ECTA 2013: explaining the "mysterious" collective CTM

18-06-2013

The opening session at the ECTA 2013 conference in Bucharest took as its subject the "mysterious" collective Community trademark (CTM).

Collective marks are registered by associations or "legal persons of public law" (public entities), and allow their members to use the mark to distinguish their goods from other groups'.

Collective mark applicants can register any form of mark, including words, logos and 3D illustrations, and must submit regulations outlining the conditions for the mark's use.

Well-known collective marks include 'chartered global management accountant' and 'cava'.

Companies can use collective and individual marks in tandem, allowing them to "differentiate their own products from those of competitors, while at the same time benefiting from the confidence of the consumers in products or services offered under the collective mark", according to the Office for Harmonization in the Internal Market’s (OHIM) website.

OHIM charges a basic fee of €1800 for collective marks, double the price for filing individual CTMs electronically.

Speaking at the session, entitled Collective and certification marks in the EU, deputy director for legal affairs at OHIM, Dimitris Botis, said collective marks are unknown, misunderstood and mis-used. 

"Community collective marks are somewhat of a mystery," he said.

"There are not many collective marks," Botis added, showing that only 89 were registered last year and 1,268 have been from 1996 to 2013. In the same period, more than 1.1 million individual CTMs have been registered at OHIM.

The slow uptake of collective CTMs, Botis said, may be explained by their "lack of promotion", an unclear legal framework - with confusion arising due to an overlap with other rights, such as geographical indications and certification trademarks - and "wrong filing strategies".

Botis explained that the rules governing absolute grounds for refusal of a collective mark are the same as those for individual CTMs, but with some exceptions. These include that the mark's regulation of use is "contrary to public policy or accepted principles of morality" or has a misleading character.

He added that certification marks, which certify that goods meet certain standards, such as safety, can be registered as collective marks, but only if the owner is a "public law entity".

Collective marks can also be used to represent the geographical origin of a good or service. This contrasts the individual CTM system, which prevents a geographical indication being registered - as it is deemed descriptive.

The ECTA conference finishes on June 21. 

This article was first published on 19 June 2013 in World IP Review

CTM, ECTA, OHIM, cava

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