Many groups are not aware that the Trade Marks Act 1995 (Cth) (Act) provides for a type of trade mark registration exclusively for their use – the collective trade mark.
A collective trademark is a sign used, or intended to be used, in relation to goods and/or services dealt with or provided in the course of trade by members of an association, organisation or collective to distinguish their goods or services from those of non-members.
Examples of collective trademarks currently registered on the Australian Trade Marks Register include:
- INDUSTRY SUPER FUND in the name of the Industry Funds Forum;
- GP GRANA PADANO in the name of Consorzio Per La Tutela Del Formaggio Grana Padano;
- INTERNATIONAL ALLIANCE OF RESEARCH UNIVERSITIES in the name of the International Alliance of Research Universities; and
- THE AUSTRALIA INTERNATIONAL OLIVE AWARDS in the name of Australian Olive Association Ltd.
There are some theoretical similarities between collective trademarks and certification trademarks. However, the main difference between these types of marks is that a certification trademark indicates that the goods and/or services meet certain standards, or possess a particular characteristic(s), whereas a collective mark identifies that the goods and/or services originate from an ‘association’.
Collective trademarks can only be owned by ‘associations’
The key requirement for a collective trademark is that it must be filed in the name of an association (either incorporated or unincorporated).
An ‘association’ is not defined in the Act, however the Trade Marks Manual of Practice and Procedure looks to the Macquarie Dictionary definition which provides “an organisation of people with a common purpose and having a formal structure“.
Incorporated associations have a separate legal personality (meaning they can sue and be sued), and are incorporated in accordance with the relevant state or territory based legislation. We note that filing an application in the name of an unincorporated association may create potential difficulties for enforcement.
A consequence of the requirement of ownership by an association is that collective marks cannot be registered to individuals or companies.
An application to register a collective trademark must otherwise meet all of the registrability requirements of a standard trademark.
Key benefits of collective trademarks
Collective trademarks can be a useful device for associations, and there are several reasons why a collective trade mark application might be preferred over a standard trade mark application, including:
- Any member of the association may use the mark, which removes the need for formal licence agreements. With that in mind, it is sensible for an association to set rules around the use of the collective trademark, to make sure it is appropriately used by members.
- However, unlike certification marks, the rules set around the use of a collective trademark do not need to be approved by the Australian Consumer and Competition Commission (ACCC). Importantly, a member of the association cannot prevent another member from using the mark, unless that use does not conform with the association’s rules.
- A claim for financial relief in an infringement action can consider the damage or loss suffered by each individual member of the association.
A potential problem, however, is that a collective trademark cannot be assigned or transmitted. This is not the case for standard trademarks, and so associations may find this limitation to be a deterrent.
Despite these possible benefits, collective trademarks remain an underutilised part of the Australian trademarks system. At the time of writing, there are only 359 collective trademarks registered in Australia (out of a total of almost 800,000 registered marks).
If you would like to discuss the above article or how to go about registering a collective trademark, please contact our Commercial Team on (02) 4927 2900.
