Presentation on theme: "Collective Marks and Certification Marks"— Presentation transcript:
1Collective Marks and Certification Marks An Introduction and Global OverviewThis presentation is designed to introduce collective marks and certification marks, their unique characteristics, and the distinctions between the two. Although these marks are applied for and used less frequently than traditional trademarks and service marks, they are equally important as traditional marks and can create potential pitfalls to those unfamiliar with their requirements.
2Overview Collective Marks and Certification Marks How each type works Nuances associated with registration/useLet’s start with a quick overview of this presentation. We will begin with collective marks and discuss the two subsets of marks in this category, followed by some examples as well as several nuances associated with their registration and use. Then we will move on to certification marks, and their unique function in trademark law. Again, we will provide some examples of certification marks, and some key nuances and range of variations in the registration and use of certification marks as compared with traditional trademarks. Because national laws are not uniform, it bears mentioning that this presentation is intended to provide a very general overview of these topics and should not be treated as a substitute for seeking local advice on a jurisdiction-by-jurisdiction basis.
4Collective MarksGeneral Definition: A collective can be a cooperative, an association, or any other collective group or organization.Let’s start with collective marks. In those countries that recognize collective marks, and it should be said at the outset that not all countries do, the first key concept to understand when dealing with collective marks is the “collective” component. “Collective” means a cooperative, an association or any other collective group or organization. It is a broad concept, and any group of individuals with a common goal is considered a collective.
5Collective MarksGeneral 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.While the definition of a collective mark varies from one country to another, collective marks usually are defined as signs that distinguish the geographical origin, material, mode of manufacture, quality, or other common characteristics of goods or services of different enterprises using the collective mark.Collective trademarks are exceptions to the underlying principle of trademarks in that most trademarks serve as "badges of origin“: they indicate the individual source of the goods or services. A collective trademark, however, can be used by a variety of traders, rather than just one individual concern, provided the trader belongs to the association that owns the collective mark. Collective marks as a category also include marks indicating membership in the collective. A collective mark can also be used by the collective itself to promote the interests of its members.
6Collective 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.”Based on the general definition, we see that there are two subsets of collective marks: those used to indicate goods or services made or performed by members of an organization (collective trademarks), and those used to indicate membership in an organization (collective membership marks).Let’s examine these individual types of collective marks separately. First up is the regular collective mark.
7Collective MarksThe “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.One unique feature of collective trademarks is that the collective itself typically does not sell goods under the mark, its members do. The collective, however, usually advertises and promotes the goods of its members.To illustrate, consider the collective mark TURKEY. THE PERFECT PROTEIN. This mark is registered in the United States by the National Turkey Federation in respect of “turkey.” The National Turkey Federation is not in the business of selling turkey. Instead, its purpose is to promote the interests of its members, which it does using the collective mark. Additionally, the members of the association are authorized to use the collective mark on turkey. So, when you are in the grocery store, you might see turkeys from multiple sources with packaging bearing the collective trademark TURKEY. THE PERFECT PROTEIN. The members of the National Turkey Federation use the mark to distinguish their products from those of non-members.
8Collective MarksIn 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; andUsed by the collective as a trademark on products.In the previous slide, we noted that the collective itself typically does not sell goods under the mark. We said “typically” because there is nothing that prohibits the collective from using the mark as a trademark. This SMART logo is registered and used by the Asian Federation of Sports Medicine in Hong Kong. The members of that association may use the mark when offering their goods or services. The mark, however, is also used by the collective itself for various sports-related clothing and equipment.
9Collective 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.Let’s turn to a subset of collective marks, namely collective membership marks.A collective membership mark is a type of collective mark adopted for the purpose of indicating membership in an organized collective group. The function of this type of mark is to indicate membership in the collective. Neither the collective nor the members use the mark to identify goods or services.
10Collective 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®).One example is WOMEN OF THE MOOSE. This collective membership mark indicates membership in a cultural, social, and charitable fraternal organization for women.
11Registration 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).The specific filing requirements and limitations regarding collective marks vary from jurisdiction to jurisdiction and are beyond the scope of this presentation. To give an idea of the breadth of variation, there are some countries, such as Indonesia, that do not recognize collective marks at all. Some countries require the filing of a list of all the members of the collective. Still others demand that the managing rules of the collective be included as part of the application. There is no substitute for country-specific advice.
13Certification MarksGeneral 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.Turning now to certification marks, we begin with a definition. A certification mark is a kind of trademark indicating that the goods or services in connection with which it is used are certified by the owner of the trademark to meet certain technical standards or specifications in respect of such characteristics as quality, accuracy, place of origin, raw materials, mode of manufacture of goods or performance of services.
14Certification MarksThe 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.
