The heart stands for love, health and warm feelings. Because of positive emotions and associations it evokes, the heart motif is commonly used in a variety of product designations or packaging designs. It is ubiquitous in the Valentine’s Day season.
But do the universal character and widespread use of the symbol rule out the possibility of acquiring the exclusive rights to any designations or expressions which make reference to the heart?
No two hearts are the same
The essence of the trademark lies in that it enables the distinction between the goods of one undertaking from those of other undertakings (pursuant to the provisions of Article 120 Item 1 of the Industrial Property Law Act). Marks which consist exclusively of elements which have become customary in the current language or are used in fair and established business practices, as well as descriptive marks (i.e. the ones which are used to designate the intended purpose, function or usefulness of the goods) cannot constitute a trademark.
Marks in the shape of the heart have a descriptive function when used with reference to cardiovascular medications or dietary supplements for heart health. In the clothing industry, the heart is so widespread as a decorative motif that as the one of the figurative elements of the trademark it does not increase its distinctiveness. (the court judgement of 22 September 2016, case file T-512/15, paragraph 2).
Words – can they win the heart (of the Patent Office)?
The Appellate Court in Katowice held that the word mark ‘heart’ could be used in the descriptive function, e.g. when it pertained to such products as heart-shaped gingerbread cookies: “It should be noted that the word ‘serce’ (‘heart’) is commonly used in the Polish language to describe objects, drawings, etc. which represent or have the shape of a heart. Terms such as ‘odpustowe serca’ (‘church fair hearts’) or ‘serce z piernika’ (‘a gingerbread heart’) referring to heart-shaped gingerbread products have come into common use. With reference to gingerbread goods, the word is in fact a generic term which has become customary in the colloquial language and is used in the course of trade. It is currently commonly perceived as a term that evokes direct associations with the gingerbread product per se, and not with its origin” (the judgement of the Appellate Court in Katowice of 10 July 2003, case file I ACa 630/03).
In view of this, the grant by the Polish Patent Office of a right of protection for the trademark ‘czekoladowe serce’ (‘chocolate heart’) in respect of chocolate bars and creams clearly stands out.
There is no doubt that the greater the semantic distance between the heart symbol and the product or service, the bigger the chances of obtaining a right of protection. Examples include:
- the word mark ‘SERCE’ (‘HEART’) registered on behalf of Orange Polska for telecommunications services, known from a popular series of TV commercials featuring ‘Heart and Mind’ as protagonists (https://www.youtube.com/channel/UCnokxRIhgwRe7RmrSjHVZBQ),
- the word mark ‘SERDUSZKO’ (‘LITTLE HEART’) registered on behalf of Zott (SE & Co. KG) for yoghurts,
- the word mark ‘Prosto w serce’ (‘Right through the heart’), which is also the title of a television series broadcast by TVN television station, registered for television films and shows.
‘A heart as sound as a bell’ – for everyone
In a case concerning a ‘Kama’ margarine commercial, the Supreme Court ruled that the advertising slogan ‘Serce jak dzwon’ (‘A heart as sound as a bell’) did not satisfy the requirement of originality and could not be protected under the provisions of the copyright law. The advertising agency which had created the popular commercial (why not see the video to refresh your memory – it will steal your heart: https://www.youtube.com/watch?v=IAP6ncIjPF8) requested the court to prohibit the use of the expression ‘Serce jak dzwon’ in another commercial. According to the agency, both the commercial and the slogan ‘Serce jak dzwon’ constituted creative works.
The Supreme Court held that the commercial (and its elements, including the advertising slogan) could be protected under the provisions of the copyright law, if the element by itself satisfied the requirement of originality. “The protection of the slogan ‘Serce jak dzwon’ (…) under the provisions of the copyright law cannot be afforded for obvious reasons. The slogan fails to satisfy the requirement of originality. It is a common saying that refers to a healthy heart which has a regular beat. And sayings, similar to words, idioms or proverbs, are part of the public domain and are free for everyone to use.”
The court further held that the combination of the expression (advertising slogan) and the advertised product also failed to satisfy the requirement of originality (it did not have enough creativity to be copyrightable). The court noted that: “Such a combination is a part of the stock of means that audiovisual advertising is based upon” (the judgment of the Supreme Court of 4 March 2002, case file V CKN 750/00).
See what we have referred to:
- The Polish Act of 30 June 2000 – Industrial Property Law (Journal of Laws of 2017 Item 776, consolidated text.
- The Polish Copyright and Related Rights Act of 4 February 1994 (Journal of Laws of 2017 Item 880, consolidated text.
- The court judgement of 22 September 2016, case file T-512/15.
- The judgement of the Appellate Court in Katowice of 10 July 2003, case file I ACa 630/03 (http://katowice.sa.gov.pl/container/biuletyny//biuletyn_2003_4.pdf, last accessed on 13/02/2018).
- The judgement of the Supreme Court of 4 March 2002, case file V CKN 750/00.