PAVLOV & CO close out important infringement case against local wine producer

A matter that has started with a series of opposition procedures all the way back in 2016 has been concluded recently, following an infringement case that took place in the Sofia City Court and the Sofia Court of Appeals.

In 2016 six trademark applications by famous Bulgarian wine producer were identified, similar to the main brand “CHOPIN” of the Polish internationally-acclaimed vodka producer PODLASKA WYTWÓRNIA WÓDEK "POLMOS" S.A., registered as EUTMs. Oppositions were filed and despite claims of the applicant that the word element "CHOPIN" that was distinctive and dominant in the earlier trademarks was not used as distinctive in the contested signs, the BPO ruled that the signs were similar, the goods (wine and vodka) were also similar so likelihood of confusion exists. The decisions of the Opposition division were appealed, but confirmed by the Chairman of the BPO and as no court appeal was filed, they entered into force.

Meanwhile, and despite the way the opposition procedures were developing, the defendant has begun actively using the sign (basically the same as the refused applications, which included the indication “CHOPIN”) on the market, for labelling a high-end line of white and red wine with them. The products became available in many locations around the country, including in some of the largest supermarket and hypermarket chains.

Becoming aware of that, POLMOS decided to pursue an infringement case. After securing evidence of the ongoing sales, PAVLOV & CO’s team, filed claims before the civil court.

The defendant tried to put forward several arguments, the main ones being that the coinciding element “CHOPIN” was, in fact, not dominant and was not used as a “trademark” to indicate its products (and rather the company name would be recognized by the relevant consumers as the indicator of commercial origin), and, also, that as the earlier signs were only registered for “vodka”, the use for “wine” could not be “authorized” by the holder of the earlier trademarks, hence it was not possible to claim the missed license fee as damages incurred by the infringement. PAVLOV & CO’s team managed to effectively counter these claims first by pointing out that the infringer itself was identifying the “line” of products precisely by the word element “CHOPIN” that was common for the signs and was using it as a trademark and as a distinguishing element (which was also confirmed in the opposition decisions), and also that the “license fee” was merely a method for calculating the damages incurred (which is even stipulated in the Directive 2004/48/EC on the enforcement of intellectual property rights as a possible mean of determining remuneration), rather than a “real” fee, so the objections were unfounded.

Following a lengthy procedure (and an attempt by the defendant to suspend the matter, based on cancellation actions, started against the earlier EUTMs, which was denied by the Court), the Sofia City Court upheld all claims. The decision was appealed by the defendant before the Sofia Court of Appeals, which, however, rejected the appeal in its entirety.