15Certification MarksOne example of a well-known certification mark is the GOOD HOUSEKEEPING SEAL OF APPROVAL. The Good Housekeeping Institute awards the Good Housekeeping Seal, which stands as one of the most recognized consumer product insignia in the United States. The seal represents Good Housekeeping’s limited warranty that if any product that carries the seal is found defective within two years from the date of purchase, Good Housekeeping will either replace it or refund the purchase price.Another example is the CE mark, which indicates that a product complies with safety, health or environmental requirements set by the European Commission.The PSE (Product Safety Electric Appliance and Materials) mark of approval indicates that a product complies with Japanese standards for electric devices.Another example is the WOOLMARK logo, used to identify goods that are 100% wool.
16Registration 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.Countries that regulate certification marks generally fall into one of two categories: those that regulate certification marks as their own category of trademarks and those that regulate them as a subset of collective marks.Countries that regulate certification marks under their collective mark regimes include France (which has “collective certification marks”), Germany, Iran, Mexico, Philippines and the European Union member states (through the Community trade mark (CTM)).Countries that regulate certification marks separately from collective marks include Australia, Brazil, China, Dominican Republic, Egypt, India, the United Kingdom and the United States.Still other countries, notably including Japan, do not have any regime for the legal protection of certification marks.
17Registration 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.Whether viewed as a form of collective mark or its own category of mark, a certification mark application must include a set of rules or specifications governing the use of the mark.Most countries will refuse registration if the certification mark is likely to mislead the public as regards the character or significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.Still other countries require the owner to show that registration of the certification mark is in the public interest and to the public advantage.Typically, once a certification mark holder has obtained approval under the rules of a major country, the certification mark will likely be acceptable in other countries with some slight amendments as to form and content, taking into account local requirements such as public policy and local rules on aspects of the operation of the certification scheme.
18Registration 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.Let’s look at this a little more closely.We begin with the premise that the law governing certification marks generally operates as a series of exceptions and additions to the law for “standard” trademarks.But there are some noteworthy differences in the registration process. They include: (i) the requirement for rules or regulations governing use of the certification mark to accompany the application for the mark; and (ii) the prohibition, in many countries, on the use of the mark by the owner in association with its own goods or services.Let’s focus on the first key difference. Applications for certification marks must be accompanied by a set of rules or regulations governing the use of the certification mark. These rules or regulations set out the conditions that must be met before a person is permitted to use the mark in association with the goods or services for which the certification mark is registered.In countries where certification marks are regulated separately, these rules or regulations typically require that the goods or services meet certain technical standards or specifications. Many countries require the applicant to specify additional rules, such as the process for determining whether goods or services meet the certification requirements; dispute resolution mechanisms for the certification approval process; rights of the approved users of the mark; liability of users for breach of the rules or regulations; and any fees to be paid in connection with the use of the mark. Some countries, such as Australia and China, require the regulations to set out certain details about the “approved certifier(s)” who determine eligibility for use of the mark.And what about in those many countries that regulate certification marks as a subset of collective marks? There, the rules or regulations governing the use of the mark have two functions: they must provide the requirements for membership in the collective and the requirements for use of the mark by the members. These requirements for use of the mark can include the same conditions that can appear in the requirements for use of a certification mark, discussed above (origin, quality, etc.).
19Restrictions 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.Next, let’s turn to the second key difference – the prohibition, at least in in many countries, on the use of the mark by the owner in association with its own goods or services.National laws concerning certification marks determine whether or not a jurisdiction allows the owner of a certification mark to use the mark in association with its own goods or services. Countries that allow the owner of the mark to use it in association with its own goods or services include Australia and Germany.Countries that prohibit the owner of the mark from using it in association with its own goods or services include China, Dominican Republic, Egypt, France, India, Iran, the United Kingdom and the United States.
20Certification 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.There are other variations among national laws governing certification marks, some more significant than others. One particular set of these variations that merits particular attention is the additional grounds for the expungement of certification marks that many countries include in their legislation. For example, Brazil, the European Community (CTM), Germany, Ireland and the United Kingdom include in their respective legislation an additional ground for expungement, based on the owner’s permitting use of a certification mark in contravention of the rules or regulations governing it (or, more commonly, failing to secure compliance with the rules or regulations governing the use of the mark). Other countries, such as China, impose fines on the owner of the certification mark for failing to enforce compliance with the rules or regulations governing the use of the mark when that failure results in damage to consumers.
21What 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.Finally, if you find yourself in a jurisdiction where certification marks are unavailable, what can you do to effectively regulate when and how others may use an expression or symbol you control that serves the purpose of a certification mark?Where available, registration of the expression or symbol as a collective or association mark may be possible. In many cases, the requirements for registration are similar to those for certification marks, while in others the requirements may be more relaxed.Additionally, where are there are no registration provisions for collective marks, the mark owner may apply for an ordinary trademark registration and then enter into a licensing arrangement with approved users for the country concerned. In this way, the license agreement will serve to establish the various requirements and use standards typically found in a certification scheme. For additional information on licensing, you are invited to review the fact sheet on Trademark Licensing, available on the INTA website.