The Secret Life of Collective/Certification Marks

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Trade marks are everywhere. When we think of trade marks, we think of logos, signs and symbols which indicate a specific brand (i.e., the Nike swoosh or bitten-into Apple logo), which in turn, confirm the origin of a particular product or service. What many do not know, is that within this umbrella of trade marks, there exists two specific types of trade mark called “Collective trade marks” and “Certification trade marks”.

Collective trade marks 

A collective trade mark is used as an indication to the public that goods or services originate from a member of a particular association. It is a sign of membership. A collective trade mark application can only be filed by an incorporated company or partnership that is also an association. To qualify as an association there must be a form of membership, i.e. membership fees, issuing of membership cards, conditions of membership.  Organisations which would fall under the collective trade mark umbrella include Animal Aid, the Confederation of British Industry and Amnesty International.

It is important to note that when applying for a collective trade mark, the IPO requires regulations to be filed within 3 months of the application filing date. These regulations must be clear and accessible so that anyone intending to make use of the mark can easily access the information and understand the requirements that must be met before using the mark. The regulations must include information such as: who is authorised to use the mark; if use is allowed by all members or limited to sub-categories; the conditions of membership; the conditions on members for use of the mark and any sanctions that exist for misuse of the mark.

Certification trade marks 

A certification trade mark application can be filed by any incorporated company or partnership but, unlike a collective trade mark, the applicant does not have to be an association with members.  Importantly, the applicant itself cannot use the trade mark, but rather, it authorises use of the mark by others for the purpose of guaranteeing to the public that the goods or services possess certain characteristics.  Examples of certification marks include the "Champagne"mark used to indicate goods that originate from the Champagne region in France or the Fairtrade mark which appears on products as a guarantee that it has been produced according to Fairtrade political standards.

Again, when applying for a certification trade mark, the IPO does require regulations to be filed within 3 months of the application filing date. Similarly, the regulations must be clear and accessible and should include information such as: who can use the mark; the specific characteristic that is being certified; whether the mark can be used by anyone who is able to demonstrate the relevant characteristic being certified; the tests to prove the presence of the characteristic being certified; the fees that can be charged for use of the mark and the procedures in place for supervision of the mark.

These lesser known types of trade marks can add value and if used correctly will increase the reputation of goods/services issued under the marks. However, the level of preparation required prior to filing such a trade mark application should not be underestimated and includes a more burdensome process than filing a standard trade mark.  If you believe your association may require a collective mark, or your business may be entitled to use a certification mark, one of our IP lawyers will be happy to discuss this with you!