Gold (and, less so, platinum) glitters and its shining is visible from afar. Trade marks, even though they are not precious metals, equally enjoy better visibility and are more conspicuous when they include those magic words. Both the words gold and platinum denote something very safe and valuable. No wonder then that a trade mark applicant chose the word "platinum".

The trade mark was filed in 1995 and registered as Platinum Bank (number 148442). Later, in 1997 some amendments were made in that the word "bank" was excluded from the designation. The remaining registration got a new number 148442/4. Still later, a cancellation action was filed against the registration. The petitioner argued that the word "platinum" points to the quality of the goods and in that context is widely used in world trade to symbolize manufacturers achieving the highest possible quality of goods and services. The petitioner stressed that the word was used especially in respect of hard liquor.

The Chamber for Patent Disputes recognized those arguments as convincing in a decision of March 9 2007 and pointed out that there was an independent international organization called BID which annually awards prizes to the best international companies. One of the prizes is for platinum quality.

The owner of the trade mark did not agree with the decision and appealed the decision in court. The court in several instances upheld the decision of the Chamber of Patent Disputes.

Curiously enough, the Chamber of Patent Disputes took a diferent stance in another case that is no less precious. A trade mark Gold Smirnov from Russia (number 143632) was registered in respect of alcoholic beverages.

The appealing party argued that the word element "gold" refers to designations pointing to the quality and properties of the goods; in fact it is laudatory. Aside from the basic semantic meaning suggesting that an item has been made of gold the word has another connotation meaning very good or excellent. So, according to the appealing party it should be recognized as descriptive and laudatory. Another word element in the mark (Smirnov) is one of the most common names in Russia.

The owner of the trade mark argued in response that any word used as a separate language unit is not protectable but, if in conjunction with another word or several words, the meaning may totally change and it may become protectable and have the function of a trade mark.

The use of the word "gold" in its figurative sense in relation to a live being or to a human quality (a heart of gold) does not support the thesis of descriptiveness with regard to the labelled products. In this particular context it is perceived as a coined word. The trade mark owner further argued that the word combination Gold Smirnov has a very specific meaning. The word "gold" used attributively supplies distinctiveness to the mark and suggests association with a very good person Smirnov and not simply with a rank-and-file Smirnov.

So the Chamber of Patent Disputes upheld the opinion of the trade mark owner. Returning to Platinum, one may only guess what decision could have been taken by the Chamber of Patent Disputes if the owner did not amend the original trade mark Platinum Bank: one cannot step twice into the river.