CANCELLATION No 12758 (INVALIDITY)

Uniwersytet Jagiellonski, ul. Golebia 24, 31-007 Kraków, Poland (applicant), represented by Kancelaria Patentowa Dr. W. Tabor SP.J., Katarzyna Tabor-Kmiecik, ul. Mazowiecka 28a/8-9, 30-019 Kraków, Poland (professional representative)

a g a i n s t

Justyna Oska, Koninska 1/4, 02495 Warszawa, Poland (EUTM proprietor), represented by Kondrat & Partners, Al. Niepodleglosci 223/1, 02-087 Warszawa, Poland (professional representative).

On 25/07/2017, the Cancellation Division takes the following

DECISION

1.        The application for a declaration of invalidity is upheld.

2.        European Union trade mark No 13 259 585 is declared invalid in its entirety.

3.        The EUTM proprietor bears the costs, fixed at EUR 1 080.

REASONS

The applicant filed an application for a declaration of invalidity against European Union trade mark No 13 259 585 ‘Collegium Novum’ (word mark) (the EUTM). The request is directed against all the services in Class 41 covered by the EUTM. The application is based on the well-known mark ‘Collegium Novum’ in Poland and on the industrial property right ‘Collegium Novum’ protected in Poland. The applicant invoked Article 53(1)(a) EUTMR in connection with Article 8(1)(a) EUTMR and Article 53(2)(d) EUTMR.

The applicant also invoked Article 52(1)(b) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that it is entitled to the well-known trade mark ‘Collegium Novum’ in Poland for services related to education and didactic services. It adds that there exists identity between the contested and the earlier well-known trade mark since both signs are composed of the two identical terms ‘Collegium’ and ‘Novum’ and the services covered by the compared marks are identical.

It further explains that ‘Collegium Novum’ is used as a reference to the main building of the Jagiellonian University in Krakow, Poland, being a representative and symbolic building of the University. It argues that it cannot be denied that every Polish citizen makes a link between the sign ‘Collegium Novum’ with education and didactic services. Therefore, there exists a high reputation or recognition of the Jagiellonian University in Poland and it is unquestionably recognisable throughout the country.

The applicant considers that the EUTM proprietor was acting in bad faith when it filed the contested mark. It points out that, taken into account the status of the well-known trade mark ‘Collegium Novum’ in relation to education and didactic services, the proprietor, at the time of filing, was aware that the contested mark is the name of the representative building of the oldest university in Krakow. Therefore, its intention was achieving undue benefits from the well-known character of the earlier mark.  

In support of its observations, the applicant filed some evidence. As the applicant requested to keep certain data contained in the evidence confidential vis-à-vis third parties, the Cancellation Division will describe the evidence only in the most general terms without divulging any such data.

• Cover of a book which, according to the applicant, refers to “Dictionary -History and traditions of the Jagiellonian University”, Janusz Sondel, Cracow 2012. It includes an excerpt in English explaining the history of Collegium Novum.

• Extracts from Wikipedia which explains the history and tradition of the Collegium Novum as the main building of the Jagiellonian University. Extract from the website www.en.uj.edu.pl showing information about the Jagiellonian University. Extracts from websites in Polish referring to Collegium Novum. In some of them it is a recommended place to visit in Krakow.

• An extract from the website www.krakow4u.pl in Polish including an excerpt translated into English which explains the history of Collegium Novum as a main building of the Jagiellonian University. It includes pictures of the building.

• An extract from the online publication Alma Mater which includes an article where Collegium Novum is mentioned as an historical room of the Jagiellonian University.

• An extract showing the contact details of Collegium Novum.

• Cover of the publication Alma Mater in 2014 and an extract in Polish with a partial translation into English where it states that a ceremony was organised in Collegium Novum in 2010.

• An extract from the website www.en.uj.edu.pl dated 2016 showing information about a meeting organised in the hall Collegium Novum.

• An extract in Polish which, according to the applicant, refers to a fragment of the Polish Manuel for ‘Zrozumieć przeszłość Dzieje najnowsze po 1939 roku’.

• Different extracts in Polish with partial translations into English about the hall Collegium Novum at the Jagiellonian University organising events and exhibitions.

• Preface of the book ‘Collegium Novum’ Monika Bogdanowska, Andrzej Chwalba, Cracow 2014.

• Document in Polish with a partial translation into English of the Article Hall Building of Collegium Novum as a text of culture – Tomasz Weclawicz – Wiadomosci Konserwatorskie 14/2003.

