4 Nov 2020
A collective mark is defined by art 27 (b) of the Trade Marks Directive (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26) as
"a trade mark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of an association which is the proprietor of the mark from the goods or services of other undertakings."
Para (35) of the recitals notes that collective trade marks had proven a useful instrument for promoting goods or services with specific common properties. It was, therefore, appropriate to subject national collective trade marks to rules similar to the rules applicable to European Union collective marks. Art 29 (1) of the Directive permits EU member states to provide for the registration of collective marks.
Implementation in the United Kingdom
The Trade Marks Directive is transposed into English and Welsh, Scots and Northern Irish law by the Trade Marks Act 1994, S.49 (1) defined "collective marks" is substantially the same terms as art 27 (b) o the Directive. S.49 (2) states that further provisions on collective marks appear in Sched 1 to the Act. Those provisions are supplemented by the Trade Marks Rules 2008.
Purpose of Collective Marks
The purpose of collective marks is obvious from s.49 (1A) of the Trade Marks Act 1994 which implements art 29 (2) of the Directive. That section requires the proprietor of such a mark to be an association of manufacturers, producers, suppliers of services or traders which has the capacity in its own name to enter into contracts and to sue or be sued; and a legal person governed by public law. Like certification marks, collective marks are a means of protecting geographical indications in accordance with under art 22 of TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights). To that end, art 29 (3) of the Directive provides:
"By way of derogation from Article 4 (1) (c), Member States may provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute collective marks."
Para 3 (1) of Sched 1 is to similar effect,
Use of Collective Marks in the UK
According to a
Freedom of Information Act release by the Intellectual Property Office of 14 March 2016, there were 330 collective marks at that time.
Conditions for Registration
Paea 4 (2) permits the Registrar of Trade Marks ("the Registrar") to require applicants for the registration of a collective mark to include some indication that it is such a mark That is because para 4 (1) prohibits the registration of a collective mark if the public is likely to be misled as regards the character or significance of the mark. This prohibition applies in particular if the mark is likely to be taken to be something other than a collective mark.
Regulations
Art 30 (1) of the Directive requires applicants for collective marks to submit regulations governing its the mark's use to the central industrial property office of the member state. In the UK that means the Trade Marks Registry (para 5 (1) of Sched 1). Rule 29 of the Trade Marks Rules requires the regulations to be filed within such period of not less than 3 months as the Registrar may specify together with Form TM35 and the appropriate fee. Para 5 (2) requires the regulations to specify:
- the persons authorized to use the mark,
- the conditions of membership of the association and
- the conditions of use of the mark, including any sanctions against misuse.
Where the regulations govern the use of a mark to protect geographical indications, they must authorize any person whose goods or services originate in the geographical area concerned to become a member of the association which owns the mark, provided that such person fulfils all the other conditions of the regulations (see art 30 (2) of the Regulation and para 5 (3) of Sched 1 to the Act).
Examination
Para 7 (1) requires the Registrar to consider whether the regulations governing the use of the mark:
(a) comply with paragraph 5 (2) and (3) and any further requirements imposed by the Rules, and
(b) are not contrary to public policy or to accepted principles of morality.
If it appears to him or her that they have not been met, para 7 (2) obliges the Registrar to inform the applicant to that effect and give the applicant an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations. If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar must refuse the application under para 7 (3). If it appears that those and any other requirements for registration are met, the Registrar shall accept and publish the application pursuant to para 7 (4).
The regulations will then be published in compliance with para 8 and the application shall proceed in accordance with s.38 of the Act.
Registration
If the application is successful, para 9 requires the regulations to be open for public inspection in the same way as the register.
Infringement
Subject to any agreement to the contrary between an authorized user
and the proprietor, para 12 (2) permits an authorized user to bring proceedings for
infringement of a registered collective mark with the consent of the
proprietor. The authorized
user may not, without the leave of the court, proceed with the action unless
the proprietor is either joined as a claimant or defendant. This provision does not affect the granting of interlocutory relief on an application by an
authorised user alone. Where the proprietor of a registered collective mark brings infringement proceedings, an authorised user who has suffered loss is entitled to intervene in the proceedings for the purpose of obtaining compensation for that loss.
Defences
Art 29 (3) of the Directive provides that a collective mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. This provision is transposed into the laws of the UK by para 3 (2) of Sched 1.
Amendment of the RegulationsNo regulations may be amended without the leave of the Registrar (see para 10 (1) of Sched 1). Rule 30 (1) of the Trade Marks Rules requires an application for the amendment of the regulations to be made in
Form TM36 upon payment of a £100 fee.
Before accepting amendments, the Registrar may (if he considers it expedient) publish the proposed amendments in the journal under para 10 (2) and rule 30 (2). If he or she does so, objectors may oppose the amendments or submit representations in Form TM7.
RevocationIn addition to the provisions of s.46 of the Trade Marks Act 1994, para 13 provides that the registration of a collective mark may be revoked on any of the following additional grounds:
(a) the manner in which the mark has been used by the persons authorised to use it has caused it to become liable to mislead the public in the manner referred to in para 4 (1), or
(b) the proprietor has not taken reasonable steps to prevent the mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing the use of the mark (as amended from time to time), or
(c) that an amendment of the regulations has been made so that the regulations-
(i) no longer comply with para 5 (2) and (3) and any further conditions imposed by rules, or
(ii) are contrary to public policy or to accepted principles of morality.
InvalidationIn addition to the provisions of s.47, para 14 provides that the registration of a collective mark may be declared invalid on the ground that:
- the mark was registered to a person who is not entitled to hold a collective mark,
- the public is likely to be misled as to the character or significance of the mark, or
- the regulations do not comply with the statutory requirements unless the breach can be amended.
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