Collective mark and guarantee mark
An amendment to the Industrial Property Law has led to changes regarding particular types of trademarks such as collective marks and guarantee marks. Collective marks were included in the previous version of the act, but the guarantee mark is something new, replacing the collective guarantee mark. This will have certain implications for businesses.
Collective marks
Most trademarks are “individual” trademarks, which means that they are owned by a single proprietor and are mostly used solely by the proprietor. There are also less common types of trademarks. These might also be owned by a single entity, while a number of businesses have the right to use them. A collective mark is an example of a mark of this kind. Under the new law, a collective mark can be granted to:
- An organisation that has the capacity to acquire rights and contract obligations on its own behalf, set up to represent the interest of businesses, or
- A legal person operating under public law.
The following are entitled to use a collective mark:
- In the case of an organisation, the organisation or members of the organisation
- In the case of a legal person operating under public law, that person, or persons entitled to use the mark under the terms of use of the mark.
Thus the amendment expands the range of entities that can apply to register trademarks of this kind. Before, only organisations that are legal persons created to represent the interests of businesses could be proprietors. Now, for example, local government authorities and their associations, residents’ associations, political parties, and municipal authorities can own a collective mark.
This means that a collective mark can be used at the same time by multiple entities that do not own it. On the other hand, businesses and proprietors can use a collective mark provided that they comply with the terms of use for the mark laid down by the organisation.
The terms of use must state in particular:
- The persons entitled to use the mark
- The requirements for membership of the organisation
- The conditions for using the mark, and
- The consequences of breaching the terms of use.
A collective mark can, but does not have to, attest to the quality of products. The terms of use for a collective mark can be worded to guarantee the quality of the organisation’s products and services.
As such, collective marks are not a new institution. One example of a collective mark is “Junge Polnische Hafermastgans” (for “young Polish oat-fed geese”). This is a mark owned by the National Poultry Council Chamber of Commerce in Warsaw, of which more than 80 businesses in the poultry industry are members, including agricultural universities, poultry breeder and producer associations, poultry meat processing plants, fodder manufacturers, and individual poultry breeders and producers.
The mark of the Polish Optometric Association, of which people and institutions in optometrics are members, is another example of a collective mark:
The Szczecin Private Transport Association also has a collective mark. The member groups provide passenger services, offering competitive prices and high-quality services.
This shows that a collective mark enables members of an association to promote their products and find customers and distributors jointly. This is a much less expensive and more effective method than registering and promoting individual trademarks.
In some cases, collective marks can resolve issues relating to rights to use trademarks owned by business associations that operated in communist times. One example of this is the well-known Herbapol trademark, registered in the name of PPHU Herbapol sp. z o.o. based in Warsaw. The Herbapol trademark was created in the 1940s for state-owned producers of herbs, owned by the Herbapol Herbal Industry Association in Warsaw. Today it is used collectively by a number of entities operating under the Herbapol name.
The word mark Pollena is another example. It continues to be registered in the name of Ciech SA in Warsaw. Another is Polmos (distilleries), registered in the name of Przedsiębiorstwo Usługowe Znaki Wspólne sp. z o.o. in Warsaw.
Guarantee mark
The amendment also addresses the guarantee mark. This is defined as a mark that distinguishes products that are certified by the proprietor (for example due to the material, manufacturing process, quality, precision, or other attributes) from non-certified products. Guarantee marks have now replaced collective guarantee marks.
A guarantee mark can be registered in the name of a natural or legal person, and this includes institutions, authorities, and entities operating under public law, that does not supply products of the same type as the certified products.
A guarantee mark can be used solely by persons eligible under the terms of use specified by the proprietor. In this case, the holder of the mark has the power to monitor the method and quality of manufacture of products bearing that mark. At the same time, the proprietor cannot deny entities eligible under the terms of use the right to use the trademark without good reason.
Guarantee marks are intended to assure consumers of specific properties of products that bear the mark. The standard for these properties is specified in the terms of use. The terms of use must state clearly and precisely the following in particular:
- The persons eligible to use the mark
- The properties attested to by the mark
- The manner in which testing for those properties is conducted
- The manner in which use of the mark is monitored
- The conditions for using the mark, and
- The consequences of breaching the terms of use.
An explicit provision stating that a guarantee mark can consist of elements identifying the geographical origin of products is a new development. Unlike other trademarks, a guarantee mark can be registered even if it consists solely of elements identifying the geographical origin of products. This is not possible with respect to other types of trademarks. Importantly, a statement of geographical origin in a guarantee mark must be true.
Meanwhile, the holder of a trademark of that type cannot forbid third parties from using marks containing geographical elements if they do so according to fair industry and commercial practice.
Under the previous act, reference was made accordingly to trademark laws in matters that were not regulated. The amendment states specifically that neither a collective mark (discussed above) nor a guarantee mark can be registered if there is a risk of consumers being misled as to the nature or meaning of the mark, especially if it could be mistaken for a mark other than a guarantee mark.
New guarantee marks can be applied for from 16 March 2019. Below are a number of examples of collective guarantee marks existing at the moment.