The EUTM proprietor rebuts the applicant’s arguments and argues that the contested and the Polish mark ‘c-n’ are used in commerce to distinguish the trade mark owner’s educational services offered under the name ‘Akademia Maturalna Collegium Novum w Warszawie’ which was created in 2004. It adds that its intention was that the contested sign would refer to the New Secondary school certificate exam and New Quality in Education.

The proprietor further explains that Collegium Novum Secondary Certificate Academy in Warsaw has reached a high standard of educational services it offers to its students and it has obtained an accreditation from Mazovian Education Curator. According to the EUTM proprietor, no client has ever asked whether the Academy is somehow connected with Jagiellonski University or whether it offers courses preparing students to entry in that University. Therefore, there is no link between the Academy and the University.

Finally, the proprietor claims that it acted in good faith when filing the contested mark and that its intention when it applied for the contested mark was to protect the brand from unfair competition of other businesses.

On the other hand, the proprietor denies that Collegim Novum constitutes a well-known trade mark in relation to the services offered by the University as it is used by many different universities throughout Poland to designate their buildings.

In support of its observations, the EUTM proprietor filed the following evidence:

• A printout from the Polish Patent Office web page concerning the trade mark ‘c-n’ R.280146 dated 15/09/2014 for services in Class 41.

• A printout from the web page http://www.collegium-novum.pl in Polish with a partial translation into English concerning the proprietor’s business which started in 2003.

• Printouts from the web page of the SJP Polish Language Dictionary dated 15/06/2016 defining the words ‘collegium’ and ‘novum’.

• Copy in Polish and in English of the Mazovian Education Curator’s Accreditation document awarded to ‘Collegium Novum’ dated 2011.

• A printout from the web page http://www.collegium-novum.pl in Polish and in English dated 2016 concerning the Mazovian Education Curator’s Accreditation awarded to Collegium Novum in 2011.

• Excerpts in Polish and in English dated 2016 which, according to the Proprietor, are extracted from evaluation questionnaires used by Collegium Novum Academy in the course of the last 7 years (exemplary questionnaires from the years 2012 and 2015). It includes the feedback given by the students to the courses and the institution.

• A printout from the web page from the Wydzial Anglistyki University in Poznan dated 2016 including a reference to Collegium Novum as a building.

• A printout from the web page of the Medical University in Biatymstok dated 2016 which mentions Collegium Novum.

• A printout from the web page of the Medical University of Lublin showing pictures of a brand new building of Collegium Novum.

• A printout from the web page of the Stanistaw Staszic Public Administration School in Bialymstok dated 2016 in Polish with a partial translation into English which states: The Collegeis located in a picturesque park complex. Its seat is in the historical building of the 19th Century Lubomirski Palace and the modern building of Collegium Novum.

• A printout from the web page of the University of Management and Administration in Zamoš dated 2016 in Polish showing the contact details of the University with a mention to Collegium Novum.

• A printout from the web page of the Public Vocational School in Kalisz in Polish including a mention to Collegium Novum.

• A printout from the web page https://pI.wikipedia.org concerning the faculty buildings of Uniwersytet Jagielloñski mentioning Collegium Novum at the Jagiellonian University.

 

In reply, the applicant reiterates its previous arguments. It insists on the fact that the proprietor was well informed and aware that the contested mark belongs to a third entity and it is linked directly with it. The applicant rebuts the proprietor’s argument that Collegium Novum is used by other universities in Poland by stating that their use is not scripted in the same tradition and specific circumstances that the one which are associated with the applicant’s.

Finally, the proprietor reiterates its previous arguments. It also points out that Collegium Novum does not enjoy legal protection since it has never been used by the Jagiellonian University for any goods and services offered by the University. It also points out that the objective of applying for the contested mark was to take preventive measures ensuring the protection of a brand that had been well established on the market from unfair competition of other facilities organising courses or preparing for the examinations in the Mazovian province.

Preliminary remark

The application for invalidity is based on more than one ground. The Cancellation Division finds it appropriate to first examine the application in relation to the applicant’s absolute grounds for invalidity of Article 52(1)(b) EUTMR. 

ABSOLUTE GROUNDS FOR INVALIDITY – ARTICLE 52(1)(b) EUTMR

General principles

Article 52(1)(b) EUTMR provides that a European Union trade mark will be declared invalid where the applicant was acting in bad faith when it filed the application for the trade mark.

