First-of-its-kind trademark win in Poland
Written By
Partner
Poland
I am Co-Managing Partner of Bird & Bird's Warsaw office, where I co-head our Intellectual Property and Life Sciences groups. I also co-chair the firm's International Trademarks Group.
Counsel
Poland
As a Counsel in the Intellectual Property team in Warsaw, I focus on trademark, product design and unfair competition cases. I represent clients on a broad range of commercial disputes.
Senior Associate
Poland
I am a senior associate in the Intellectual Property team in Warsaw. I am also active in the area of life sciences.
We won a landmark case in Poland for our client, North Food. The case concerned the protection of typeface and lettering used in a trademark, the first case of its kind in the country.
North Food, owner of a Polish chain of seafood restaurants, had been the target of an infringement action before the Polish court and a trademark invalidity action before European Union Intellectual Property Office (EUIPO). Both of these cases arose from the similarity of lettering used in North Food’s logo to a typeface used in the logo of a company from a different market sector. The logos in question were based on different word elements and were overall visually dissimilar; the claims relied solely on the lettering design. The opponent claimed that our client’s logo infringed copyright to their unique typeface, as well as to design of individual letters, which they proposed to be a copyrightable work.
Polish law requires that a work must be original and must also be a result of the individual author’s creative process to merit copyright protection. This was the first Polish case where the court had to decide whether an incomplete typeface fulfils these requirements. Since there were no previous Polish decisions on this subject, the team in Poland, led by partner Marta Koremba with Counsel Mateusz Dubek and senior associate Katarzyna Bieliszczuk, was assisted by eight of our international offices in researching case law EU-wide. As a result, we were able to review cases from various jurisdictions and refer to French and German case law in our submissions, with help from our lawyers in those offices. We particularly successfully challenged the opposing party’s arguments based on French law.
Thanks to our defence, the Polish court dismissed the opponent's motion in its entirety, stating that the opponent’s logo did not reach the threshold of originality and individuality required from a copyrightable work under Polish law. Indeed, the court found that the opponent failed to demonstrate the logo’s individuality in comparison to publicly available typefaces and fonts, meaning the lettering of the logo was not protected by copyrights in Poland. The EUIPO also went on to dismiss the opponent’s invalidity action against our client in its entirety. Both decisions were not appealed by the opponent and are currently final.