There are a number of "types" of trade marks, whether it is a word mark, a figurative mark, a colour mark, a holographic mark, a sound mark, etc, and these are often discussed. What is not discussed so often are the kinds of marks.
What are the kinds of marks available? In the EUIPO, most EU member states, and the UKIPO there are three kinds of marks:
- Ordinary Trade Marks – These distinguish the goods or services of one trader from those of another in the course of trade.
- Collective Marks – These marks are
typically used by associations to identify goods or services of
their members. Usage is often limited to those within the
association. An example of a collective mark is
which is placed on cheese produced by
members of an association. An association will typically require
membership which may entail the payment of a fee and require
members to follow certain guidelines to use the mark. - Certification Marks – These indicate
that goods or services meet certain standards or characteristics,
verified by an independent certifying body. The owner (typically
the certifying body) is not allowed carry on business in respect of
the certified goods/services, this is in part to ensure the
independence of the body assessing the quality of the
goods/services. Anyone that produces a product to the standard
required by a certification mark is free to use the mark. An
example of a collective mark which most of us see on a daily basis
is the fairtrade mark;
which is placed on products to guarantee
that they have been produced in accordance with fairtrade
standards.
Notably, only the first kind is called a "trade mark"
in the conventional sense; collective and certification marks are
named for their function.
Collective and certification marks also require additional
documentation during the filing stages in order to benefit from
registration.
Regulations governing use:
Collective and certification marks require regulations to be filed with the Registry which describe how the mark is to be used, who may use the mark and any requirements/standards associated with use. The regulations can be filed at the time of filing or within two months of filing. There are key differences in what information is required in regulations governing use for collective and certification marks relating to their functionFor example, how the quality or characteristic being certified by a certification mark is assessed must be included in the regulations govern use for a certification mark, and how to gain membership to use the collective mark must be included in the regulations governing use for a collective mark.
The EUIPO and UKIPO have helpfully drafted guidelines on what information is required in these regulations.
Risks to use of a Collective or Certification mark:
Collective and certification marks are subject to the same rules as ordinary trade marks. This means that a collective or certification mark can be opposed, revoked and invalidated. Along with the typical grounds of revocation and invalidation, collective and certification marks may also be subject to additional grounds of revocation and invalidation based on how the marks are meant to function, namely:
- failure to prevent misuse contrary to regulations governing use
- use has caused it to become liable to mislead the public
- amendments to regulations governing use are objectionable
- in the case of certification marks, the owner is involved in the carrying on of the business, of the goods or services to be certified
The examination process of collective and certification marks can
provide some guidance on what misleading the public may entail.
During the examination, the EUIPO and the UKIPO have the power to
raise objections that the public is liable to be misled as regards
the "character or the significance of the mark". This
happens if the Office believes that through the depiction of the
mark itself or the regulations governing use, the public may
mistake the kind of mark that has been registered for a different
kind of mark. This makes choosing and using the right kind of mark
very important when thinking about the future of a mark. How could
this apply in a revocation scenario?
A collective or certification mark is liable to be revoked if the
public may be misled as regards the character, meaning or function
of the mark. There are a few ways this can happen, for
instance:
- If the regulations governing the use of a certification mark require that those using the mark pay a fee to join an association (anyone is free to use a certification mark if they are at the correct standard), this would result in a certification mark functioning more like a collective mark and therefore render the certification mark misleading and deceptive;
- the mark may be presented in such a way that it would appear to be a collective, certification or an ordinary trade mark when it is not. This could happen where the mark includes words that imply that, the mark guarantees particular qualities in a product (certification mark), but the mark is used by an association (collective mark);
- the regulations governing use may not make it clear the mark is a certification mark;
- the way the mark is used does not comply with the requirements of the kind of mark. For example, someone files an ordinary trade mark but uses it as a certification mark.
For an ordinary trade mark, the owner should be using the mark in
the course of trade as an indicator of trade origin. However, the
nature of a certification mark is such that the owner cannot use
the mark in the course of trade, but rather such use can only be
made by those entitled/authorised to use the certification mark to
certify goods and/or services. The use of the mark, whether
ordinary, collective or certification, should reflect the
fundamental properties of that kind of mark.
Applying for the correct kind of mark is crucial for successfully
defending and future proofing a mark, in particular if the mark is
going to be used as a certification mark but the form of mark
registered is an ordinary trade mark. Recently, there has been some
case law developing in this area, where ordinary trade marks are
used as certification marks highlighting possible pitfalls for
trade mark owners.
Recent Developments:-
Deutsche Pfandsystem GmbH (DPG) filed an opposition against a
later filed EU trade mark in 2015 based on an earlier ordinary
trade mark. DPG were put on proof of use and the EUIPO determined
that the use of their earlier ordinary mark did not constitute
genuine use (06/09/2023, T-774/21, DEVICE OF A BOTTLE SILHOUETTE
AND AN ARROW (fig.) / DEVICE OF A CAN AND A BOTTLE SILHOUETTES AND
AN ARROW (fig.), EU:T:2023:518). DPG appealed the decision to the
General Court, which agreed with the EUIPO and Boards of Appeal.
DPG were not using the mark themselves, but rather they were using
the mark to certify services of other businesses, and those other
businesses were using the mark. The earlier mark was being used as
a certification mark and reflected a certifying function, not the
function of an ordinary trade mark. DPG could not show the mark was
being used as an indicator of trade origin either by itself or by
those using the mark.
Why is this important? Applying for a certification or collective
mark can be onerous, expensive and time-consuming. At times, owners
decide to file an ordinary mark rather than a collective or
certification mark and then use licenses to make those who will be
using the mark comply with the trade mark owner's requirements
or standards. However, in general, it is advisable to always file
the right kind of mark. Sometimes, filing an ordinary mark first
and following up with a certification or collective mark can
provide the strongest protection.
When filing a mark, whether ordinary, collective mark or
certification, think about the future use of the mark. This can be
difficult to do when starting out but applying for the right kind
of mark will make it easier in the long run to maintain trade mark
protection and to defend rights. Collective and certification marks
are very valuable and highly sought after assets and add
significantly to the industries they operate in. Some examples of
well known collective and certification marks are provided below to
illustrate the importance of these kinds of marks:-
Examples of Collective Marks registered at the EUIPO:
| EU Collective Mark No. 000948950 |  |
| EU Collective Mark No. 002846079 |  |
| EU Collective Mark No. 018358002 |  |
Examples of Collective Marks registered at UKIPO:
| EU Collective Mark No. 000948950 |  |
| UK Collective Mark No. UK00901082965 | HALLOUMI |
Examples of Certification Marks registered at EUIPO:
| EU Certification Mark No. 017628868 |  |
| EU Certification Mark 018323648 |  |
| EU Certification Mark No. 017959045 |  |
Examples of Certification Marks registered at UKIPO:
| UK Certification Mark No. UK00000885755 | WOOLMARK |
| UK Certification Mark No. UK00003105926 |  |
Useful Links:
Types of trade marks - EUIPO
https://guidelines.euipo.europa.eu/2302857/2047173/trade-mark-guidelines/8-2-3-1-content-of-the-regulations-of-use
https://guidelines.euipo.europa.eu/2302857/2046583/trade-mark-guidelines/8-3-certification-marks
https://guidelines.euipo.europa.eu/2302857/2228164/trade-mark-guidelines/8-kind-of-mark
https://www.gov.uk/guidance/trade-marks-manual/certification-and-collective-marks
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