There is no precise legal definition of the term ‘bad faith’, which is open to various interpretations. Bad faith is a subjective state based on the applicant’s intentions when filing a European Union trade mark. As a general rule, intentions on their own are not subject to legal consequences. For a finding of bad faith there must be, first, some action by the EUTM proprietor which clearly reflects a dishonest intention and, second, an objective standard against which such action can be measured and subsequently qualified as constituting bad faith. There is bad faith when the conduct of the applicant for a European Union trade mark departs from accepted principles of ethical behaviour or honest commercial and business practices, which can be identified by assessing the objective facts of each case against the standards (Opinion of Advocate General Sharpston of 12/03/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 60).).

Whether an EUTM proprietor acted in bad faith when filing a trade mark application must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 37).

The burden of proof of the existence of bad faith lies with the invalidity applicant; good faith is presumed until the opposite is proven.

Outline of the relevant facts

The applicant explains that ‘Collegium Novum’ is used as a reference to the main building of the Jagiellonian University in Krakow, Poland, being a representative and symbolic building of the University.

In the present case, the evidence provided, namely the publications and extracts, some of them indicating Collegium Novum as a place to visit or a venue for events and exhibitions, shows that the contested mark is the name of the representative building of the oldest university in Krakow and that it represents a symbolic place for events happened during the Second World War. The evidence proves that memorials and events have taken place in such historical building and that it is integrated in an educational institution such as the University of Krakow providing higher education services.

On the other hand, the proprietor argued that it offers its services under the name ‘Akademia Maturalna Collegium Novum w Warszawie’. However, the evidence filed, namely the extract of its web page, shows that the proprietor merely uses ‘Collegium Novum’ for education services.  

Assessment of bad faith

One situation which may give rise to bad faith is when a commercial entity has obtained some degree of legal protection by virtue of the use of a sign on the market, which a competitor subsequently registers with the intention of competing unfairly with the original user of the sign.

In such instances, the Court of Justice of the European Union (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 48 and 53) has stated that the following factors in particular should be taken into consideration:

1. the fact that the EUTM proprietor knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the contested EUTM;

2. the applicant’s intention of preventing that third party from continuing to use such a sign;

3. the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration is sought; and

4. whether the EUTM proprietor in filing the contested EUTM was in pursuit of a legitimate objective.

The abovementioned are only examples drawn from a number of factors which can be taken into account in order to determine whether or not the applicant was acting in bad faith when filing the application; account may also be taken of other factors (14/02/2012, T-33/11, Bigab, EU:T:2012:77, § 20-21 and 21/03/2012, T-227/09, FS, EU:T:2012:138, § 36).

On the knowledge of an identical denomination

Firstly, the assertions of the invalidity applicant are supported by evidence of the intention of the EUTM proprietor when filing the contested trade mark. The applicant alleges that the EUTM proprietor filed the application of the contested mark as a misappropriation of the prestige of the historical building ‘Collegium Novum’ to obtain undue benefits. The evidence submitted shows that Collegium Novum is recognised by the relevant public as an historical place related to a tuition institution, namely, the Jagiellonian University in Krakow, Poland.

Secondly, the applicant contends that taken into account the status of the well-known ‘Collegium Novum’, in relation to education and didactic services, the proprietor, at the time of filing, was aware that the contested mark is the name of the representative building of the oldest university in Krakow in relation to higher education services.

Indeed, the invalidity applicant has submitted enough and conclusive evidence to show that at the time of filing of the contested mark, the EUTM proprietor must have been aware of the recognition of the building and what it represents. The argument of the applicant that the parties are in the same field of education together with the fact that, as demonstrated by the evidence submitted by the applicant, the name Collegium Novum is recognized among the Polish public as a building of a special historical and symbolic value of the old and prestigious University, are conclusive, of the awareness of the proprietor. It follows from the evidence that, at the time of filing the contested EUTM, the EUTM proprietor must have been aware of the existence of this historical and prestigious building.

However, as stated in case-law, the fact that the EUTM proprietor knows or must know that the invalidity applicant has been using an identical/similar sign for identical/similar goods for which a likelihood of confusion may arise is not sufficient for a finding of bad faith (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 40). In order to determine whether there was bad faith, the EUTM proprietor’s intentions at the time of filing must also be taken into account.

It follows from the long-standing use within the same economic sector that at the time of filing the contested EUTM the EUTM proprietor must have known of the invalidity applicant’s Collegium Novum and that there might be a likelihood of confusion with the contested EUTM.

On the other hand, the proprietor denies that Collegium Novum constitutes a well-known trade mark in relation to the services offered by the University as it is used by many different universities throughout Poland to designate their buildings. It also points out that Collegium Novum does not enjoy legal protection since it has never been used by the Jagiellonian University for any goods and services offered by the University.

