Collective MarksandCertification Marks An Introduction and Global Overview
Overview • Collective Marks and Certification Marks • How each type works • Nuances associated with registration/use
Collective Marks • General Definition: A collective can be a cooperative, an association, or any other collective group or organization.
Collective Marks • General Definition: A collective mark is a form of trademark or service mark owned by a collective, whose members use the collective mark to identify their goods and services and to distinguish their goods and services from those of non-members, and to indicate membership in the group. • Can also be used by the collective itself to promote the interests of the members.
Collective Marks There are two types of collective marks: • Collective Mark – akin to a normal trademark, but used by members of a “collective.” • Collective Membership Mark – used to indicate membership in the “collective.”
Collective Marks • The “collective” itself typically does not sell goods under the mark, but instead advertises or promotes the goods of its members under the mark. • Example: TURKEY. THE PERFECT PROTEIN. (National Turkey Federation) • Association uses the mark to promote the interests of its members. • Members use the mark on their products to distinguish their products from those of non-members.
Collective Marks • In some instances, the collective may also use the mark as a trademark to identify goods or services. • Example: • Used by members to distinguish their services from those of non-members; and • Used by the collective as a trademark on products.
Collective Membership Marks • General Definition: A collective membership mark is a form of collective mark that is adopted by a “collective” for use only by its members to indicate membership in the collective group. • Neither the collective nor the members use the membership mark to distinguish goods or services.
Collective Membership Marks • Sole function is to indicate membership. • Use is only by members of the collective. • Examples: • WOMEN OF THE MOOSE (indicating membership in a fraternal organization for women). • REALTOR®(identifies members of the NATIONAL ASSOCIATION OF REALTORS®).
Registration of Collective Marks • Nuances of Registration of Collective Marks: • Wide variation among jurisdictions. • Some countries (e.g., Indonesia) do not recognize collective marks at all. • Some countries (e.g., China) require the filing of a list of the members of the collective and/or the managing rules of the collective (e.g., Vietnam).
Certification Marks • General Definition: A certification mark is a form of trademark used to identify goods and/or services that meet certain standards or specifications. • These standards or specifications include: quality, accuracy, place of origin, raw materials, mode of manufacture of goods or performance of services, other specified properties.
Certification Marks • The owner of a certification mark exercises control over the use of the mark and ensures the standards have been met. Because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the certification mark is by others.
Registration of Certification Marks • Overview: • Some countries include certification marks under the umbrella of “collective marks.” • Some countries regulate certification marks separately, as their own category of trademark. • Some countries (e.g., Japan) have no legal protection for certification marks.
Registration of Certification Marks • Overview (continued): • Requirement: include a set of rules or specifications governing the use of the mark. • Most countries require that the mark not be misleading as to the character or significance of the mark (i.e., not likely to be taken as something other than a certification mark). • Some countries require the owner to show that registration is in the public interest and to the public advantage.
Registration of Certification Marks • The certifying organization must establish operating rules and regulations identifying what is being certified by the mark and the required standards. • Those rules and regulations accompany the application for the certification mark. • They set out the conditions that must be met for a third party to use the mark. • Where certification marks are regulated under the umbrella of collective marks, the rules of collective marks will also apply.
Restrictions on Use of Certification Marks • Countries differ on whether they allow the owner of a certification mark to use the mark in association with its own goods or services. • Permissive countries include: Australia, Germany. • Prohibitive countries include: China, Dominican Republic, Egypt, France, India, United Kingdom, United States.
Certification Marks • Additional Provisions: • Grounds for expungement / cancellation of certification mark: allowing use of the mark in contravention of the rules or regulations governing it. • Fines for failure to enforce compliance with rules and regulations governing use of the mark when such failure results in damage to consumers.
What to do in countries where certification mark registrations are not available? • Where there are no provisions for certification mark registration, it may be possible to obtain registration as a collective or association mark. The requirements are similar to those for certification marks in many cases, and may be more relaxed in others. • Where there are also no provisions for registration of collective marks, the mark owner may apply for an ordinary trademark registration and enter into a licensing arrangement with approved users for the country concerned.