Agnieszka Skrzypczak of Patpol examines two competing trademark decisions from different departments of the Polish Patent Office...

On 7 July 1960, Czech company Budejovicky Budvar filed an application to register the word ‘Budweiser’ as a trademark with the Polish Patent Office (PPO), in class 32 for “beer of all kind”. The mark was subsequently registered by the PPO and has been valid until now.

In turn, on 23 November 2000, another Czech company—Budějovicky Měštansky Pivovar—filed an application to register the word-figurative trademark ‘Budweiser Bürgerbrau’ in class 32, specifically for “beer and alcohol-free beer”.

The application was examined by the PPO’s trademark examination department. Prior to issuing a decision, the department examines whether the application fulfills statutory trademark requirements and whether any earlier similar or identical rights exist, particularly if they are for similar or identical goods or services.

Having examined the application for ‘Budweiser Bürgerbrau’, the department found that the mark was in conflict with any earlier registrations, including Budejovicky Budvar’s registration for ‘Budweiser’. It issued a decision granting trademark protection on 12 October 2005.

The decision to allow the registration of ‘Budweiser Bürgerbrau’ in 2005 was based on an assumption that the owners of both trademarks are Czech companies originating from the same geographical location, so they both have the right to use the word ‘Budweiser’ to indicate the designation of origin of the beer that they sell.

The trademark examination department also considered the fact that since 1967, Budějovicky Měštansky Pivovar (the applicant of the later mark) has had the right to use the indication ‘Budweiser’ as a designation of origin for its products on equal terms with the owner of the earlier registration—Budejovicky Budvar. This right was based on the relevant entry in the Czech and International Registers of the Designations of Origin. The right was also approved in Poland by virtue of the Constitution and the Treaty on Economic Cooperation between Poland and Czechoslovakia.

The owner of the earlier registration, Budejovicky Budvar, disagreed with the department’s decision and filed an opposition on 7 November 2006. The company based its claims on Article 9 of the Polish Law on Trademarks.

Budejovicky Budvar argued: “The trademark ‘Budweiser Bürgerbrau’ … is similar to the earlier trademark ‘Budweiser’ at all levels of perception, because of the same dominant word element ‘Budweiser’ appearing in both marks. The marks in question are destined for identical goods: beer. Therefore, there is a high risk that average consumers will be confused as to the origin of goods under the marks.”

Following an assessment and hearing, the PPO’s adjudicative department cancelled the ‘Budweiser Bürgerbrau’ trademark in class 32 on 2 February 2009. It said that the fact that ‘Budweiser’ is functioning as a geographical indication in the territory of the Czech Republic and Slovakia, and is perceived by average Czech or Slovak beer consumers as an indication of origin from Budejovice, does not mean that Polish consumers will also perceive the mark in the same way.

No evidence was filed that an average Polish consumer of beer will perceive ‘Budweiser’ only as information about geographical origin. The word mark ‘Budweiser’ is protected as a trademark under the relevant right of protection in the name of Budejovicky Budvar and has continuously been used by the owner in turnover on the Polish market. Therefore, there are no grounds to make an assumption that an average Polish consumer will suddenly start to perceive a sign that is already functioning as a trademark, as an indication of geographical origin, or merely information about the kind of beer.

Furthermore, the adjudicative department made a comparison of the marks at all essential levels of perception: phonetic, visual and semantic. First, it was found that the marks are highly similar to each other at the phonetic level. The word ‘Budweiser’ is the most dominant element of Budějovicky Měštansky Pivovar’s trademark and at the same time constitutes the whole of Budejovicky Budvar’s trademark. The other elements in the questioned trademark, such as the second word ‘Bürgerbrau’ and the surrounding graphic elements on the label, cannot eliminate a striking similarity between the marks. For an average Polish consumer, who is not fluent in German, the word ‘Bürgerbrau’ is simply a foreign word that cannot be understood and is difficult to pronounce.

There is also close visual similarity between both marks, as the ‘Budweiser’ trademark has been incorporated into the opposed mark in its entirety, and constitutes its main and the most distinctive element displayed in the first place.

The adjudicative department also found that an average Polish consumer would not find any serious differences between the trademarks on the semantic level, as semantically or conceptually ‘Budweiser Bürgerbrau’ would be perceived as a combination of foreign words without any specific meaning.

According to the adjudicative board, it is unquestionable that the marks are destined for identical goods (“beer of all kind” and “beer and alcohol-free beer”). Polish average consumers of goods under the ‘Budweiser Bürgerbrau’ trademark are beer consumers purchasing it in retail stores and supermarkets for individual needs, or drinking in pubs or restaurants.

Therefore, the level of consumers’ attentiveness at the moment of purchase or consumption will be average. Beer is a common product, which is relatively cheap and purchased in the amounts depending on consumers’ needs without deeper analysis. A predominant part of Polish consumers who are familiar with ‘Budweiser’ from Budejovicky Budvar are likely to believe that the goods found on the market under the trademark ‘Budweiser Bürgerbrau’ originate from the same beer manufacturer.

The decision of the adjudicative board is final, and was upheld by the District Administrative Court.

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