We commonly associate trademarks with the purpose of indicating to buyers the commercial origin of a product. The mark provides the purchaser information on who actually made the product or takes commercial responsibility for its production.
Other categories of trademarks also exist – able to be registered both at national and EU level. They also, although in a different way, should enable the clients to distinguish one good or service available on the market from another. What exactly are collective and certification marks?
Collective mark
This type of mark cannot be assigned to a single entrepreneur (as the name itself suggests). Its purpose is to help distinguish between products of a particular organisation, including ones set up under public law, who owns the mark, and other products available on the market.
Collective trademark EUTM 000459628 registered by the IQNet Association
Use of collective trademark
If the collective mark is to serve its purpose, the organisation who owns it has to come up with regulations governing its use, binding on the organisation’s members. Such regulations should indicate:
a) persons allowed to use the mark and conditions of membership in the organisation (mandatory);
b) conditions of use of the mark, including potential sanctions (optional).
(!) The regulations cannot be contrary to public policy or principles of morality and each their change has to be noted in the applicable registry and is subject to verification by the office.
Use of collective trademark
Genuine use of the collective mark has to adhere to requirements, which apply to individual marks (more on that in previous issues)! Additionally, the owner of the mark has to take reasonable steps to prevent the mark being used by particular parties in a manner incompatible with the conditions of use that the owner drew up.
What is more, use of the collective mark cannot mislead market participants as regards the character or the significance of the mark (by e.g. suggesting that it’s a different type of trademark or a designation of a different nature whatsoever).
Certification mark
Protective right for this type of mark can be assigned to anyone, who – attention – does not themselves act in any commercial capacity with regard to goods and services for which the certification mark was granted. Its purpose is to enable the distinction between:
- products which were certified by the proprietor of the mark in respect of material, mode of manufacture, quality , accuracy or other characteristics (apart from geographical origin unless applicable law says otherwise) and
- other products available on the market i.e. those that were not certified by them (irrespective of whether and what properties those products actually have!)
Certification mark EUTM 017384496 registered by Safeshops.be
Use of certification mark
Similarly to collective marks, to register z certification mark it is necessary to provide regulations governing its use. The regulations should specify the persons authorised to use the mark, the characteristics to be certified by the mark, how the certifier is to test those characteristics and how the certifier is to supervise the mark’s later use, conditions of which, including sanctions, should also be covered by the regulations.
(!) In case of certification mark the regulations as well cannot be contrary to public policy or principles of morality and each their change has to be noted in the applicable registry and is subject to verification by the office.
Genuine use of certification mark has to adhere to, on the one hand, general requirements that apply to trademark use and, on the other, necessitates that the proprietor of the mark takes reasonable steps to prevent the mark being used by particular parties in a manner incompatible with the conditions of use laid down in regulations governing the use of that mark. The use of the mark cannot mislead market participants as regards the character or the significance of the mark (by e.g. suggesting that it’s a different type of trademark or a designation of a different nature whatsoever).
Distinguish between trademark types and avoid serious negative consequences!
How important it is to choose a category of mark fit for the purpose which it’s supposed to help achieve, can be easily proven by remarks of the Court of Justice of the European Union made in the judgement of 8 June 2017 in the C-689/15 case. The case concerned the possibility to revoke an individual trademark which in fact was being used as a certification mark. The Court arrived a the conclusion that: „the fact that a mark is used in order to create or preserve an outlet for the goods or services for which it is registered and not for the sole purpose of preserving the rights conferred by the mark is not sufficient to conclude that there is a ‘genuine use’ (…). Where the use of an individual mark, despite certifying the composition or quality of the goods or services, does not guarantee to consumers that the goods or services come from a single undertaking under the control of which they are manufactured or supplied and which, consequently, is responsible for the quality of those goods or services, such use is not made in accordance with the function of indicating origin. It follows (…), that there is no use in accordance with the essential function of the individual mark where it is affixed on goods for the sole purpose of being a label of quality for those goods and not that of guaranteeing, in addition, that the goods come from a single undertaking under the control of which they are manufactured and which is responsible for their quality.”
Based on the above, when deciding on registering a trademark, one should consider what purpose that mark should serve and, consequently, what form it should take. In advance one should also evaluate, whether it will be possible to guarantee the mark’s genuine use according to requirements applicable to particular categories of marks.