Collective marks: – Trademark Registration in Coimbatore
The provisions contained in section 61 to 68, which deals with registration of collective marks, are new. These were not present in the first trademarks act, 1940 or the recently repealed and merchandise marks act, 1958.
Article 7b is of the Paris Convention for protection of industrial property deals with collective marks. It is obligatory on a member country to accept for filing and to protect, in accordance with the national law collective marks belonging to associations, who are generally an association of producers, manufacturers, distributors, sellers or other merchants of goods.
India is a member of the above international convention and the provisions enacted in the trademarks act, 1999 are in compliance with its obligation. In order that article 7 bis be applicable, the existence of the association to which the collective mark belongs must not be contrary to the law of the country of origin and registration and protection may be refused, if the existence of that association is found to be contrary to that legislation.
It is to be noted that refusal of registration and protection of collective mark is not possible on the ground that the association is not established in the country where protection is sought, or is not constituted according to the law of that country. Article 7bis adds a further stipulation that the association may not even be required to possess an industrial or commercial establishment anywhere. In other words, an association, without possessing any industrial or commercial establishment itself, maybe one that simply controls the use of a collective mark by others.
The TRIPS agreement does not make any provisions concerning “Collective marks”.
The trademark law treaty explicitly provides that the treaty is applicable to trademarks and service marks, but not to collective marks. Therefore, registration and protection of collective marks may be subject to special conditions not provided for in the treaty.
It is to be noted that on the recommendation of the parliamentary committee, the definition of “collective mark” was modified and it is worth reflecting the same to appreciate the legislative intent.
|The clause as originally existed||Section as adopted|
|Collective mark means a trademark distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.||Collective mark which means a trademark distinguishing the goods or services of members of an association of person that should not be a partnership within the meaning of the Indian partnership act, 1932 that may be the proprietor of the mark from those of others.|
The above amendment would make it clear that it is not open to a partnership to have a mark registered as a collective mark in the name of the firm and permit each of the partners to use the mark independently.
Special provision for collective mark: The provisions of this act shall apply to collective marks subject to the provisions:
With relation to the collective mark the reference in clause (zb) of sub-section(1) of section 2 to distinguishing the goods or services of one person from the other that may be construed as a reference to distinguish the goods or services of members of an association of persons that is the proprietor of the mark from the others.
Trademarks act, 1999
Note on clauses: These clauses contain provisions relating to the registration of collective trademarks which are new. These provisions provide for registration of a collective mark which belongs to a group or association of person and the use thereof is reserved for members of a group or association of persons.
The collective marks serve to distinguish the characteristic features of the products or services which are offered by those enterprises. It may be owned by the association that may not use the collective marks but whose members may use the same. The association ensures the compliance of certain quality standards by the members who may use the collective mark if they comply with the requirements prescribed concerning its value. The primary function of a collective mark is to indicate a trade connection with the proprietor association or organization.
Sub-section (1) of section 61 enacts that the provisions of this act shall apply to collective marks, subject to the provisions.
The collective mark is defined to mean a trademark which distinguishes the goods or services of a member of an association of person who is not being in a partnership within the meaning of the Indian partnership act, which is the proprietor of the mark from those of others, vide section 2(1)(g).
Section 2(1)(zb) defines trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and “In harmony with the definition of collective mark, sub-section(2) of section 61 expressly enacts that in relation to a collective mark, the reference in clause (zb) of sub-section(1 of section 2 to distinguishing the goods or services of one person from those of others shall be construed as a reference to distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.
The entire definition of trademark applies to collective mark subject to the above and the special provisions contained in section 61 to 68. Consequently, the mark must be capable of being represented graphically and meet other requirements as are applicable to the registration of trademarks in general.
Proprietorship of a collective mark:
A collective mark is to be owned by an association of person, not being a partnership. In the absence of any explicit provision about the type of association which can own a collective mark, it may be useful to refer an article 64(1) of the community trademark regulations which runs thus:
Association 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 sue and be sued as well as legal persons governed by public law.
Collective mark not to be misleading as to character or significance:
The collective mark would not be registered if it is likely to deceive or cause confusion on the part of public in particular if it is likely to be taken something other than a collective mark, and in such a case, the registrar requires a mark which in respect of the application is made for registration comprises some indication that it is a collective mark.
The main feature of a collective mark is that it belongs to a group or association of persons other than a partnership and the use thereof is reserved for members of the group or association of persons. The association itself may not use the collective mark, but it ensures compliance of certain quality standards by its members, who may use the collective mark. The primary function of a collective mark is to indicate a trade connection with the proprietor.
Section 62 has two components governing the registration of collective marks, namely
- A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of the public;
- If it is to be taken as something other than a collective mark and in such case, the registrar may require the mark which is respect to the application made for registration that comprises some indication that it is a collective mark.
It is obvious, therefore, that registration is liable to be refused if the collective mark is likely to deceive or cause confusion on the part of the public. The provisions of section 9, 11 etc. would thus have to be complied with.
Where necessary, the registrar is empowered to require that the mark contains some indication that it is a collective mark. In fact, the rules prescribed a separate form i.e. Form TM-A, for registration of a collective trademark.
Application to be accompanied by regulations governing the use of collective marks:
An application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark.
The regulations referred to in sub-section (1) shall specify the person authorized to use the mark, the conditions of membership of the association and, the conditions of use of the mark, including any sanctions against misuse and such other matters as may be prescribed.
Trademarks act, 1999:
Notes on clauses: For notes on clauses, see under section 61:
Comments: Application for the registration of a collective mark for goods or services under sub-section (1) of section 63 shall be made to the registrar in triplicate on Form TM-A, along with the prescribed fee and the regulations governing the use of the mark. Where the applicant desires registration of the collective mark in more than one class, Form TM-A is to be used. In the case of applications from convention countries, the prescribed form is TM-A for use for registration of the mark in a single class or in more than one class.
The application should be filed in triplicate and accompanied by 5 additional representations:
The draft regulations to be submitted with the applications should also be in triplicate and shall be accompanied by form TM-A. In accordance with section 63(2), the regulations governing collective marks shall specify:-
- The persons authorized to use the mark;
- The conditions of membership in the association;
- Conditions of use of the mark;
- Sanctions against misuse;
The regulations, as required under rule 131 should include details as to-
- The name of the association of persons and their respective office addresses;
- The object of the association;
- The details of members;
- The conditions for membership and relation to each member of the group;
- The persons authorized to use the mark and the nature of control the applicant exercise over the use of the collective mark;
- Conditions governing the use of the mark including sanctions;
- The procedure for dealing with appeals against the use of the collective mark;
- Such other relevant particulars as may be called for by the registrar.
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