The Łukasiewicz Centre | Effective registration of four EU collective marks with EUIPO
- Team Leader
The Client requested our assistance to register EU collective marks. These were four verbal and figurative marks that identify goods and services originating from the Łukasiewicz Research Network: “Łukasiewicz”, “Sieć Badawcza Łukasiewicz”, “Łukasiewicz Research Network” and a ‘Ł’-resembling graphic marking. Following registration, the Client and – most importantly – the institutes that make part of the Łukasiewicz Research Network – could distinguish their products and services from similar products in the market that do not originate from the Network.
What made the case particularly difficult is that – owing to very restrictive subject-related criteria – it is hardly ever that such marks do get registered. It comes as no surprise, then, that EUIPO, as the institution that examines the applications to register collective trade marks, initially refused to allow the request. It argued that the Łukasiewicz Centre, as a legal person governed by public law, does not meet the requirements laid down in Regulation 2017/1001 and the EUIPO Guidelines, because it is not an organisation in a formal sense and does not have an internal organisational structure.
The role of our Firm was to prove that, in view of EU law, our Client is entitled to own EU collective marks. The core difficulty was to convince the EUIPO Boards of Appeal that our Client’s arguments are well-founded, given the divergent EUIPO case law on the matter, no broader analyses of the issue in legal literature and the unfavourable interpretation of Article 74(1) of Regulation 2017/1001 adopted in the EUIPO Guidelines.
On behalf of our Client, we have submitted to EUIPO Boards of Appeal four successful appeals against EUIPO’s decisions that were unfavourable to our Client.
We have proved that the Client is entitled to request registration of EU collective marks.
Our Firm’s line of argument relied on the assumption that EUIPO’s Guidelines are not a binding source of EU law and are merely of auxiliary nature. In consequence, they cannot in themselves extend the scope of requirements that the applicant as a subject requesting the registration of an EU mark must meet in flagrant breach of Article 74(1) of Regulation 2017/1001, and thus narrow down the scope of entities that may notify/ hold an EU collective mark.
The EUIPO agreed with the arguments presented by our Firm and allowed all the appeals submitted by us.
EUIPO’s unfavourable decisions were repealed in full, and the request to register trademarks was sent to be further examined.
On 08 March 2023, EUIPO registered all the EU collective marks notified by the Client.