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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
MONDAY, 15 NOVEMBER 2010
Poland: the battle over OXFORD
On 14 March 2007, the Polish Patent Office registered word-figurative trade mark "Oxford Wielka Historia Świata" R-187352 for goods in Class 16 such as books and periodicals. The Polish company "Oxford Educational" sp. z o.o. from Słupsk was the applicant and the holder of the right of protection. The Chancellor Masters and Scholars of the University of Oxford (Oxford University Press) filed a request for invalidation. The OUP argued that it is obvious to everyone that Oxford is a place uniquely associated by the public around the world as the home of a famous university. Therefore marking the goods with a signs associated with Oxford - the seat of the famous University of Oxford - may mislead the public as to the true geographical origin of products. The OUP also pointed out that, with priority from 24 April 1995, is entitled to the rights of protection to three trade marks sharing the same verbal element, OXFORD, R- 103399, OXFORD UNIVERSITY PRESS R- 102351 and OXFORD ENGLISH R- 102350.

The Polish company argued that the trade mark at issue does not refer to a geographical name of Oxford town, but to holder's company name, and therefore it is not misleading. Oxford Educational also argued that the disputed sign was created in collaboration with an English company. The Polish Patent Office invalidated the right of protection. The PPO ruled that the conflicting trade marks are registered for identical goods, therefore, there is a risk of misleading the public as to their origin. Oxford Educational filed a complaint against this decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 13 May 2010 case file VI SA/Wa 299/10 dismissed the complaint and held that in case of a collision between a company name (the firm) and a trade mark that was registered with the "worse priority," the priority shall be given to the right that was previously-formed. The mere registration of a trademark that is identical or similar to another company’s name (firm) does not provide even a breach of the rights to the company. However, the right to the company name would be infringed if the registration of a conflicting trade mark interferes with the exercise of this right. This distortion is misleading as to the identity of actors (acting under the company name and usign the sign) and therefore may jeopardize the company name. In case of a known, reputable, i.e. "strong" trade mark it means that the consumer awareness is associated with the recognized high-quality of products, derived from the manufacturer with high reputation. Thus, the registration of the questioned trade, and more - its application was made with a clear intention to benefit from the reputation of the OXFORD trade mark.
Posted by: Tomasz Rychlicki @ 12.32
Tags: Voivodeship Administrative Court, famous trade marks, firm, likelihood of confusion, similarity of goods, similarity of signs, trade mark invalidation, well known trade marks,
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