Which collective trademark to choose?
In France, and in several other countries, there are two types of trademarks: classic, so-called "individual" trademarks and collective trademarks. These qualifiers do not refer to the number of applicants (an individual trademark may be owned by several persons in joint ownership). It is much more a particular type of trademark exploitation. Collective marks may be used by any person who complies with the rules of use laid down by the trade mark proprietor. Conversely, the individual trademark confers on its owner a monopoly of exploitation.
We can distinguish two types of collective marks the "simple" collective mark and the "certification" mark. The latter is subject to special conditions, which have an impact on its exploitation. It is therefore advisable to find out how collective marks are used before filing. Below is our advice on how to make the right choice.
Differences between a simple collective mark and a certification mark
The simple collective mark
It is quite similar to individual brands, as its only function is to guarantee a given origin. It is not intended to guarantee a level of quality.
A simple collective mark may be used by any person who complies with the rules of use established by the owner of the mark. This has a practical advantage over individual trademarks: the owner will not have to enter into licensing agreements with each user.
When the trademark is filed, a set of rules for use must be attached. These will be entered in the National Register of Trademarks as from the publication of the trademark. Amendments to the regulations for use must be notified to the INPI. In addition, it is often the case that the regulations for use are available online on the website of the trademark owner.
The collective certification mark
The certification mark most often pursues a goal of general interest. It confers a guarantee of conformity of the products or services bearing the mark with respect to certain characteristics. It is subject to a stricter legal regime than the simple collective mark.
The filing must be made by an independent legal entity. The depositor must not be a manufacturer, importer or seller of the goods or services concerned. He cannot therefore market the goods or services concerned himself.
In addition, the holder must be able to issue a certification. He must therefore have received an accreditation from COFRAC (Comité Français d'Accréditation). Finally, the rules of use must be very precise. They are in fact approved specifications, which must include a control system.
These different conditions are primarily intended to protect the consumer.
Why register a collective trademark?
Depending on your situation, collective marks can offer practical advantages not insignificant.
The simple collective mark may be used by groups or associations of companies, which wish to gain visibility. SMEs may decide to register a collective mark to jointly market their products. The collective mark also has an administrative advantage in that it can replace the signing of numerous licensing agreements and centralise the monitoring and defence of the mark.
The certification mark is often used for public bodies, since it is often used in the general interest of consumer protection.
Finally, collective marks can be used alongside individual marks as a quality "label". In this way, the various operators can differentiate their products from those of the competition, while benefiting from a more recognized name.
Be careful, however: qualification does not depend solely on the will of the applicant. It is assessed above all in the light of the actual conditions of exploitation. Thus, simple collective marks are likely to be requalified by the courts. They can thus become, after filing, certification marks.
It is therefore essential to be vigilant when registering a collective mark, in order to identify its nature and its future conditions of exploitation. In addition, it is strongly recommended to be assisted by a specialist lawyer when drafting the rules of use.