Certification marks and collective marks

The following article relates to the UK. Please contact us if you would like information on certification or collective marks in any other territories.

The main purpose of a trade mark is to indicate the commercial origin of goods or services, enabling the consumer to make repeat purchases (or indeed, to avoid certain brands), and have certainty concerning the anticipated quality of the product.

Two other categories of trade mark exist that perform rather different roles, and they are certification and collective marks. A certification mark indicates that the products bearing the mark, or the services provided under the mark, have been certified as satisfying certain standards or as possessing certain characteristics, while a collective mark tells the consumer that the goods or services originate from members of an association. Both certification and collective marks can become widely known and recognised, such as the examples below

Are certification and collective marks still trade marks?

Yes they are, but they perform a different function, and this is reflected in the way in which they are examined, protected and maintained.

Where do the differences lie?

An application to register a certification or a collective mark is filed at the UKIPO in the same way as a regular trade mark. The initial filing costs are the same, and the examination process is broadly the same. The examiner assesses the inherent registrability of the mark applied for, and checks the register for potentially confusing marks in the same way as for a regular trade mark application, but the threshold for both descriptiveness and distinctive character is a little different, reflecting the different functions of the respective marks.

A ‘regular’ trade mark will not be accepted for registration if it is considered to describe qualities or characteristics of goods or services for which registration is sought, or if it lacks distinctiveness. However, in the case of certification and collective marks, it can be an advantage for the mark to provide the consumer with some information as to its function or purpose. This means that a mark that would not be accepted as a regular trade mark may be registrable as a collective or certification mark. Geographical marks are a good example of this, and the UKIPO has discretion to accept a geographical indication as either a certification or collective mark, provided it can also distinguish the goods or services of the applicant association (for a collective mark), or that the goods or services have been certified by the certifying body as having that origin.

The IPO will also check that other requirements are satisfied, including:

· That the applicant for a certification mark does not offer for sale the goods, or provide the services, that are listed in the application

· That the applicant for a certification mark is competent to certify the goods and services

· That the certification or collective mark would not mislead the public, which in particular means that the mark should not be perceived as anything other than a certification or collective mark.

The Regulations

The requirement to file regulations is the main point of difference between an application to register a standard trade mark and an application for a certification or collective mark. The Regulations govern the use of the mark, and are eventually be made available for public inspection. They must be clear and accessible, enabling anyone intending to use a mark to access the relevant information and understand the requirements concerning use.

Regulations must be kept up to date, and any changes must be submitted to the UKIPO for examination.

Ownership and changes of ownership

Both legal and natural persons can own collective and certification marks, provided they satisfy the requirements relating to the type of mark. Assignment is possible, but where there are regulations concerning who can own a mark, a new owner must satisfy those requirements.

When things go wrong

As with regular trade marks, certification and collective marks can be challenged on various grounds such as the mark becoming generic. Grounds for invalidation that apply only to certification or collective marks include where the proprietor of a certification mark carries on a business in the goods or service certified by the mark, or where the public is likely to be misled about the character or significance of the mark. Additional grounds for revocation include the proprietor of a certification mark starting to carry on a business in the certified goods or services, or where the proprietor of a certification mark is no longer competent to certify the goods or services covered by the registration.

Protecting certification and collective marks elsewhere

Both certification and collective trade marks can be registered at the EUIPO, and the process is broadly the same as at the UKIPO. Unlike in the UK, an EU certification mark cannot be used to certify the geographical origin of goods or services.

International (‘Madrid Protocol’) applications can be filed for collective or certification marks. Where the designations include territories in which such marks are not accepted, the type of mark can usually be amended to a regular trade mark for that territory.

Further information

For more information on any aspect of certification or collective marks, please contact the trade marks team at Hindles.

Liz Lowe

Fiona Jones

Alix de La Motte-Broöns