A comparitive look at certification, collective and ordinary trade marks
Written by Mark Reed on 12 October 2018« Return to Reading Room
It may appear strange to a frequent reader to see me go back to basics with defining a trade mark or even intellectual property as a whole, but bear with me, as it is not only healthy to remind ourselves of the roots of IP but also is crucial to then explain more specific marks such as collective and certification marks.
Intellectual property (IP) is in essence a unique right on something that someone physically creates which, at its core, allows them the right to stop people from stealing or copying it. The requirements can be specific though, but ultimately, if you have created work (for example a design, patent, or copyright works following the Copyright, Design and Patent Act 1988) you can protect your IP either individually, with someone else or as a business. Alternatively, and more relative to this explanatory note, is that you could also have a brand within your business that could be a trade mark, such as a well-known product name (Mcvities, BMW or even Nando’s). The main legal applications to follow is the Trade Mark Act 1994 (TMA)
To successfully register a trade mark, it will have to go through a process overseen by an Examiner. This process will involve an initial consideration by the examiner to consider any absolute grounds for refusal. The Examiner may refuse any mark which lacks distinctive character and / or is purely descriptive of the goods or services of the trade mark.
If it is devoid of distinctive character, this could mean that the application does not fulfil the ‘distinguishing function’ of a trade mark. The primary function of a trade mark is to allow the average consumer to be able to indicate the commercial origin / undertaking associated to the services. If this does not exist, the trade mark’s fundamental function is not fulfilled and therefore the trade mark is devoid of distinctive character. Alternatively, if it is considered as descriptive, this could mean that the mark consists of either customary language or that are descriptive of the services applied for to be registered. This objection is because the Examiner is seeking to prevent one owner claiming a monopoly in a combination of words that are either customary or descriptive.
Relative grounds for refusal are considered in a publishable sense to the public, but this is only after the Examiner has done an extensive search on the proposed mark within the application. This is to then highlight any exact matches for the mark or even relatively similar marks. The Examiner will then publish the mark to both the owners of similar marks and openly in what is called the ‘publication stage’. All being well, after this 2-month period (for UK) or 3-month period (for EU) the trade mark will be registered.
However, there are not just one type of trade mark. There can be a word only mark, a word/logo, or logo only (other names can be used to describe these). There are even what are known as certificate marks and collective marks that are examined.
A certification mark is defined in Section 50(1) of the TMA as ‘a mark indicating that the goods and services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.’ This can all sound a tad complicated and to wordy but ultimately a certification mark is normally used not by the person that owns the mark but actually by authorised users. This is for the purpose of showing association in the eyes of the public that the authorised user’s goods or services possess a particular characteristic.
The difference between a certification and a collective mark is defined in Section 49(1) of the TMA. It states that ‘a collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.’ Again, a head scratching explanation. Essentially, it is saying that a collective mark is normally used to show that the goods or services came from a member of a specific association so is arguably a ‘sign’ or membership.
When considering that everyone who has an interest in intellectual property law can churn out a brief explanation on trade marks etc, it is nice to offer something slightly different to the table of discussion. The above highlights the complexities that can arise. A collective mark and certificate mark are comparatively different from what we know to be a standard trade mark due to the fact that a standard trade mark is a mark that clearly differentiates the goods and services of one particular trader, or brand from those of another.
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