Collective trademarks: the peculiarities of the registration and why are they so few?
The provisions being in force in the field of individual trademarks are generally applied to collective trademarks: the general conditions of protectability, a period of the legal protection, the methods of defence, etc. The peculiarities of the legal institution are described in Article1510 and Article1511 of the Civil Code of the Russian Federation. Even without referring to the text of the above norms and proceeding only from the lexical analysis of the concept “a collective trademark,” it can be concluded that this is a designation that several entities are entitled to use.
The study of the provisions of the civil legislation allows identifying a number of specific features, which are characteristic of the collective trademarks:
1. The designation may be registered only by an association of persons.
Interestingly, there is not an indication in the legal norms that the association should have the status of a legal entity, due to this fact it is permissible to register the collective trademarks with respect to the associations of the persons, who do not have the status of a legal entity. Despite the fact that the designation may be used by all entities belonging to the association, the right holder shall be the latter solely. It is just the association that has the right to the collective trademark’s defence from the illegal use by third parties and to appeal to judicial authorities to suppress the illegal actions. Among other things, the function of monitoring for the compliance with the quality indicators of the products manufactured by the participants shall be imposed on the association.
2. The mark is used to designate the products, which are manufactured or sold only by the persons being a part of this association.
In addition to this provision, the legislator has restricted the circulability of the collective trademark indicating to impossibility of alienating or granting the right to use under a license agreement.
3. The products, for individualization of which the collective trademark is used, should have unified characteristics of quality or other general characteristics.
A direct reference to the need of maintaining the quality indicators of the products underlines in this case the importance of the trademark as a guarantor of the quality of the product. However, individual designations are primarily intended to individualize the products. Perhaps, it is due to this reason that there is not a possibility of transferring the rights under license agreements: thus, the legislator restricts the range of manufacturers and ensures a possibility of a quality control of the manufactured products.
One of the examples of a collective trademark is the designation used as a means of individualization for the foodservice chain “Chaikhona No. 1.” The right holder of the designation registered with respect to the 41st and 43d classes of the ICGS (in particular, discos, night clubs-cafes, snack bars, etc.) is LLC “The Chain of Restaurants “Chaikhona No. 1.” The certificate (№ 690343) indicates that the trademark has a collective status, and 52 legal entities, which have the same right, are indicated in the column “The Information on the Persons Entitled to Use a Collective Mark.” In the publication on the certificate, there is also an extract from the Charter, which contains the requirements to the institutions and employees with respect to whom the use of the trademark is planned:
- “The design of the premises should be done in an “oriental style,” the premises should be equipped with comfortable soft furniture, comfortable for a visitor’s long stay in the restaurant.
- The lighting of the restaurant should be done in soft, warm and cozy light tones, which are conducive to a pleasant pastime.
- The unified design of the employees’ uniform equipped with the logo “Chaikhona No. 1.”
- The mandatory use of the unified menu approved by the Association, and, at the same time, the total number of the own dishes should not exceed 10% of the total.
- The unified indicators of the quality of cooking and serving the dishes.
- A unified training program for the employees approved by the Association.
- A unified music accompaniment in the style of lounge music.
- All restaurants of the chain should hold the arrangements of an entertainment and leisure nature, in the form of holding concerts of the famous artists, as well as master classes in cooking a traditional “oriental” cuisine, the children's parties.”
The peculiarities of the registration and use of collective trademarks
According to the provisions of Paragraph 1 of Article 1511 of the Civil Code of the Russian Federation: “The application for the registration of the collective mark (the application for the collective mark) submitted to the Federal Executive Authority on Intellectual Property shall be accompanied with the Charter of the collective mark, which must contain:
1) a name of the association authorized to register the collective mark to one’s name (the right holder's);
2) a list of the persons entitled to use this collective mark;
3) a purpose of the registration of the collective mark;
4) a list and the uniform characteristics of the quality or other general characteristics of the products, which will be designated with the collective mark;
5) the conditions of the use of the collective mark;
6) the provisions on the procedure for monitoring the use of the collective mark;
7) the provisions on responsibility for the violation of the Charter of the collective mark.”
Thus, in order to register the designation as a collective trademark, it is necessary to compose, adopt and submit with Rospatent the Charter of the collective mark. In addition to this, according to the content of the Charter, some additional responsibilities shall be imposed on the association to monitor the use of the designation. And the measures of responsibility stipulated in the document can be applied to those persons, who use the collective trademark in the violation of the provisions of the Charter.
The cases of an early termination of the effect of the collective trademark are described in Paragraph 3 of Article 1511 of the Civil Code of the Russian Federation. The use of such designation with respect to the products that do not have the unified characteristics of quality or other common characteristics on the basis of the court decision may lead to a full or partial early termination of the legal protection.
The registration of a collective trademark: advantages and disadvantages
Obtaining a certificate to a collective trademark can become an excellent alternative to the use of an individual trademark in the following cases:
- When there are a number of the organizations, which are engaged in close cooperation and intend to manufacture the products using a unified, standardized means of individualization.
- If the participants of the association do not wish using the trademark of one of the manufacturers on the basis of the license agreements.
- The entities participating in the association want to have the equal rights to use one trademark. The provisions of the Civil Code of the Russian Federation do not allow joint ownership of the trademark. The registration of the collective trademark will become a solution of the problem, because it is the association that will become a right holder and not its participants individually.
However, currently, despite all advantages of using the collective trademarks, the number of the registered designations is very modest. This is due to a number of circumstances:
- The additional requirements are imposed on such designations at the stage of the registration.
- The association shall be responsible for monitoring the compliance with the Charter of the collective mark, as well as for preserving the quality of the products manufactured.
- The circulability of the designation is restricted, as it is impossible to conclude the license agreements and an alienation agreement.
- There is a possibility of an early termination of the protection as a result of the non-compliance with the quality of the manufactured products.
Head of Trademark Department / Trademark Attorney Reg. № 1258 / Patent Attorney of the Russian Federation / Eurasian Patent Attorney Reg. № 63