COLLECTIVE TRADEMARKS trademark registration ‘Herbapol’, and
consequently there exists a risk of misleading consumers about the origin of goods protected by ‘Herbapol’ and ‘Herbapol Wroclaw’. In response to the request for cancellation, the owner of
the individual trademark
‘Herbapol Wroclaw’ argued there was no risk of confusion between the marks. Te trademark ‘Herbapol Wroclaw’, because of the element ‘Wroclaw’, clearly indicates that the source of the goods’ origin is a particular entity in Wroclaw. Moreover, the owner of ‘Herbapol Wroclaw’
referred to article 165, point one of the Law on Industrial Property. It says that a request to cancel a right cannot be filed on the ground that it conflicts with an earlier trademark if, for five successive years from the registration date, the requesting party has acquiesced in the registered trademark’s use. Meanwhile, the owner of the collective trademark has never objected to the trademark ‘Herbapol Wroclaw’ even though it must have been aware of such use. Te PPO found the request justified and decided to cancel the ‘Herbapol Wroclaw’ trademark. Te District
Court in Warsaw dismissed the complaint
against this PPO decision and the Supreme Administrative Court dismissed a complaint against the district court’s ruling, finding the complaint groundless. In both instances, the courts decided that
due to the similarity between the opposed marks, there was a risk of confusing consumers about the trademark ‘Herbapol Wroclaw’, owned by only one entity associated with the organisation, and ‘Herbapol’, which all the entities, including the owner of
‘Herbapol
Wroclaw’, have the right to use. Te allegation that parties should lose the
chance to file a cancellation proceeding if they acquiesce in the trademark’s use for five successive years from the registration date was also found groundless. Te organisation was not able to file the opposition, as each associated entity had the right to use ‘Herbapol’ with the geographic name of its location. Due to the historic background and the
Administrative
economic transformation of Poland, it seems very likely that there will be more disputes over the ownership of rights to trademarks that were once collective, and the task of solving any contentious issues will be leſt to the Polish courts.
Anna Zakrocka is a European patent attorney at Patpol. Her practice covers trademark prosecution and litigation, counselling on trademark protection matters, drafting and negotiating agreements, and conducting trademark searches. She represents Polish and foreign clients before the Polish Patent She can be contacted at:
anna.zakrocka@
patpol.com.pl
www.worldipreview.com
World Intellectual Property Review May/June 2015
59
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