Renowned about town

Patpol’s Anna Zakrocka looks at the case of A&S Parfume Factory, and how Cartier International used its reputation to take it on in Poland

In order to build a mark’s reputation, its owners have to go through a long process that requires a lot of effort and expenditure. Therefore, it is not surprising that unfair competitors frequently try to prey on the marks that have already acquired a reputation, attempting to free ride on the coat tails of their fame.

Cartier International AG, the owner of the ‘Cartier’ trademark, recently won a tough battle against A&S Parfume Factory, the applicant of 22 trademarks containing the word element ‘Chatier’. Thirteen of these applications went on to be registered in class 3 for cosmetics and perfumery products. The first of the marks was registered in Poland in 2002.

A&S Parfume Factory is a Polish manufacturer of perfumes and perfumery products offered at “extremely attractive” prices. They are branded with marks such as ‘Lacrosse’, ‘Fahneneid’, ‘Esscade’, ‘Bruni Banal’, ‘Cool Woman’, ‘J.Love’ and ‘Jurp’. All of these marks have managed to obtain protection rights in Poland for perfumery products.

Cartier International filed a request to cancel the ‘Chatier Ross’ trademark , which obtained registration in Poland in 2005, with the Polish Patent Office (PPO). Cartier International argued that registration of ‘Chatier Ross’ infringed the rights to its ‘Cartier’ word and word-figurative trademarks, as ‘Chatier Ross’ is similar to ‘Cartier’ to the extent that it may evoke incorrect associations between the marks in question and mislead consumers as to the origin of goods.

Cartier International also claimed that its trademarks had already won renowned character and provided the relevant evidence in this regard. In addition, Cartier International argued that the opposite party—A&S Parfume Factory—deliberately created its new marks because they are close to the famous and highly valued brands of perfumes of other manufacturers, and undoubtedly this constitutes acting in bad faith with the intention of taking undue profits from the renowned character of third parties’ marks.

In response to the cancellation request, A&S Parfume Factory disagreed that ‘Chatier Ross’ and ‘Cartier’ are similar, and claimed that the evidence filed to prove the ‘Cartier’ mark’s renowned character is not sufficient. Besides, it argued, the risk of misleading consumers does not exist, as the Cartier branded perfumes are much more expensive than those offered under the ‘Chatier Ross’ trademark.
The PPO found the marks similar at the visual and phonetic levels. As for proof of renowned character, the patent office concentrated on the press materials concerning the position of the brand in the market and its perception by Polish consumers. It was clear for the patent office that ‘Cartier’ is perceived in Poland as one of the most prestigious brands in the category of luxury perfumes and jewellery. For the patent office, the renowned character of the ‘Cartier’ trademark was sufficiently evidenced, so A&S Parfume Factory obtaining protection for ‘Chatier Ross’ was detrimental and might result in parasitic exploitation of the mark at issue.

Consequently, the PPO cancelled the ‘Chatier Ross’ trademark.
A&S Parfume Factory appealed against decision, taking its case to the District Administrative Court. It was argued in the complaint that the PPO did not take into consideration the circumstances that were essential for the matter and could be used for assessing that there is no possibility of misleading consumers as to the origin of goods. According to the complaining party, the PPO also failed to clarify the state of facts in the scope of the renowned character of the ‘Cartier’ trademark , and did not prove that the mark fulfilled the requirements to be given additional protection resulting from its allegedly renowned character.

However, the District Administrative Court upheld the standpoint of the PPO that the ‘Cartier’ and ‘Chatier Ross’ trademarks, when considered as a whole, are similar at the visual and phonetic levels.

The court also confirmed that Cartier International sufficiently proved the renown of its trademark. According to the court, the PPO correctly stated that registration of the ‘Chatier Ross’ trademark might mislead an average consumer into thinking that the goods under this trademark are of the same or at least similar quality as the luxury goods under the ‘Cartier’ trademark. Therefore, registration of the ‘Chatier Ross’ trademark may be detrimental to the renown of the ‘Cartier’ trademarks, and may consequently lead to the exploitation of their renowned character, resulting in earning undue financial profits.

In the administrative proceedings before the district court, Cartier International also made reference to a judgement issued in the civil proceedings before the Court of Appeal in Katowice. The judgement of the Court of Appeal stated that the defendant’s (A&S Parfum Factory) use of a mark that is nearly identical to the plaintiff’s (Cartier International) renowned trademark, and offering the goods under such a mark for a much lower price than the price of the original products, will result in deterioration of the exclusiveness of the original products and may lead to dilution of the distinctiveness of the renowned brand.

After the complaint was dismissed by the District Administrative Court, A&S Parfume Factory decided to complain further to the Supreme Administrative Court. In the cassation complaint, A&S Parfume Factory argued that the findings of the PPO, later confirmed by the district court, with regards to the ‘Cartier’ trademark’s renowned character in Poland, were incorrect. Among others, A&S Parfume Factory stated that an average consumer cannot confuse the goods under the trademarks ‘Cartier’ and ‘Chatier Ross’ simply because Cartier branded goods are not available to the average consumer due to their high price.

The Supreme Administrative Court reviewed the case and dismissed it. According to the court, the analysis of similarity between the marks in question was correct and the renown of the ‘Cartier’ trademark was proved sufficiently. Based on the evidence filed in the matter, it was obvious to the court that there was a risk of A&S Parfume Factory making undue profits and damaging the distinctiveness and reputation of the ‘Cartier’ trademark.

Because of the similarity between the marks in question, the owner of the trademark ‘Chatier Ross’ might easily use the popularity and renown of the ‘Cartier’ trademarks to create positive associations between the goods under similar marks. These incorrect associations might be detrimental to the ‘Cartier’ trademarks and their renown, as the owner of the ‘Chatier Ross’ trademark would be using it to earn undue financial.

A&S Parfume Factory also lost registrations for ‘Chatier Purl’ and ‘Chatier Cool Men’ in similar cases, in which cassation complaints were also dismissed. The judgements issued in all these cases will pave the way for other trademark owners to seek cancellation of other marks registered by A&S Parfume Factory that are misleadingly similar to various renowned trademarks. However, it will be essential to prove that a mark had acquired a reputation in Poland prior to the date of application of a similar mark in the name of A&S Parfume Factory.
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