The trademark of the Association of Polish Regional Breweries in Olsztyn, created by 10 local breweries, is used for beer produced according to brewing rules established by the association:
The mark Produkt Tradycyjny z Małopolski (“traditional product from Małopolska”) is another example. It is owned by the province of Małopolska:
The right to use this trademark is granted to entities that manufacture products placed on the List of Traditional Products maintained by the Ministry of Agriculture and Rural Development with their geographical origin in the province of Małopolska.
The National Association of Building Materials Manufacturers in Zaklików also holds a collective guarantee mark (literally, “Polish Brick”):
Products bearing this mark have a favourable price and are of high quality; they are often products of small, family-owned businesses rather than large-scale ceramics plants.
Polskie Centrum Badań i Certyfikacji SA also holds a collective guarantee mark:
This mark confirms that a product complies with eco-agriculture requirements, and is used to label and advertise eco-products.
Another well-known guarantee mark is the symbol of the Polish Regional and Local Product Chamber in Warsaw, used to label grocery products produced using natural materials and traditional methods:
Why are the changes necessary?
The answer to this question can be found in EU trademark laws. Since 1 October 2017, it has been possible to apply for certification marks with the EUIPO. Since that date, 156 marks of this kind have been applied for and 22 have been registered. Examples include:
In fact it was the possibility of registering certification marks with the EUIPO that was the grounds for Polish lawmakers to amend the Industrial Property Law. Guarantee marks are intended to afford Polish businesses similar protection without their having to apply for certification marks with the EUIPO, which entails higher costs. Such businesses may only intend to use the marks in Poland.
The only difference between guarantee marks and certification marks is that the ones now included in the Industrial Property Law can be used to attest to geographical origin of products. In this respect, Polish law provides broader protection than EU certification marks.
A comparison of laws on collective guarantee marks used previously in the Polish legal system and new guarantee marks reveals that essentially the only change is in the name, and the fundamental nature of the mark is the same. Therefore, Polish businesses were not unable to obtain trademarks of this type in the past.
Loss of a collective mark or guarantee mark
As in the case of other types of trademarks, a collective mark or guarantee mark can be invalidated if the relevant requirements are not fulfilled. The amendment specifies clear prerequisites for invalidation of these two kinds of trademarks.
Collective marks and guarantee marks can be invalidated if:
- The terms of use for the mark breach principles of public order or good customs
- There is a risk of misleading consumers as to the nature or meaning of the mark, particularly if it could be considered to be a mark other than a collective mark or guarantee mark.
The types of marks described above would not be invalidated on these grounds, however, if the proprietor made appropriate changes to the terms of use.
The amendment also modifies the prerequisites for expiry of a collective or guarantee mark. Apart from the standard grounds that apply to all trademarks (mainly with respect to non-use of the mark), a collective mark or guarantee mark will also expire:
- When the proprietor does not take measures to prevent use of the collective mark or guarantee mark in breach of the terms of use of the mark
- When the proprietor uses the collective mark or guarantee mark in a manner that is misleading for consumers as to the nature or meaning of the mark, particularly if it could be considered to be a mark other than a collective mark or guarantee mark
- The terms of use of the collective mark or guarantee mark are amended so that the terms of use no longer meet the requirements specified in the relevant laws—but this will not occur if the proprietor makes essential amendments to the terms of use to remedy this non-compliance before a decision is issued confirming that the mark has expired.
The new legislation is intended to encourage holders of trademarks to exercise control over the requirements for and manner of use of the marks by parties entitled to use them. This serves the interests of all of these entities. Failure to comply with this obligation can lead to a true loss of these rights. The introduction of new grounds for expiry is also intended to protect consumer interests. The aim is to ensure that collective marks and guarantee marks that are used in breach of the terms of use (for example not guaranteeing the product’s special properties) or are misleading as to the nature or meaning of the mark are eliminated from the market.
Transitional provisions
Under the new law, proceedings for registration of collective guarantee marks commenced and still in progress as of the effective date of the act become proceedings for registration of guarantee marks.
Meanwhile, as of the effective date of the new law, 16 March 2019, filings for a collective guarantee mark become filings for a guarantee mark.
Importantly, a proprietor can apply to transform a collective guarantee mark into a guarantee mark up to six months from the effective date of the law, i.e. by 16 September 2019.
View regarding the changes
The changes are a good thing, especially with respect to the enlarged list of entities that can hold these two types of marks. This will certainly lead to an increase in the number of filings for collective marks and guarantee marks. Experience shows that Polish firms are interested in registering marks of this kind. The volume of applications is not large, as on average there are between ten and twenty per year. However, for some entities, this is an important form of protection. Also, unlike individual trademarks, a single collective mark or guarantee mark can be used by multiple entities.
Both of these types of marks are an effective marketing instrument. Guarantee marks are also especially important for consumers because they guarantee particular properties of the products that bear the marks.
The amendment has made rules on obtaining and forfeiting collective marks and guarantee marks more substantial and precise, and this is definitely good news for applicants.
Monika Wieczorkowska, patent attorney, Intellectual Property practice, Wardyński & Partners
