In this guide, our trade mark solicitors explain how collective and certification trade marks differ from standard trade marks, the process for registering collective and certification marks as well as any ongoing management requirements.
Contents:
- What is a collective trade mark?
- What is a certification trade mark?
- What is the difference between a collective mark and a certification mark?
- How do collective or certification marks differ from a standard trade mark
- What are the benefits of using collective and certification trade marks?
- What are the requirements for registering a collective or certification trade mark?
- How do you apply for a collective or certification trade mark?
- Use of collective and certification trade marks
- Summary
What is a collective trade mark?
A collective trade mark is a special type of trade mark that is owned and used by members of a trade collective or association to show that their goods and services originate from a member of that collective.
What is an example of a collective mark?
Examples include the use of the word ‘Chartered’ to indicate that the members of the collective have chartered status granted by the Crown, e.g. the mark ‘Chartered Institute of Marketing’. Or use of the term ‘Association’ for example the ‘Mortgage Advisors Association’ to denote a collective mark whose members are all mortgage advisors within a particular association.
What is a certification trade mark?
A certification is another sub-category of trade mark that serves a special purpose, namely to identify that the users of the mark have been authorised by the mark owner as producing goods or offering services that meet a particular standard or have a particular characteristic. The characteristic can relate to qualities such as the origin, material, mode of manufacture, quality, accuracy or other characteristics of the goods or services.
What is an example of a certification mark?
Examples of certification marks include ‘Woolmark’ for goods that are made of wool and ‘Fairtrade’ for goods or services that comply with certain ethical practices.
What is the difference between a collective mark and a certification mark?
Whereas a collective mark can be used by all members of the collective, a certification mark cannot be used in trade by the certifying body themselves, who will be the owner of the mark. Instead, the owner will authorise certain organisations or individuals, whose goods and services meet the criteria, to use the mark, subject to their ongoing compliance with the certification requirements.
How do collective or certification marks differ from a standard trade mark
A standard trade mark works as an indication of the origin of particular goods and services, distinguishing the owner of that brand from other businesses offering goods and services under a different brand. The mark itself does not indicate any particular descriptive characteristic of the goods or services and it is incumbent upon the trade mark owner to build its reputation in certain characteristics that it wants to be associated with the brand through its own hard work and commitment to quality.
In comparison, collective and certification marks identify more than one organisation in connection with a particular brand, to indicate that the goods or services that they offer share a common characteristic or standard. The mark itself is an indication of the shared common standard or characteristic, which will be immediately obvious to the consumer and it is incumbent upon the regulatory body or certifying organisation to ensure that the members comply with the relevant rules or regulations governing membership or use of the mark.
What are the benefits of using collective and certification trade marks?
Benefits for the governing body/certifying organisation: The owner of a collective mark does not need to enter into individual licenses with each member of the collective but can control the use of the mark through a single set of regulations, applicable to all members.
The owner of the certification mark will not have to trade itself but can earn revenue as a certifying body.
Benefits for members: Members gain instant prestige and appeal, distinguishing the businesses offerings from competitors without the need to invest significant amounts of money promoting the brand.
Users of a collective mark can also join forces in marketing and enforcing the mark and benefit from shared resources and know-how.
A certification mark can also act as a guarantee that the goods or services meet a certain legal or safety standard and can be placed legally on the market or exported without additional testing or adaptation being necessary.
Certification marks can appeal to investors who are looking for a certain type of business to invest in, such as an ethical or sustainable business, or assist a business in obtaining a grant or other types of funding, as a recognisable form of endorsement, for example, if the mark certifies that the goods and services are carbon neutral or produced in an environmentally friendly way.
What are the requirements for registering a collective or certification trade mark?
Collective and certification trade marks are subject to the same requirements as standard trade marks, with an additional stage of examination relating to the rules governing membership of the collective organisation or compliance with the certified requirements.
The first test is whether the mark meets the general requirements of the Trade Marks Act, i.e. that it is distinctive and capable of performing its particular distinctive function, can be represented in a clear and accurate manner on the register and is not deceptive or purely descriptive or already customary in the trade. The distinctiveness requirement is interpreted in a different way than for standard trade marks since the mark does not need to identify one particular business provided that it is capable of identifying the goods or services of the members of an association or of identifying goods and services that are certified from those that are not.
This means that a mark may be acceptable as a collective or certification mark that may not satisfy the requirements for a standard mark. Certain geographical place names can be acceptable as certification marks if the region in question has a particular reputation or association with quality or certain characteristics relating to manufacture or growing conditions e.g. ‘Bordeaux’ for wines. The same mark is unlikely to be acceptable as a standard or collective mark without evidence of acquired distinctiveness through use, since there may be many associations or businesses offering wines from the Bordeaux region.
An objection may also be raised if the mark is more likely to be perceived as an ordinary trade mark than as a certification or collective mark. This can be overcome by including a statement in the depiction of the mark itself or a requirement in the governing regulations to state that the mark is a collective or certification mark, whenever it is used.
