Not every trade mark in the UK is ‘ordinary’.
There are certain marks that have a very different function to that of normal marks. These special marks are known as certification or collective marks and can be applied for through the United Kingdom Intellectual Property Office (UKIPO) .
Defined by section 50(1) of the Trade Mark Act 1994, a certification mark is “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”. Generally, a certification mark is not used by the owner itself instead, they are used by what is commonly known as its ‘authorised users’.
Although the owner of the certification mark will be the individual who certifies the goods and services that others will use in their business, these owners cannot certify the goods and services to use themselves. As such, the registered owner of a certification mark will have what is known as the ‘duty of neutrality’ with relation to the interests of the producers of the goods or services it certifies.
Generally speaking, these marks can be more difficult to obtain but have the advantage of their licensing being more open and less subjective in comparison to other marks. Therefore when applying to register one of these marks, there a couple of things to consider, namely:
– The certification mark application should be in respect of the goods and services that are certified by you, the owner of the mark.
– The proprietor must ensure to include the regulations of use of the certification mark that are applied for which must be filed within two months of the initial application.
Defined by section 49(1) of the Trade Mark Act 1994 as: “… a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings”, a collective mark is a trade mark that is owned by an organisation and/or association.
These marks are generally used by the organisations’ members to identify themselves through: geographical origin, certain characteristics of the company, the level of quality, and the level of accuracy of a product/service. In short, collective marks are used to identify goods or services of producers that have similar interests which can be utilised to build consumer confidence. These marks are considered to be an exception to that of the underlying principle whereby they can give indication to their source of the goods and/or services. As such, collective marks do differ significantly from both ordinary and certifications marks.
The main difference between certification marks and collective marks is that a collective trade mark is used by certain members of the organisation who are in ownership of the mark whereas a certification mark can be used by anybody who complies with the standards and regulations that are defined by the owner of the mark. Moreover, with regards to the application process, there are restricted individuals who can apply for collective marks through the UKIPO, namely, associations of producers, manufacturers, suppliers, or legal persons can apply for a collective mark.
Unlike certification and ordinary marks, a collective mark which designates its geographical origin of the goods and/or services can be registered. However in the instance a geographical indication of the goods and/or services is used, the regulations of use must be given specific authorisation to do so and must be filed within two months.
Both collective and certificate marks are comparatively different from the more common, ‘ordinary’ trade mark. The key difference is that collective trade marks may be used by particular members of the organisation which owns them whereas a certification mark could be used by any individual who complies with the standards defined by that of the owner. Yet both these types of marks have the common goal of safeguarding the consumers’ interest for their products and/or services.
If you are unsure on how to file your trade mark or have any questions relating to the different types of trade marks, contact Lawdit Solicitors today where we would be happy to assist you.