Collective Marks
and
Certification Marks
An Introduction and Global Overview
Overview
• Collective Marks and Certification Marks
– How each type works
– Nuances associated with registration/use
COLLECTIVE MARKS
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 nonmembers.
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
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.
Certification Marks
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.
Thank You!