However, in the present case, the evidence provided by the applicant shows that the expression ‘Collegium Novum’ is overwhelmingly linked to the image of the historical building bearing this name. This building of the University in Krakow is interconnected to the services of education for which it is recognised in the market and it forms an indissoluble unit. Therefore, the proprietor’s argument is dismissed.

Identity of the denomination

Article 52(1)(b) EUTMR does not require, in principle, that the contested EUTM be identical or similar to an earlier right. However, in cases where the invalidity applicant is claiming that the intention of the EUTM proprietor was to misappropriate one or more earlier rights, such as the present one, it is difficult to envisage how a claim of bad faith may succeed if the signs at issue are not at least similar.

In the present case, the contested mark completely reproduces the name of the famous university building connected with the applicant. Moreover, they are present in the niche market of the education in the same territory.

The proprietor argues that its activities are confined to the Mazovian district and not in Krakow. However, taken into account the targeted and specialised sector of the market of the education services, the fact that its business activity takes place in a part of Poland does not prevent the public from establishing a link when facing the contested mark with the name of the historical building, especially, when the recognition of the name Collegium Novum connected to the Jagellonian University is spread over the entire territory of Poland. Therefore, the proprietor’s argument is dismissed.  

Legitimate objectives of the EUTM proprietor

Account must also be taken of whether the EUTM proprietor’s filing intentions may be in pursuit of legitimate objectives.

This may be the case, for example, if at the time of filing the contested EUTM, the EUTM proprietor knows that a third party, who is a newcomer on the market, is trying to take advantage of that sign by copying its presentation, and the EUTM proprietor seeks to register its sign with a view to preventing use of such a copy (11/06/2009, C-529/07, Lindt Goldhase, EU:C:2009:361, § 49).

In the present case, the EUTM proprietor argues that the objective of applying for the contested mark was to take preventive measures ensuring the protection of its brand that had been well established on the market from unfair competition of other facilities organising courses or preparing for the examinations in the Mazovian province.

However, this argument cannot be established since the historical building Collegium Novum is recognised as an educational institution at the University of Krakow providing higher education services for long time ago, many years previous to any alleged beginning of the commercial activity of the proprietor.

Moreover, the proprietor alleged that the contested mark is used in commerce to distinguish the trade mark owner’s educational services offered under the name ‘Akademia Maturalna Collegium Novum w Warszawie’ which was created in 2004. However, it only filed the contested mark on 15/09/2014.

These are indications against the EUTM proprietor’s claim of legitimate objective.  

Therefore, the Cancellation Division concludes that the alleged legitimate interest of the EUTM proprietor must be rejected.  

Although no direct relationship between the two parties was demonstrated, in view of the recognition of the name of the educational institution, of its long term tradition and prestige, which had to be known by the proprietor, and in view of the fact that the proprietor develops a business activity in the same sector and uses exactly the same denomination, it is difficult to imagine any scenario in which the proprietor’s intentions when starting to use the mark and when filing the EUTM were others than to try to acquire an advantage by associating itself with the prestigious educational institution to which it is not in fact connected in any way.

Conclusion

In light of the above principles and of the circumstances and facts presented by the applicant, the Cancellation Division is of the view that the applicant has succeeded in proving its allegation that the EUTM proprietor was acting in bad faith when filing the contested EUTM. The applicant provided reasoned statements supported by evidence or facts leading to a safe conclusion that the EUTM proprietor had a duty to refrain from filing the contested mark. As a consequence, the applicant is considered to have established the EUTM proprietor’s dishonest intention or any other unfair practice involving bad faith on its part.

In the light of the above, the Cancellation Division concludes that the application is totally successful and the European Union trade mark should be declared invalid for all the contested services.

When bad faith of the EUTM owner is established, the whole EUTM is declared invalid, even for goods and services that are unrelated to those protected by the invalidity applicant’s mark. The General Court confirmed this approach and stated that a positive finding of bad faith at the time of filing of the contested EUTM could only lead to the invalidity of the EUTM in its entirety (11/07/2013, T-321/10, Gruppo Salini, EU:T:2013:372, § 48). The protection of the general interest in business and commercial matters being conducted honestly justifies invalidating a EUTM also for goods/services that are dissimilar to the invalidity applicant’s ones and do not even belong to an adjacent or neighbouring market.

Since the application is fully successful on the basis of the ground of Article 52(1)(b) EUTMR, there is no need to further examine the other grounds of the application, namely Article 53(1)(a) EUTMR in connection with Article 8(1)(a) EUTMR and Article 53(2)(d) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (6) EUTMIR and Rule 94(7)(d)(iii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Elisa ZAERA CUADRADO

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Cancellation Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.