The case began back in 1996 when the Swiss company Underberg AG applied to the European Union Intellectual Property Office (EUIPO) to register a three-dimensional trademark consisting of a bottle with a diagonally placed green-brown blade of grass, approximately ¾ of the bottle’s length. Does the description sound familiar? That’s because, after the application was published in 2003, Polmos Białystok filed an opposition with EUIPO against the registration of the disputed trademark, which undoubtedly bears a direct resemblance to the popular Żubrówka vodka.
Since then, a years-long dispute has ensued, during which the Office twice dismissed Polmos Białystok’s opposition (currently, the producer is CEDC International). Each of the decisions unfavorable to the Polish company was appealed. However, not every ruling was bad for the producer of the domestic alcohol. Recently, the Court of the European Union issued a judgment in which it again (for the second time) declared the original EUIPO decisions invalid.
Analyzing the dispute, one can see that its essence at the moment is not strictly the analysis and dispute over the Swiss company’s registered trademark, but rather the analysis of a trademark previously registered in France, belonging to the producer of Żubrówka, which depicts a bottle with a diagonally placed blade of grass. Therefore, in order to effectively oppose the registration of the disputed trademark, the opposing party must demonstrate prior, actual use of the trademark, which in turn forms the basis of the opposition. Demonstrating prior use of the trademark is now the key issue in the case.
As lawyers point out, the latest ruling by the Court of the European Union is based solely on formal objections, not on the merits of the case, as during the very lengthy proceedings, EUIPO referred to the justification of its already invalid decision, which constitutes a significant formal deficiency. Regardless of this, in the justification of the ruling, the Court indicated, thereby agreeing with the earlier, substantive arguments of EUIPO, that the manufacturer of Żubrówka did not prove that it had previously used the registered trademark in the form in which it was filed. In light of these circumstances, the trademark previously filed in France cannot constitute an effective basis for preventing the registration of the trademark of the Swiss company Underberg AG. Therefore, the current ruling by the Court of the European Union in no way ends the dispute that has n ongoing for almost a quarter of a century, and furthermore, it allows us to assume that subsequent decisions will also be unfavorable to the manufacturer of the famous Żubrówka.
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