Features of registration of a collective trademark

Originally published in Trademark Lawyer Magazine

A collective trademark is a rather rare type of trademark. A main characteristic is its ownership by an association of persons, as well as its use in relation to goods that have common characteristics. This type of trademark is registered and used in civil circulation the least, and has a number of features that will be discussed below.

In accordance with Article 1510 of the Civil Code of the Russian Federation, an association of persons, the creation and activities of which do not contradict the legislation of the state, has the right to register a collective mark in the Russian Federation. A collective mark is a trademark intended to designate goods produced or sold by persons belonging to a given association and having uniform characteristics of their quality or other common characteristics.

It should be noted that the purpose of using such a means of individualization as a collective trademark does not differ from a regular trademark. Its main purpose is the individualization of goods and their identification from other manufacturers. The main difference is who the copyright holder is (association of persons).

Due to the fact that the copyright holder of a collective mark is an association of persons that is a legal entity, it has a number of documents that regulate its activities. That’s why it is necessary to establish the procedure for using the collective mark, requirements for the characteristics of goods marked with such a mark, the procedure for its use, the procedure for monitoring its use, as well as liability for violations of established rules. Such requirements are established by the association in the Charter of a collective mark. The preparation and submission of the Charter to Rospatent is necessary at the stage of filing an application for registration of a designation as a collective mark. In addition to the requirements for the use of a collective mark, the Charter of a collective mark also lists those persons who are members of the association and have the right to use it, as well as a description of the mark itself and the purposes of its registration.

Thus, in accordance with Article 1511 of the Civil Code, the Charter of a collective trademark must contain:

• name of the association authorized to register the mark in its name (copyright holder)
• list of persons entitled to use this mark
• purpose of registering a mark
• list and uniform quality characteristics or other general characteristics of goods that will be designated by the sign
• terms of use of the mark
• provisions on the procedure for monitoring the use of a mark
• provisions on liability for violation of the Сharter

It should be noted that if changes are made to the Charter, Rospatent must be notified accordingly. Additionally, information about the participants of the association is entered into the State Register of Trademarks and the certificate for a collective mark. Data are entered into the general State Register of Trademarks and Service Marks of the Russian Federation, and this information is published on the official website of the Federal Institute of Industrial Property (FIPS).

Summarizing the above, we can highlight the following mandatory conditions for registration of a collective mark:

• the copyright holder may be an association of persons;
• the designation must be intended to identify goods produced or sold by members of the association;
• goods must have uniform characteristics;
• in addition to the standard documents for registration of a trademark, the Charter of the collective mark must be attached in the application for registration. For its part, it contains the rules for the use of the collective mark, control over its placement, a list of persons who have the right to use the collective mark, and the procedure for bringing to responsibility.

Another feature of a collective mark is the possibility of its transformation into a (ordinary) trademark, which is possible both at the application stage and after registration. Conversion can be carried out either from a collective trademark/collective mark application to a trademark/trademark application, or vice versa.

When converting an application for registration of a collective mark into an application for registration of a trademark, several conditions must be met:

• submission of consent to the transformation of the application by persons of the association;
• submitting an application before a decision is made on the converted application;
• the application is signed by an authorized person of the association of persons;
• an application for state registration of a trademark (service mark) is attached to the application for transformation of the application;
• the state fee for registering a trademark (service mark) has been paid.

It should be noted that the applicant must be a person who was part of the association (the applicant for the converted application). Based on the results of consideration of the application, Rospatent makes a decision in the form of a notification of approval or refusal of the application. The priority and filing date of the application are retained when the application is converted.

Another feature of the legal regime of a collective mark in Russia is the presence of restrictions on the disposal of rights to it. Thus, Article 1510 of the Civil Code establishes a direct ban on the alienation of rights to a collective trademark and the conclusion of licensing agreements.

It is also important to note that a person belonging to an association that has registered a collective mark has the right to use its trademark along with the collective one.

Taking into account the specifics of this means of individualization, a collective mark is not the most popular type of trademark, as evidenced by the small number of registered objects. The following are examples of collective signs:

• trademark “Borjomi” No. 899664, registered for goods of class 32 ICGS, copyright holder Non-entrepreneurial (non-commercial) legal entity Georgian Glass and Mineral Waters Association, Georgia (GE);
• trademark “Solingen” No. 312608, registered for goods of class 08 ICTU, copyright holder Industry-und Handelskammer Vuppertal-. Solingen-Remsheid, Germany (DE);
• trademark “Derevenkino” No. 712363, registered for goods of class 29 of the ICTU, copyright holder Association of Peasant (Farm) Farms and Agricultural Cooperatives of the Tambov Region, Russia (RU);
• trademark “Aleksandrovskaya products” No. 324484, registered for goods of class 30 of the ICTU, copyright holder Association Aleksandrovskaya, Russia (RU);
• trademark “Silver of Russia” No. 484309, registered for goods and services of classes 14, 35 of the ICTU, copyright holder Jewelry and production company "Silver of Russia", Russia (RU).

The list is not exhaustive.

Among these marks, such marks as: “Aleksandrovskaya products” No. 324484, “Silver of Russia” No. 484309 were transformed, which can be traced in the chronology of publications of information in open registers.

The small number of registered collective marks and their low popularity can be explained by the fact that registering a collective mark is a rather labor-intensive procedure that requires certain preparation of documents and information. At the same time, such a trademark helps consumers to easily identify goods produced only by members of the association and be confident in their quality, which in turn increases the reputation of the manufacturer.