Proving the reputation of a trademark is not an easy task. The owner must prove that the mark is recognised by a significant share of the population in a substantial part of the territory in which it is registered. In the European Union this is mainly assessed using quantitative criteria. However in Poland, one must also provide qualitative criteria to prove recognition.

The reputation of a mark is not defined by the EU Trademark Regulation, nor by Polish industrial law. Pursuant to case law, a well-known mark must have sufficient recognition that the relevant public, when confronted by a similar mark, may possibly make an association between the two, even when they are used for non-similar products or services, consequently damaging the reputation of the established mark (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 22-23). There is no EU case law specifying that a qualitative threshold must be met in order to enjoy protection deriving from reputation.

Polish courts, as national courts of the European Union, are bound by EU case law. In spite of that, Polish courts are of the opinion that a trademark with a high reputation shall guarantee the high quality and prestige of goods and services sold under it. Polish courts require evidence that the goods bearing the mark in question are believed to be of high quality by the consumer, thus confirming this positive perception.

There are few judgments involving EU trademarks in Warsaw courts where only the quantitative threshold was required to prove the mark’s reputation. Nevertheless, in Polish Patent Office decisions and administrative court verdicts, the high quality of the goods and services in question must be proven in order to demonstrate a trademark’s reputation. However, the Supreme Administrative Court has now judged that this reference to quality is incorrect. The decision underlines that EU jurisprudence, some national judgments and Polish doctrine indicate that the main criteria should be the degree of knowledge of the earlier trademark among the relevant public, with quality or prestige being irrelevant. The Supreme Administrative Court conceded that while determining positive perception of a product’s qualities may sometimes be useful, this is only the case where registering a trademark could bring an unfair advantage to the applicant, or be detrimental to the earlier mark’s distinctive character or reputation.

This judgment is important for the owners of well-known trademarks keen to base their claims on the fame of their marks in Poland. It is a positive step towards cancelling the quality requirement in future trademark cases and means that litigants will no longer be required to collect evidence on the basis that quality in the minds of consumers equates to recognition of a trademark.