographical names or words formed from such names. We provide examples of trademarks, in respect of which the PPO has issued refusal decisions precisely because of the inclusion in a given trademark of an element indicating exclusively the origin of goods or services related to the place of manufacture of the goods, or the place known to be the origin of the goods or the provision of services.

1. 296847 Bimber białowieski [Moonshine from Białowieża] for “a spirit drink” in class 33;
2. 256235 VARNA for “a wine originating from Bulgaria” in class 33;

Z.399243 OPOLSKA SPÓŁDZIELCZA KASA OSZCZĘDNOŚCIOWO-KREDYTOWA [Eng. Cooperative Saving and Credit Union in Opole] for „financial services; insurance services” in class 36.

Descriptive signs, which will not be granted protection either, are also trademarks whose graphic or spatial form is close to the most likely shape of the particular goods to be designated with the mark. In such case, the likelihood is increasing that this shape, when being a trademark, will be devoid of distinctiveness.

Below we mention a few examples of graphic/ spatial signs which were denied granting protection by the Patent Office:

Z.375844      destined for “gingerbread; confectionery products”, or

Z.396654  destined for goods in class 30: “caramels, jelly candy products, fondants, chocolate, jellies, chocolate pralines, other chocolate and chocolate-like products, candy.”

 Descriptive signs, i.e. the signs that do not have distinctive character and for which no protection right will be granted, may also be considered the signs such as single letters, e.g. S, M, L in relation to clothing – because they inform only about the size of the garment, or single numbers/ numerals, e.g. 100, 300, 222, 555, if such signs could be read by the public as information about the number of pages or the number of goods marked with such signs.

Advertising slogans may also be assessed as descriptive, so consequently they cannot be trademarks if they do not have inherent and specific distinctiveness, or in other words – they do not have the features that would enable the recipients of goods or services to perceive such a slogan as a sign distinguishing these goods or services on the market.

The examples of advertising slogans which cannot be trademarks are the following:

Okna i drzwi na całe życie [Eng. Doors and windows for lifetime] – a slogan applied for registration in the Polish Patent Office under no. Z.255347 for goods, among others, in class 06: “Metal: gates, doors, door fittings, louvers, windows, window fittings, shutters, sills, thresholds, external and internal blinds, rollers, guides for windows or sliding doors, display cabinets, profiles for windows or doors”;

or:

Obiady zawsze domowe Z.338047 [Eng. Lunches forever homemade] a slogan applied for designating among others the following goods in class 30: „Honey, treacle, salt, seasoning and curing salts, mustard, vinegar, sauces, ketchup, mayonnaise, spices and seasoning mixes, flavoring and aroma seasonings for foodstuffs, soups, for fish, meat and culinary dishes; food flavoring additives, food concentrates, aromatic preparations, food essences, salad dressings, sauces for meat, meat in pastry, pasties, food products in the form of ready meals”.

In Article 129¹(1)(4) of the IP Law, there are also mentioned such signs that consist exclusively of elements that have entered common language or are customarily used in fair and well-established business practices. Protection rights shall not be granted for such signs because they cannot be trademarks.

The examples of trademarks that did not obtain protection or lost protection as a result of entering common language or having been customarily used in fair and well-established trading practices, are the following:

A word mark FRAPPE destined among others for goods in class 30: ”coffee, coffee-based beverages, cappuccino, instant coffee – it was considered that the mark only means a kind of drink made on the basis of coffee and appropriately chilled.

WROCEK – the designation was applied for registration as a word trademark for goods and services in classes 16, 35, 41 – in the refusal it was indicated that this designation had entered common language and it is used as a popular abbreviation of the name of the city of Wrocław.

WAWA – the designation was applied for as a word trademark for goods and services in classes 16, 35, 41 – in the refusal it was indicated that this designation had entered common language and it is widely used – like above – as a popular abbreviation of the name of the city of Warsaw [Polish: Warszawa].

A word trademark HERBATKA PO GÓRALSKU [Eng. ”Tea brewed the highlander way”] – the mark destined for „tea” in class 30 . The PPO stated that the designation HERBATKA PO GÓRALSKU had already entered common language and it is understood by consumers as “the tea with addition of spirit”.

Article 129¹(1)(7) states that no right of protection shall be granted for trademarks that are contrary to legal order or morality, i.e. their content is inconsistent with legal order or morality. Thus, one cannot obtain exclusive rights for trademarks whose content violates moral and ethical standards, i.e. is vulgar, offensive or discriminatory, or trademarks that promote illegal behavior – such as terrorism or explicitly refer to sexuality.

Below there are examples of trademarks that met with refusal of granting protection due to being contrary to morality:

 [Eng. “Sexy Ass”] an application filed in the Polish Patent Office under No. Z.216134 destined for liqueurs in class 33;

MLEKO CYCATE [Eng. “Big-breasted  milk”] a trademark application No. Z.376025 destined for goods in classes 5, 29, 35, including among others “food for babies”.

