EU collective and certification marks after the Trade Mark reform

by Giancarlo Moretti

On 23 March the amendments to the Community Trade Mark Regulation 207/2009[1] (hereinafter CTMR) will enter into force. Beyond the obvious substitution of the word Community with the expression European Union (some years later after the abolition of the European Community by the Lisbon Treaty) and other relevant modifications,[2] both the new Trade Mark Directive[3] (to be implemented by January 2019) and Regulation 2424/2015[4] introduced relevant provisions concerning collective and certifications marks.

These categories of marks are different from an ordinary trade mark, whose main function is to guarantee the origin of a good or service from an individual source.[5] Indeed, their use is open to a plurality of subjects and they do not identify a single undertaking.[6] Specifically, a certification mark serves to certify that a good or a service complies with certain standards related to its origin, the material used, the manufacturing process or the quality. A collective mark, instead, aims to signal that a good or a service is originated by a member of a given association.[7]

The current version of the CTMR provides protection for Community collective marks (Article 66), while the Trade Mark Directive,[8] at Article 15, allows Member States to adopt further grounds for refusal or revocation for these special marks others than the ones set out in Articles 3 and 12. The reform package passed by the Parliament and published in late December sensitively changes the current framework. On the one hand, Regulation 2424/2015 introduces the possibility to lodge an application for a EU Certification mark. On the other hand, the new Trade Mark Directive sets forth the obligation for the Member States to implement provisions in order to protect collective marks. Albeit the most part of the countries already protect them, this article seems to be fully consistent with Article 7bis of the Paris Convention. Moreover, the new Directive leaves up to the single member to enact legislation in regard to certification or guarantee marks. Thus, it offers the possibility for domestic jurisdictions to introduce this special type of marks.

The impact of these novelties has to be tested yet in the upcoming years. An important aspect of this reform, however, is that the EU framework seems to converge with those of new-world countries. Australia, USA and Canada producers have registered certification marks for many years and have been used even in order to protect geographical indications, as Idaho potatoes. In relation to certification marks, the new provisions seem to exclude this option. Indeed, Article 74a of the new Regulation reads as follows: “An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark […] with the exception of geographical origin, from goods and services which are not so certified.” EU Collective marks, instead, may be used to this extent. Instead, the new Directive allows Member State to authorise producers to rely on collective marks in order to indicate the geographical origin of a good or a service.[9]

Beside the never-ending controversy around these two models of protection,[10] there is no doubt that the Trade Mark Reform has sensitively changed the framework. Collective and certification marks are flexible tools that may offer protection to associations of producers of small and medium enterprises and that could enhance their competiveness in the current knowledge economy. Even if with some delay, the European lawmaker has surely implemented important amendments that, if properly exploited, could have a positive impact for EU economy.

[1] Council Regulation (EC) No. 207/2009 of 26 February 2009 on the Community Trade Mark [2009] OJ L 78/1.

[2] For example, the new pieces of legislation stipulates a new definition of trade mark with no reference to the graphical representation.

[3] Directive 2015/2436 of the European Parliament and the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks [2015] OJ L 336/1.

[4] Regulation 2015/2424 of the European Parliament and the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) [2015] OJ L 341/21.

[5] See also Arsenal Football Club plc v Matthew Reed  C-206/01 [2002] ECR 2002 I-10273.

[6] As for certification marks, the owner is usually prevented by using them. One of the few exception is represented by Australian legislation. See Trade Marks Act (Cth) 1995, note to Section 169.

[7] See also Jeffrey Belson, ‘Use, Certification and Collective Marks’ in Jeremy Phillips and Ilanah Simon (eds), Trade mark use (Oxford University Press 2005), 147 ff.

[8] Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks [2008] OJ L 299/25.

[9] This option is already available under the UK Trade Mark Act 1994. See Schedule 1 Section 3 and Schedule 2 Section 3 of Trade Mark Act 1994 (as amended). See also Robin Jacob, Daniel Alexander and Matthew Fisher, Guidebook to Intellectual Property (6th ed, Hart 2013), 119 ff.

[10] For an overview of the differences between the systems, see Alberto Francisco Ribeiro de Almeida, ‘Key Differences between Trade Marks and Geographical Indications’ (2008) 30(10) E.I.P.R. 406.

Giancarlo Moretti, LL.M. (QMUL), QMJIP Associate Editor