09.06.2025
There are a number of “types” of trade marks, whether it is a word mark, a figurative mark, a colour mark, a holographic mark, a sound mark, etc, and these are often discussed. What is not discussed so often are the kinds of marks.
Thank you
What are the kinds of marks available? In the EUIPO, most EU member states, and the UKIPO there are three kinds of marks:
which is placed on cheese produced by members of an association. An association will typically require membership which may entail the payment of a fee and require members to follow certain guidelines to use the mark.
which is placed on products to guarantee that they have been produced in accordance with fairtrade standards.Notably, only the first kind is called a “trade mark” in the conventional sense; collective and certification marks are named for their function.
Collective and certification marks also require additional documentation during the filing stages in order to benefit from registration.
Collective and certification marks require regulations to be filed with the Registry which describe how the mark is to be used, who may use the mark and any requirements/standards associated with use. The regulations can be filed at the time of filing or within two months of filing. There are key differences in what information is required in regulations governing use for collective and certification marks relating to their functionFor example, how the quality or characteristic being certified by a certification mark is assessed must be included in the regulations govern use for a certification mark, and how to gain membership to use the collective mark must be included in the regulations governing use for a collective mark.
The EUIPO and UKIPO have helpfully drafted guidelines on what information is required in these regulations.
Collective and certification marks are subject to the same rules as ordinary trade marks. This means that a collective or certification mark can be opposed, revoked and invalidated. Along with the typical grounds of revocation and invalidation, collective and certification marks may also be subject to additional grounds of revocation and invalidation based on how the marks are meant to function, namely:
1. failure to prevent misuse contrary to regulations governing use
2. use has caused it to become liable to mislead the public
3. amendments to regulations governing use are objectionable
4. in the case of certification marks, the owner is involved in the carrying on of the business, of the goods or services to be certified
The examination process of collective and certification marks can provide some guidance on what misleading the public may entail. During the examination, the EUIPO and the UKIPO have the power to raise objections that the public is liable to be misled as regards the “character or the significance of the mark”. This happens if the Office believes that through the depiction of the mark itself or the regulations governing use, the public may mistake the kind of mark that has been registered for a different kind of mark. This makes choosing and using the right kind of mark very important when thinking about the future of a mark. How could this apply in a revocation scenario?
A collective or certification mark is liable to be revoked if the public may be misled as regards the character, meaning or function of the mark. There are a few ways this can happen, for instance:
For an ordinary trade mark, the owner should be using the mark in the course of trade as an indicator of trade origin. However, the nature of a certification mark is such that the owner cannot use the mark in the course of trade, but rather such use can only be made by those entitled/authorised to use the certification mark to certify goods and/or services. The use of the mark, whether ordinary, collective or certification, should reflect the fundamental properties of that kind of mark.
Applying for the correct kind of mark is crucial for successfully defending and future proofing a mark, in particular if the mark is going to be used as a certification mark but the form of mark registered is an ordinary trade mark. Recently, there has been some case law developing in this area, where ordinary trade marks are used as certification marks highlighting possible pitfalls for trade mark owners.
Deutsche Pfandsystem GmbH (DPG) filed an opposition against a later filed EU trade mark in 2015 based on an earlier ordinary trade mark. DPG were put on proof of use and the EUIPO determined that the use of their earlier ordinary mark did not constitute genuine use (06/09/2023, T-774/21, DEVICE OF A BOTTLE SILHOUETTE AND AN ARROW (fig.) / DEVICE OF A CAN AND A BOTTLE SILHOUETTES AND AN ARROW (fig.), EU:T:2023:518). DPG appealed the decision to the General Court, which agreed with the EUIPO and Boards of Appeal. DPG were not using the mark themselves, but rather they were using the mark to certify services of other businesses, and those other businesses were using the mark. The earlier mark was being used as a certification mark and reflected a certifying function, not the function of an ordinary trade mark. DPG could not show the mark was being used as an indicator of trade origin either by itself or by those using the mark.
Why is this important? Applying for a certification or collective mark can be onerous, expensive and time-consuming. At times, owners decide to file an ordinary mark rather than a collective or certification mark and then use licenses to make those who will be using the mark comply with the trade mark owner’s requirements or standards. However, in general, it is advisable to always file the right kind of mark. Sometimes, filing an ordinary mark first and following up with a certification or collective mark can provide the strongest protection.
When filing a mark, whether ordinary, collective mark or certification, think about the future use of the mark. This can be difficult to do when starting out but applying for the right kind of mark will make it easier in the long run to maintain trade mark protection and to defend rights. Collective and certification marks are very valuable and highly sought after assets and add significantly to the industries they operate in. Some examples of well known collective and certification marks are provided below to illustrate the importance of these kinds of marks:-
Types of trade marks - EUIPO
https://guidelines.euipo.europa.eu/2302857/2047173/trade-mark-guidelines/8-2-3-1-content-of-the-regulations-of-use
https://guidelines.euipo.europa.eu/2302857/2046583/trade-mark-guidelines/8-3-certification-marks
https://guidelines.euipo.europa.eu/2302857/2228164/trade-mark-guidelines/8-kind-of-mark
https://www.gov.uk/guidance/trade-marks-manual/certification-and-collective-marks
Thank you
