In 2016, EUIPO received an application to register a trademark containing the word "luksusowa" in class 33 of the Nice Classification, i.e. for vodkas. This was opposed by Wyborowa S.A., which holds exclusive rights to the European word mark "LUKSUSOWA", having registered it in 2009 for alcoholic beverages, including vodkas.
In a decision dated 23 January 2020, EUIPO denied the application on the grounds that the trademark to be registered was similar to the already registered trademark “LUKSUSOWA”, which would cause confusion among the public. The decision was taken despite the fact that the trademark applied for was a word and figurative one containing a graphic element and four words, just one of which was "luksusowa". EUIPO agreed with the arguments made in the opposition that the words were descriptive and the word "luksusowa" was the most distinctive. It also agreed that the distinctiveness of the trademark "LUKSUSOWA" had been enhanced through its long-standing use and recognition among potential consumers, which led EUIPO to conclude that, despite the low degree of visual and phonetic similarity and average conceptual similarity between the trademarks, potential consumers of vodkas could legitimately believe that the contested trademark was a new version of the earlier trademark or a new brand of goods sold thereunder.
The decision was appealed, but the EUIPO Board of Appeal re-examined the case and the arguments raised in the appeal and, on 20 January 2021, upheld its decision.
From Gide Warsaw, the matter was handled by attorney-at-law Marta Wojtkowiak, a professional representative before the European Intellectual Property Office, supervised by Piotr Sadownik, partner and head of Gide Warsaw’s Litigation and Arbitration Department.
"We are delighted that EUIPO has taken into account the long history of the trademark and its renown among the public in Poland and around the world. This is an important decision for the protection of trademarks that do not have a strong distinctive character themselves, but have acquired one thanks to many years of presence on the market and recognition among potential buyers," said Marta Wojtkowiak, attorney-at-law from Gide Warsaw, who represented the client in the case.