The Examiner will also conduct a search of the Register for any prior identical or similar marks for the same or similar goods and services and notify the owners of any marks that the Examiner considers to be confusingly similar to give them the opportunity to oppose the registration of the certification or collective mark, in the same way as for a standard mark application.
Requirements specific to collective marks
The applicant for a collective mark must be an association with rules that govern who may become a member of the association. The association must itself be a legal entity if it is to hold the mark in its own name. Otherwise, the individual members or a membership committee or committee of trustees will need to be listed as the joint owners or owner of the mark.
Requirements specific to certification marks
Anyone with legal personality can be the owner of a certification mark but the owner must not be engaged in any trade under the mark. They will usually be a professional organisation or trade association that is capable of setting standards for the use of the mark and monitoring and certifying compliance with these standards. The owner may be required to justify to the Examiner why they are competent to take on this role.
The application for a certification mark will be refused if the owner owns a registered trade mark for the same goods or services as this implies that they are operating a business in the same field. This requirement does not apply to ownership of a standard trade mark for similar or different goods or services. The objection can be overcome if the applicant makes a written statement certifying that they do not trade in the certified goods or services.
How do you apply for a collective or certification trade mark?
The application is filed in the same way and using the same form as for a standard trade mark but with the relevant box ticked on the form to state that the mark is intended to be either a collective or a certification mark.
There are additional requirements involved in that the applicant for a certification or collective mark must also file clear and accessible regulations along with the application, or within three months from the date of filing the application. An extension can be granted upon the filing of a specific form and an extension fee of £200.
The regulations must contain certain information depending on whether the application is for a collective or a certification mark and they will be examined in detail by the Registry to ensure that they contain all the necessary information. If they are not approved by the Examiner, the applicant will have the opportunity to revise them to meet the requirements and to file an amended version within the time limit prescribed by the Examiner.
The requirements for acceptance of the regulations are strict and legal advice is highly recommended to ensure that the regulations are in an appropriate form and contain everything that they need to before they are filed.
Regulations for Collective Marks
The regulations must stipulate the conditions of membership such as the payment of membership fees, attendance at membership meetings, the holding of certain qualifications and/or any other requirements for admission and continued membership of the association. The regulations must also set out which of the members are entitled to use the collective mark, i.e. if use is open only to a specific subset of the members or if there are any further conditions that members must meet to use the collective mark such as passing a specific examination. There must be guidance as to how the collective mark can be used, in what format and in respect of which goods and services. For example, there may be a stipulation that the mark must always be accompanied by an indication in writing that it is a collective mark. There should be specific sanctions for misuse of the mark by the members such as suspension or expulsion from membership or a requirement to re-sit an examination, for example.
Regulations for Certification Marks
The regulations must stipulate who is entitled to use the certification mark. This could be limited to individuals or organisations who have a particular qualification or expertise or it could be anyone who can produce goods or provide services that meet the certified standard. The regulations must specify the characteristics that the goods or services must embody to meet the certified standard and how the presence of such characteristic(s) will be tested and monitored by the certifying body or a third party on its behalf. Any fees to be paid to the certification mark owner for use of the certification mark must be set out in the regulations and will be assessed by the Examiner for anti-competitive or restrictive practices. This is because the certification mark may become the industry standard and this should not unfairly restrict access to the market. Finally, there must be a dispute resolution procedure in the regulations, with an appeal process by an independent arbitrator available to traders who fail to meet the requirements for the use of the certification mark.
Use of collective and certification trade marks
After registration, there are ongoing obligations for owners of certification or collective marks to comply with, in order to maintain the registration and ensure that it is not vulnerable to cancellation or revocation.
The regulations must be kept up to date and new versions filed whenever there is a more than a minor amendment, for example when the membership or certification fee is revised. There is a specific form for filing amended regulations at the IPO, together with a fee of £100 since the new regulations will need to be re-examined and published for opposition purposes.
The owners will need to continually monitor the use of the mark by members or certified users to ensure that it is being used correctly and in accordance with the regulations. Owners of certification marks will need to have a system in place for continual assessment and testing of any certified goods and services to ensure that they continue to meet the certification requirements and should take steps to implement sanctions against misuse of the mark. The owner will also need to ensure that it maintains its own competency to act as a certifying body.
As well as imposing sanctions against members or certified users who misuse the mark, the owners of collective and certification marks should be prepared to take action against any third parties who infringe the mark by using it without authorisation or by using a confusingly similar mark for the same or similar goods or services. They should seek the advice of trade mark lawyers if they think the mark is being infringed, who can advise them on the best course of action.
Summary
Certification and collective marks can serve an important role in industry and in consumer protection, raising the quality and standard of goods and services and helping to ensure that certain traders can be relied on to supply goods and services that comply with legal and safety requirements or have definite known characteristics.
Anyone looking to register a collective or certification mark should seek the advice of a trade mark professional as this can be a complicated process. Harper James can help applicants with the process and with preparing the accompanying set of regulations to give the application the best chance of success.
