Some time ago, a leaked message from InPost asking customers not to accidentally decline the Paczkomat trademark name sparked laughter and controversy. "If necessary, precede the Paczkomat® trademark with the words 'device/automatic' and decline only that word, e.g., a list of available Paczkomat® devices," company representatives told customers. After jokes about the non-declination reached mainstream media, the company partially backtracked on this stance. In a video posted on LinkedIn, its CEO, Rafał Brzoska, assured customers that "they can call Paczkomat InPost whatever they like," and the suggestion was directed solely at the company's employees and partners. It might seem, then, that despite the media hype, the entire matter is fundamentally irrelevant—but there is a broader legal issue behind it.
The problem is determining whether the word "paczkomat" possesses sufficient distinctive features to be recognized as a trademark. It was first registered with the Polish Patent Office in 2009 by Integer SA and granted protection. The legal dispute arose in 2015, when Poczta Polska filed a motion to invalidate this protection due to the loss of distinctive features, arguing that the word is solely descriptive. However, the Patent Office rejected the motion, stating that the combination of the elements "paczko-" and "-mat" does not directly describe the characteristics of the goods. In the opinion of the Adjudicating Board, the applicant failed to demonstrate exhaustively that the "-mat" ending in common usage denotes an automatic machine. Even if it did, the entire structure would denote a machine engaged in an unspecified activity related to packaging, and the shape of a locker in which parcels are stored is not the first thing that comes to mind in this situation. While it is true that this device is not used to produce parcels, but to send and receive them, one may wonder whether this is really a sufficient reason to conclude that the connotation is not obvious enough?
In the opinion of the Provincial Administrative Court in Warsaw – no. In its judgment of 5 December 2017, file reference VI SA/Wa 1270/17, it rejected the Patent Office's arguments and repealed the Decision appealed against by Poczta Polska. It cited, among other things, the judgment of the Court of Justice of the European Union, including the precedent-setting judgment of 12 February 2004 in case C-33/99, Koninklijke KPN Nederland NV, which established the interpretation that a mark consisting of a combination of descriptive expressions is also descriptive, unless its whole constitutes more than the sum of its parts. Other examples of trademarks invalidated by CJEU judgments included "DigiFilm" and "DigiFilm Haker" (T-178/03 and T-179/03, September 8, 2005) and "ecoDoor" (T-625/11, January 15, 2013). As the court pointed out, the origin of the neologism "paczkomat" can be easily deciphered once both parts are capitalized. Furthermore, while creating new words with the "-mat" ending was less common, the word "bankomat" was in common use. An additional factor militating against maintaining the trademark is the fact that InPost also registered a utility model and an industrial design under the same name, as well as the invention "paczkomat modularowy." As a rule, it is unacceptable to use a fanciful name in the titles of these designs – the company itself thus implicitly admitted that it was generic. Of course, the judgment of the Regional Administrative Court was appealed – the Supreme Administrative Court dismissed the cassation appeal in judgment II GSK 1118/18 of 22 March 2022. This does not mean, however, that the Patent Office's decision was judicially changed in favor of Poczta Polska – the proceedings in this case were returned to the Office, which has not yet issued a decision in this regard.
Faced with the uncertain future of the trademark at the Patent Office, InPost has taken decisive action to prove its validity. This includes not only prohibiting the use of the word "Paczkomat" in official communications, but also demanding a correction from journalists who had assigned the trademark to another company. The effects of these combinations have sparked intense interest, but also some consternation, among linguists and patent attorneys. Poczta Polska's application is easier for the trademark owner because the Patent Office must assess the status quo in 2009, when the device was indeed new and innovative, despite its simple name and design. However, as Dr. Wojciech Gierszewski points out, even if the application to invalidate the "Paczkomat" trademark is ultimately dismissed, a second avenue will open for competitors: proceedings to declare its revocation due to loss of distinctiveness . It is precisely for this situation that InPost takes steps to prove active trademark protection, including warning letters and press rectification actions.
But how effective are such actions? According to patent attorney Mikołaj Lech, to combat the process of trademark degeneration, it's important to avoid accidentally altering a trademark. It's a good idea to always include the ® symbol near the name and logo. It indicates that the symbol is registered with the patent office. This isn't unique in the market; for example, in Wedel's formal correspondence, we always read about "Bajeczny® Sweets from Wedel" or "Aspirin® from Bayer." Dr. Gierszewski, on the other hand, doubts that this can protect a trademark in the long run. In his opinion, the "Paczkomat" trademark lacks distinctiveness and should not be registered . Of course, every company has every right to fight for trademark protection. The question is, however, how long the legal status can resist natural language changes. The difficulty of this can be demonstrated by text messages in which InPost informs us that a parcel is waiting for us at a Paczkomat.
Regardless of the decision of the Polish Patent Office, the issue of distinctive features constantly accompanies legal conflicts related to trademark registration – the issue of the possibility of registering a face as such was previously discussed in Technoglogy. The issue of the spread of names originally functioning as trademarks is also interesting from the perspective of linguistics. In addition to simple neologisms such as "paczkomat," common names for objects are derived directly from the companies that created them, such as "ksero" or "razor blades." It's also worth noting that InPost also owns a currently unused trademark, "Pocztomat," which was constructed on the same principle and has not been the subject of legal disputes so far. This is certainly neither the first nor the last time the topic of trademark distinctiveness has appeared in the media.
This alert is for informational purposes only and does not constitute legal advice.
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