A Polish trademark application No. Z.336768 Papryfiutki [Eng. „Pepperdicks”] filed for goods in classes 16, 30, 31, including among others “Agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, tubers, rhizomes, bulbs, natural plants and flowers, animal feed, malt, plant seedlings”.

BIN LADEN No. EUTM 002223907 – a European Union Trademark destined for jewelry in class 14 or vehicles in class 12.

It is also not possible to obtain exclusive rights for trademarks that in their contents incorporate pornographic drawings, or promote fascism and other totalitarian regimes, or incite hatred on the grounds of national, ethnic, racial or religious differences, or are discriminatory with regard to sex, race, religion, age or sexual orientation.

Here are a few examples of trademarks, in respect of which a refusal of granting protection was issued as a result of being contrary to public order:

A Polish Trademark application No. Z.206824 destined for spirits except beer in class 33;

 EUTM 004688561 – a European Union Trademark destined for goods in classes 18, 22, 25.

Art.129¹ par.1 pt. 8 of the IP Law provides that no protection right shall be granted for trademarks that contain elements that are symbols, particularly of a religious, patriotic or cultural nature, the use of which would offend religious and patriotic feelings or national tradition.

Below there are a few examples of trademarks that were refused granting protection specifically due to the fact that they incorporate religious and patriotic symbols and may offend religious or patriotic feelings.

A Polish word-figurative trademark application No. Z.297111  [Generation of the Pope John Paul II] destined for goods and services in classes 16, 35, 38, 41, including among others “books, newspapers, journals, weekly magazines, monthly magazines, yearbooks, publications, prospectuses, posters, drawings;”

Trademark application No. Z.296194 destined for goods and services in classes  3, 9, 14, 16, 18, 19, 20, 21, 25, 26, 28, 30, including among others “perfumes, sunglasses, drink bottles, mugs, caps (headgear) or coffee”;

Z.403018 BUDDHA a trademark applied for goods in classes 32 and 33, namely alcoholic and non-alcoholic drinks;

A trademark application No. Z. 124896  – the symbol „Poland Fighting” [the symbol of the Polish underground state and resistance during WWII], applied for goods in classes 16 and 24.

In addition to the above, art. 129¹ par.1 pt. 9 of the Polish IP Law provides that one cannot obtain the right of protection for a trademark containing the symbol of the Republic of Poland – such as the emblem, colors or anthem, as well as: the sign of the armed forces, the sign of a paramilitary organization, the sign of law enforcement forces, a reproduction of a Polish medal, decoration or a badge of honor, a military medal, or other decoration and badge, in particular of governmental administration or local government administration, or a social organization acting in the important public interest.

The national emblem of Poland cannot be a trademark.

The national colors of Poland cannot be a trademark.

The national anthem cannot be a trademark.

The Polish legislator has ruled that these symbols should not be placed on the objects intended for commercial transactions, which results directly from the Act of January 31, 1980 on the Emblem, Colors and Anthem of the Republic of Poland and the Seals of the State.

However, one can obtain the protection right for a trademark containing the name or the abbreviation of the name of the Republic of Poland, such as “PL,” “RP” or “Poland.”

It is also possible to obtain the right of protection for a trademark that contains the coat of arms of a voivodship, city, the mark of the armed forces, paramilitary organizations or law enforcement forces, a Polish order, or a badge of honor, provided that the competent authority approves the use of the marking in trade.

Art. 129¹ par.1 pt. 10 of the IP Law indicates another group of signs, for which the possibility of obtaining a right of protection is excluded when they contain the symbol of a foreign state, the name, abbreviation of the name or the symbol of an international organization or an official marking, control or guarantee stamp valid in a foreign state, if such a prohibition arises from international agreements.

 The examples are as follows:

„The European Union Institute for Security Studies”

The signs of the Red Cross, Red Crescent, Red Crystal as well as the Red Lion and Sun:

or the sign of the Polish Red Cross

or the sign of the International Red Cross Committee

and also the sign being the Olympic circles – the symbol of the Olympic Games – this issue has been regulated by the Nairobi Treaty on the Protection of the Olympic Symbol.

Art. 129¹ par.1 pt. 11 of the Polish IP Law excludes the possibility of obtaining protection for trademarks incorporating the symbols, which are officially approved for use in trade, in particular: the symbol of safety, the symbol of quality or the symbol of legalization, to the extent that the use of such symbols might mislead the recipients as to the nature of the applied trademark, unless the applicant demonstrates that he is authorized to use this kind of symbols.

Below there are examples of symbols that are officially approved for general use in trade, such as safety or quality symbols, which cannot be registered as trademarks:

It should be emphasized that the prohibitions on granting protection rights for the symbols listed in Article 129¹(1)(9)-(11) of the IP Law apply both to trademarks that consist entirely of the protected symbol, and to signs in which the protected symbol is only one of the elements of the mark. The protection of the above symbols, i.e. not granting the right of protection for a given sign incorporating the symbol, extends over all kinds of goods and services, for the marking of which the applied trademarks are intended.