The laws relating to trade mark protection have been harmonized in all the 28 countries of the European Union, however, some discrepancies remain. One of those is that Certification Marks have been registrable in the UK for decades, but this option was not available for the EU trade mark. This has changed, and as from 1 October 2017, certification marks can now be registered in a single registration for the whole of the EU.
We are familiar with trade marks as being signs which distinguish one business from another, which identify products so that consumers can tell them apart, and identify the providers of services, so if we like them, we can return to them for more of the same.
There are though other kinds of trade marks with which many people are not familiar.
A collective mark is one which is registered by a group or association of businesses, so that the members of that business can all use the mark themselves. An example is a group of farms which produce eggs. Each farm is a different business in its own right, but together they market their eggs under the same trade mark. Unlike standard trade marks, a collective mark can be registered if it denotes a geographical origin of the goods. The applicant is required to submit Regulations as to the use of the mark, to be examined by the Registry, but in all other respects the process of registration is the same. Only the members of the collective can use the mark but there is no limit to the number of members.
A certification mark is one which is registered by an organisation which is fit to certify that the goods or services of others meet criteria which are set by the organisation. As with collective marks, the applicant needs to submit Regulations for approval by the Registry, and the criteria for registration are slightly different from those for standard trade marks. However, in this case, the proprietor of the mark cannot use the mark itself, but anyone who meets the standards set can use the mark. An example of this is the RED TRACTOR mark of British Food Standards.
A defensive mark used to be registrable in the UK but this provision ceased with the introduction of the Trade Marks Act 1994. It is still available in some countries though, for example, in Australia. In order for a standard trade mark registration to remain valid and enforceable, the mark has to be used in relation to the goods or services for which it is registered. If the mark is registered and has become well known, a defensive registration permits registration for goods or services for which the mark is not used.
If you have a mark which is not a conventional mark, and you want to protect it, come and talk to us. You never know, we may have a neat solution available for you!
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