Introduction
The main function of the European Union collective mark is to distinguish the goods and services of the members of the association which is the proprietor of the mark from those of other undertakings that do not belong to that association. Such a mark qualifies the commercial origin of certain goods and services by informing the customer that the producer of the goods or the provider of the service belongs to a certain association and that the producer or the provider has the right to use the collective mark. The collective mark informs the consumers about certain qualities of the goods or services for which it is used. The members of the association, which is a proprietor of the collective mark have agreed to adhere to predetermined quality standards for goods or services which share common characteristics. Therefore, the collective mark can be used only by members of the association as long as the members fulfill the criteria set in the regulations of use. It is important to note that usually the collective mark is used by the members of the association, together with their own individual marks, in order to indicate that they are members of a certain association.
Applications for registration of European Union collective marks
Definition
Before providing more information about the registration procedure, the definition of an EU collective mark shall be provided. According to Article 74 of Regulation 1001/2017 “a European Union collective mark (‘EU collective mark’) shall be an EU trademark which is described as such when the mark is applied for and is capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings”.
Who can file an application for registration of an EU collective mark?
Only associations of manufacturers, producers, suppliers of services, or traders which, under the terms of the law governing them, have the capacity in their own name to have rights and obligations of all kinds, to make contracts or accomplish other legal acts, and to sue and be sued, as well as legal persons governed by public law, may file applications for EU collective marks. It shall be indicated that the application is for a collective mark, and the applicant shall submit regulations governing the use of the EU collective mark within two months of the date of filing. In order for a collective mark to be registered, it must comply with the same requirements needed for an individual mark, which means that it shall not fall within the absolute grounds for refusal set forth by article 7 of Regulation 1001/2017. It is important to note that the regulations governing the use of the EU collective mark are paramount for the legal protection of the collective marks. On the day of the writing of this article, the EUIPO has received 2289 applications for registration of EU collective marks, many of which have received deficiencies. The statistics show that collective marks are more difficult to be registered than individual marks. In addition to being subject to the same expertises as individual marks, formal examination as well as examination as to absolute grounds for refusal, European Union collective marks can also be refused due to the fact that the deficiencies have been identified in the provided regulations of use. An application for an EU collective mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a collective mark.
It is important to note that the regulation of the use of an EU collective mark shall be drafted in a clear and accessible manner.
The regulations of use form an integral part of the mark and shall specify the persons authorized to use the mark, the conditions of membership of the association and, where they exist, the conditions of use of the mark, including sanctions. The regulations governing the use of a mark referred to in Article 74(2) of Regulation 1001/2017 shall authorize any person whose goods or services originate in the geographical area concerned to become a member of the association which is the proprietor of the mark.
If there are any changes in the regulations of use, the proprietor of an EU collective mark shall submit to the EUIPO any amended regulations governing use. Amendments to the regulations governing use shall take effect only as from the date of entry of the mention of the amendment in the Register.
Who is entitled to bring an action for infringement?
The proprietor of an EU collective mark shall be entitled to claim compensation on behalf of persons who have the authority to use the mark where they have sustained damage in consequence of unauthorized use of the mark.
Grounds for revocation
The rights of the proprietor of an EU collective mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:
- if, within a continuous period of five years, the mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in an EU trademark should be revoked where, during the interval between the expiry of the five-year period and filing of the application or counterclaim, genuine use of the trademark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
- if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
- if, in consequence of the use made of the trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to nature, quality or geographical origin of those goods or services;
- if the proprietor does not take reasonable steps to prevent the mark being used in a manner incompatible with the conditions of use, where these exist, laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
- if the manner in which the mark has been used by the proprietor has caused it to become liable to mislead the public in the manner referred to in Article 76(2) of Regulation 1001/2017;
- if an amendment to the regulations governing the use of the mark has been mentioned in the Register in breach of the provisions of Article 79(2) of Regulation 1001/2017, unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of those provisions.
Grounds for invalidity
Apart from the grounds for invalidity provided for in Articles 59 and 60, of Regulation 1001/2017 an EU collective mark which is registered in breach of the provisions of Article 76 of Regulation 1001/2017 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the mark, by amending the regulations governing use, complies with the requirements of those provisions.
Due to the above-mentioned peculiarities and due to the fact that collective marks are more difficult to be registered than individual marks, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when registering an EU collective mark. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of an application for registration of an EU collective mark by providing professional advice and preparation of all necessary documents.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information about European Union collective marks. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP attorney in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.