About collective trademarks

The possibility of registering and protecting a collective trademark exists in most countries around the world. A collective mark not only serves to individualize goods, but can also provide its rights holders with positive competitive advantages, simplifying entry into the market, sales of products, etc.

In particular, in addition to the general branding tools used by the copyright holders of conventional trademarks, the use of a collective trademark allows associations of manufacturers to distinguish and individualize their products based on industry, regional or other characteristics.

For example, as part of a special WIPO project [1], the collective trademark Bikol was registered in the regional IP office in the Philippines Pili in the name of the Orgullo Association Kan Bicol. The association includes manufacturers of nuts, confectionery, clothing, accessories, cosmetics, essential oils, etc. The products are produced on the basis of long-standing traditional regional practices, and their key unifying feature is that the raw material for them is pili - a tropical tree that grows on the volcanic soil of the Philippines.

From an economic point of view, the accumulation of “team” resources under one trademark expands the possibilities of brand promotion and allows increasing the scale of sales of goods, which helps members of the association compete with large firms.

Compliance with quality standards for goods and services produced and sold under the same brand is achieved through the establishment of uniform requirements and provisions in the charter of the collective trademark, which makes it possible to monitor compliance with these standards.

For example, the Association of Restaurants “Chaikhona No. 1” registered a collective mark of the same name [2], which applies to snack bars, cafes, restaurants, show programs, etc. The charter of the collective mark of this association specifies, among other things: uniform requirements for the design and style of premises in “oriental style”, employee uniforms, music, menu and quality of food, including dishes of traditional “oriental” cuisine , etc.

 basis.

From a legal perspective, the legal framework for collective trademarks allows several individuals to unite under a single brand and use it on an equitable basis. For such situations, this is the only possible mechanism for resolving the issue, since national legislation does not provide for a regime of joint ownership and registration of a trademark in the name of several persons, with the exception of a collective mark.

Which trademark is considered collective?

The concept of a collective trademark is enshrined in the Civil Code of the Russian Federation [3]. So, from Part 1 of Art. 1511 of the Civil Code of the Russian Federation it follows that a collective trademark is understood as a trademark that has a combination of the following characteristics:

• the mark is registered by an association of persons, the creation and activities of which do not contradict the legislation of the state in which it was created. As a rule, such an association is presented in the form of a union, federation, association of manufacturers, etc.;
• the mark is intended to designate goods that have the same quality or other characteristics, which are produced or sold by persons belonging to the association that registered the mark.

Any designation can be registered as a collective mark, provided that it meets the requirements specified in the law (Articles 1482, 1483 of the Civil Code of the Russian Federation).

How does the legal protection of a collective mark differ from an ordinary one?

Legal protection of a collective trademark has the following features, which are regulated by Articles 1510 and 1511 of the Civil Code of the Russian Federation:

• The composition of copyright holders differs. Thus, if an ordinary trademark can be registered only in the name of one person to individualize his goods, then a collective mark can be registered in the name of several persons who are part of an association. Such a mark will individualize goods with common quality or other characteristics that are produced or sold by persons included in the association;
• The mode of use differs - the right to a collective trademark belongs to the association for which it is registered, but every person who is part of the association can use the mark;
• The regime for disposing of an exclusive right is limited, namely, the right to a collective trademark cannot be alienated and provided for use by other persons under a license agreement;
• A collective mark and an application for a collective mark can be converted, respectively, into a trademark and into an application for a trademark and vice versa (Clause 4 of Article 1511 of the Civil Code of the Russian Federation). The transformation procedure is established by Order of the Ministry of Economic Development of Russia dated September 30, 2015 N 703 [4];
• In the case of using a collective mark on goods that do not have uniform characteristics of their quality or other common characteristics, the legal protection of the collective mark may be terminated early in whole or in part based on a court decision made at the request of any interested party.

How to register a collective trademark in the Russian Federation

For state registration of a collective trademark, you need to pay a state fee and submit the appropriate application and documents to Rospatent. The form and procedure for submitting an application, the composition of documents attached to the application and the requirements for them are approved by Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 [5].

Just as with the procedure for registering a regular (individual) mark, an application for a collective mark can be submitted in paper form or in electronic form. However, the application must indicate all persons who are members of the relevant association and who will have the right to use the mark.

In addition to the standard set of documents, the charter of the collective mark must be attached to the application for registration of a collective trademark. The requirements for the content of the charter are established by Part 1 of Article 1511 of the Civil Code of the Russian Federation and include:

• the name of the association that is authorized to register a collective trademark in its name (copyright holder);
• a list of persons who have the right to use the collective mark;
• purpose of registration of a collective mark;
• a list of goods in respect of which a collective trademark is registered, indicating their uniform quality characteristics or other general characteristics;
• conditions for the use of a collective trademark and the procedure for monitoring its use;
• provisions on liability for violation of the charter of a collective mark.

After verifying the payment of the fee, the registration authority conducts a two-stage examination of the application: first, a formal examination, during which it checks the composition of the documents attached to the application and their compliance with the established requirements, and in case of successful completion of the first stage - a substantive examination, where it checks the requirements for the designation, which declared as a collective mark.

The procedure and rules for conducting the examination, including the features of the examination of designations applied for registration as collective trademarks, are established by Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 [6].

The final stage of registering a collective trademark is entering registration information into the Rospatent register and issuing a registration certificate.

In conclusion, we would like to note that at the moment, a small number of collective trademarks are registered in Russia. This is due not only to the peculiarities of their regulation and use, but also to the difficulties of registration, such as the development of the charter for a collective mark. 

Despite these difficulties, the use of collective trademarks holds great potential. It is an effective way to commercialize products and services. Moreover, taking into account the specifics of national legislation, registering a collective trademark is the only way to ensure equal rights for all members of an association under one designation.

The Zuykov and partners company has extensive experience in trademark registration and will assist with all the challenges associated with the process, including the preparation of necessary documents and the legal support for the procedure.

Sources:

1. https://www.wipo.int/collective-marks/ru/news/2022/news_0001.html
2. https://www1.fips.ru/registers-doc-view/fips_servlet
3. “Civil Code of the Russian Federation (Part Four)” dated December 18, 2006 N 230-FZ (as amended on January 30, 2024) // SPS "ConsultantPlus"
4. Order of the Ministry of Economic Development of Russia dated September 30, 2015 N 703 “On approval of the Procedure for transforming a collective mark into a trademark, service mark and vice versa” // SPS “ConsultantPlus”
5. Order of the Ministry of Economic Development of Russia dated July 20, 2015 N 482 (as amended on March 1, 2023) “On approval of the Rules for the preparation, submission and consideration of documents that are the basis for carrying out legally significant actions for the state registration of trademarks, service marks, collective marks, Requirements for documents contained in the application for state registration of a trademark, service mark, collective mark, and the documents and their forms attached to it, the Procedure for converting an application for state registration of a collective mark into an application for state registration of a trademark, service mark and vice versa, the List of information indicated in the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark, the form of a certificate for a trademark (service mark), the form of a certificate for a collective mark" // SPS "ConsultantPlus"
6. Order of the Federal State Budgetary Institution FIPS dated January 20, 2020 N 12 (as amended on March 25, 2022) “On approval of the Guidelines for the implementation of administrative procedures and actions within the framework of the provision of public services for the state registration of a trademark, service mark, collective mark and the issuance of certificates for a trademark, service mark, collective mark, their duplicates" // SPS "ConsultantPlus"