Collective Trademarks : application and

validity in the EU

Annick Mottet Haugaard

ECTA President

ASIPI - 31 October 2011

Collective trademarks

A. Regulation

B. Definition

C. Function

D. Applicant / Future proprietor

E. Registration process

F. Persons entitled to bring an action for infringement

G. Distinction with other signs and/or labels

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A. Regulation : 3 levels in Europe

• Council Regulation (EC) No 207/2009 of 26 February 2009 on

the Community trade mark (CTMR) Community trade marks

• Council Directive (EEC) No 89/104 of 21 December 1988 to

approximate the laws of the Members States relating to trade

marks (TMD) Harmonisation of the national legislations

regarding national trade marks

• Benelux Convention on Intellectual Property of 25 February

2005 Example of national legislation

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B. Definition

“A Community collective mark shall be a Community

trade mark 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.” (Art.64.1 of CTMR)

•Collective geographical trade mark (see infra)

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C. Function

•To distinguish goods or services of the members of the

association from those of other undertakings

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D. Applicant / Future proprietor

•Association of manufacturers, producers, suppliers of

services or trades (only legal person)

Two criteria to be met :

• Applicant must be an association

• It must exist as an entity in itself

•Proprietor may use its trade mark

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E. Registration process

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Filing an

application

Examination

Publication Opposition

Registration Invalidity/Revocation

Application accepted

Application refused

Searches

Opposition rejected

Appeal

E.1. Application

•Filing of the application form (online or by fax / mail)

sent to OHIM or national offices

•Form = as the one for individual trade mark

• Specificity : regulation governing the use of the mark

•Fees : 1.800 EUR

•Duration : +/- 7 months (from application to registration)

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E.1.1 Sign

•Words

•Devices

•3D

•Color per se

•Other distinctive features

(sound; smell…)

•Collective geographical trade mark!

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Which can be

represented

graphically

E.1.2 Regulation governing the use of the mark

•Content (1/2):

• Name of applicant’s organisation

• Object of the organisation

• Bodies authorised to represent the organisation

• Conditions for memberships

• Persons authorised to use the mark

• Conditions to use the marks, including sanctions, if any

≠ Licensee agreement (mark not used simultaneously

by competitors)

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E.1.2 Regulation governing the use of the mark

•Content (2/2) :

• May not be contrary to public policy or accepted

principles of morality

Rules which discriminate on basis of sex, race…

• Specificity for collective geographical mark

• If the examiner is not satisfied two months period to

remedy the defect

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E.2. Examination

•Absolute grounds for refusal :

• Grounds = as for individual trade marks (Art. 7 of CTMR)

• Some specificities (see next slide ) !

•Refusal if there is one of the grounds in only part of the

Community

•Accepting publication of the trade mark

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E.2. Examination

•Specificities :

• Exception to the lack of distinctiveness and

descriptiveness

• Mark which is geographically descriptive but not deceptive

• Eg : CFI, 17 May 2011 (Txakoli)

• Misleading character of the sign

• Defect to regulation governing the use of the mark

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E.3. Publication of the application

•Publication in Part A of the Bulletin

possibility for filing third party observations

Absolute grounds for refusal

3 months for filing an opposition

Relative grounds for refusal

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E.4. Opposition

•Opponent must have rights in an earlier trade mark or

other form of trade sign (Art. 8 of the CTMR)

•Decision of the Opposition Division is subject to appeal

• Appeal is decided by OHIM’s Boards of Appeal

• A further appeal to the Court of First Instance of

the European Communities

• Ultimately to the Court of Justice of the

European Communities 15

E.5. Registration

•Publication in part B of the Bulletin

•Scope of protection: the European Union as a whole

Unitary character

•Period of protection: 10 years

! Renewable indefinitely for period of 10 years

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E.6 Revocation

•Grounds for revocation = as for individual marks

•Specificities :

• Proprietor allows a use of the mark in a manner

incompatible with the conditions of use

• The manner of use by the proprietor of the mark

has caused it to become liable to mislead the public

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E.7 Invalidity

•Grounds for invalidity = as for individual marks

•Specificities :

• Regulation contrary to public policy

• Misleading character of the mark

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F. Persons entitled to bring an action for

infringement

•Proprietor

•Every person who has authority to use a Community

collective mark if the proprietor consents thereto

•Proprietor is entitled to claim compensation on behalf

of persons who have authority to use the mark

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G. Distinction with other signs and/or labels

1. Individual trade marks

2. Certification marks

3. Some other European labels of quality

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G.1 Individual trade marks

•Same regulation except what was just mentioned

•Possibility to affix simultaneously both kind of marks

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Individual Collective

Sign likely to be protected Distinctive

No geographical origin

May be more descriptive

Geographical origin

Proprietor Natural or legal person Association (legal entity)

Function Function of identification Function of identification

Users Allows to create a network

of licensees and to

impose its rules

Automatically member if

one meets the criteria of

the regulation of use

G. 2 Certification mark

•No European regulation

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Certification Collective

Sign likely to be protected Also geographical origin Also geographical origin

Proprietor Natural or legal person Association (legal entity)

Function Function of guarantee Function of identification

Users Not the proprietor Automatically member if

one meets the criteria of

the regulation

G.3 Some other European labels of quality

A. General points

B. Common features

C. Protected designation of origin (PDO)

D. Protected geographical indication (PGI)

E. Traditional specialities guaranteed (TSG)

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A. General points

•Aims : to promote and protect designations of agricultural

products and foodstuff of quality

•Regulations (at the exception of those for wine or spirits):

• Regulation (EC) No 510/2006 on the protection of geographical

indications and designations of origin for agricultural products and

foodstuffs

• Regulation (EC) No n°509/2006 on agricultural products and foodstuffs

as traditional specialties guaranteed

•European database DOOR

http://ec.europa.eu/agriculture/quality/door/list.html

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B. Common features (1/3)

• Proprietor :

• Group of producers or processors of the concerned

products

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B. Common features (2/3)

• Name of the product may not be :

• A generic name

• In conflict with names of plant varieties, animal breeds

• A homonym creating a risk of confusion

• A trade mark (reputation, renown, length of time it has

been used)

• A reference only to claims of a general nature used

(TSG)

• Misleading (TSG)

• Regulation of use!

•

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B. Common features (3/3)

• Users :

• One meets the criteria of the regulation of use

• Control :

• Authorities/bodies designated by the Member

States

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C. Protected designation of origin •Definition :

• Characteristics of the product are essentially or

exclusively due to a particular geographical environment

• Production, processing and preparation of which take

place in the defined geographical area;

•Eg: Feta, Camembert de Normandie, Prosciutto di Parma

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D.Protected geographical indication

•Definition :

• Product which possesses a specific quality,

reputation or other characteristics attributable to

that geographical origin,and

• Production and/or processing and/or preparation

of which take place in the defined geographical

area.

One link with the area is sufficient

•Eg : Jambon d’Ardenne 35

E. Traditional specialities guaranteed

•Definition :

• A set of characteristics which distinguishes a product

from other similar products of the same category

• Intrinsic features or product’s production

method

No link with a geographical area

•Eg : Kriek , Mozzarella, Pizza Napoletana

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Q&A

Thank you for your attention

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Contact details

Annick Mottet Haugaard

Partner

annick.mottet@lydian.be

+32 2 787.90.13

www.lydian.be

Tel: +32 2 787.90.00

Fax: +32 2 787.90.99

.