Since the famous slip of the tongue of Witold Waszczykowski, Poland’s Minister of Foreign Affairs, made in January 2017, the Internet has gone crazy at the point of a fake country “San Escobar” which the Minister incidentally created. In just over a month, the Internet users drafted a map of that non-existing country, made its mock currency and produced countless humorous memes. But what is also interesting, a number of applications have been filed in the Polish Patent Office for registration of San Escobar as a trademark. Let us have a look at how these applications have been doing until today.
It all began at the summit of the United Nations in New York in January 2017, when the Minister was giving the press an account of his attendance and was mentioning the names of the countries whose representatives he had met. In the course of doing so, he mentioned the name of a non-existing country “San Escobar”, which he incidentally created, thus producing a lot of humorous comments in the aftermath.
The Poles loved the vision of a new country called “San Escobar” so much that they immediately used Internet to make its fake national flag and a map of the territory, also publishing humorous memes in a nostalgic tone saying ?Why not abandon everything and go to live in San Escobar?? The popularity of the fake country “San Escobar” in social media was so high that it produced numerous fan pages and profiles, the most popular of them having over 150 thousand likes. The Internet users also created the English version of the definition for “San Escobar” in Wikipedia.
“San Escobar” as a trademark?
The creation of this new name breaking popularity records encouraged no fewer than seven entities to file applications for registration of “San Escobar” as a trademark. The first application was already filed within less than two weeks from Minister Waszczykowski’s commentary. It was the trademark application No. Z.466506 SAN ESCOBAR covering a variety of goods and services, including among others the following goods: harmaceutical products; clothing; food products; beverages; tobacco and services: teaching services; travel agency services; services in the field of providing food and drink.
Two days later two more applications were filed, namely San Escobar No. Z.466578 (covering among others food products) and San Escobar No. Z.466563 (among others, for parasols, towels and travel agency services). As regards the trademark application No. Z.466578, opposition proceedings thereto are already pending. The term for filing oppositions in respect of the second trademark application No. Z.466563 expired on 29th August 2017.
What is interesting, the opposition against the trademark application No. Z.466578 as of 25th January 2017 was filed by the Applicants of the first trademark application for SAN ESCOBAR No. Z.466506 as of 23rd January 2017, which had been filed only two days earlier and had given the Applicant a privileged position! If these two applications had been filed in the opposite order, the other Applicant would now have a dominant position in the proceedings before the Polish Patent Office. This example also illustrates that it is recommendable to file trademark applications promptly without delay.
The first Applicants of the trademark SAN ESCOBAR do not resign from further applications
The Applicants of the trademark San Escobar No. Z.466506 filed in February 2017 one more application for a word trademark San Escobar No. Z.467131, pursuing to obtain a right of protection for other goods and services, including among others “cosmetics; small items of metal hardware; magnets; USB memories; laptops; jewelry; advertising materials; furniture; toys and playthings; and a variety of services relating to the above goods.”
Further applications for san Escobar were filed in February ( No. Z.467836), April (No. Z.470080) and August (No. Z.475415) 2017.
A breakthrough in the approach of the Patent Office?
According to the information in the database of the Polish Patent Office, three trademarks San Escobar are within the opposition period, and one of them is already in the course of pending opposition proceedings (as mentioned above).
Opening the opposition periods for these trademarks by the Patent Office means that they had successfully gone through the examination of the Patent Office, which had not found any obstacles to the registration thereof on absolute grounds (absolute grounds meaning that a trademark must be eligible to perform one of its basic functions, namely the distinctive function).
In other words, if an opposition was not filed against the above mentioned trademark application, the Polish Patent Office would have already issued a decision on granting protection for the mark, which would undoubtedly be very much welcome by the part of the public being so keen on the fake country San Escobar incidentally created by the Minister Waszczykowski.
By the way, filing applications in respect of such a broad variety of goods and services may produce the Applicants some problems in the future, if they fail to put the marks to genuine use within 5 years following their registration (an obligation to start to use the mark in a genuine way within 5 years from the date of registration).
Yet another issue is the copyright to a fancy name of the fake country San Escobar authored by Minister Waszczykowski, but this is a topic for discussion in another article.
Nina Jankowska is a Attorney Trainee in the department of trademarks and industrial designs at Patpol. She graduated from the Warsaw School of Economics, currently studying law at the Kozminski University. Contact with the author