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Important legal change as of 1 October for holders of quality marks

18-09-2017

On 23 March 2016, the European Union Trademark Regulation (EUTMR) entered into force, as part of the ‘Trademark Reform Package’. On 1 October 2017, the last of the reforms will come into effect. This includes the introduction of an EU Certification Mark which is of particular interest to holders of collective trademarks or those interested in (applying for) collective marks.

What are collective trademarks?
The term collective trademark means something slightly different in different jurisdictions. In the Benelux, for example, a collective trademark is an umbrella term that covers both trademarks owned by an association (so-called ‘association marks’) and quality marks. In the EU, however, the term ‘collective trademark’ is only applicable to association marks. The EU Certification Mark is being introduced to protect (only) quality marks.

Association trademarks
The use of a trademark owned by an association indicates that the business using the mark is a member of that specific association. Often this association will represent the interests of the industry in question and, usually, membership (and, therefore, use of the trademark) will only be granted once certain criteria are met, in terms of quality and presentation. Use of this type of trademark represents, as it were, collective goodwill, created by the members of the association, and indicates uniformity in presentation and quality. The below image shows an example of an association (collective) mark active in the UK. 

Quality trademarks
Quality marks, on the other hand, are trademarks that indicate that a specific product meets certain criteria that can be objectively measured. The average consumer interprets those marks as a guarantee that an independent body has assessed the product or service in question on the basis of industry-standard criteria. The growing need for consumer information and consumer protection has a significant role to play in the rise and use of such marks. The below image shows an example of a well-known quality mark in the UK.

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The EU collective mark = Association mark
In the EU, the protection of an association mark as an EU collective mark is regulated in the EUTMR. It describes a collective trademark as a sign that is capable of distinguishing the goods or services of the members of the association (the holder of the collective mark) from those of other undertakings. Only associations and legal persons governed by public law may apply for a collective trademark. Within two months the applicant of the collective mark must submit a regulation that (at the minimum) determines who can use the mark, the terms regarding when someone/ a company can be a member of the association and under which conditions, including sanctions, the association mark may be used.

EU Certification Mark = Quality mark
As of 1 October 2017, it will be possible to apply for an EU Certification Mark. From this date, the protection of certification marks will be governed as laid down in article 83 of the EUTMR.

In general, the EU Certification Mark has the same character and role as a quality mark and, as such, offers an interesting addition to companies trading in the EU. In order to qualify for an EU Certification Mark, however, the applicant must comply with a number of (additional) conditions. These include the requirement for a regulation to be submitted within two months of the application being filed, stating: the characteristics of the goods or services to be certified; the conditions for the use of the relevant EU Certification Mark; and, the test and surveillance measures taken by the owner of the EU Certification Mark.

Should you consider an EU Certification Mark?
An EU Certification Mark will offer companies the possibility to protect quality marks at an EU level, as of 1 October 2017. If you are the holder/user of a quality mark and if trademark protection in the EU is relevant for your company, you may have previously chosen to register an EU collective mark and/or an (individual) EU trademark (EUTM) because a quality (Certification) mark was not yet available at EU Level. Therefore, as of 1 October 2017, more appropriate protection may be available to you. This may also be a good time to assess whether your quality mark is sufficiently protected in general, whether in the EU or outside the region.

Please note: applying for an EU Certification Mark is especially important if you have previously chosen to register an individual EUTM to protect your quality mark. The EU's highest court, the Court of Justice, recently ruled that the registration of an individual EUTM to protect a quality mark does not, in principle, fulfil the requirement of genuine use. This means that if you use an individual EUTM as a quality mark, it may be at risk of revocation action from five years post-registration, on the grounds that it is not in genuine use. 

As the EU Certification Mark could potentially offer you a route to more comprehensive protection, we recommend that you consider the following:

  • Are you a holder of one or more collective brands valid for the Benelux, UK and/or the EU (whether or not via an International Registration)? and / or;
  • Does this collective mark/ are these collective marks (also) used as a quality mark? and / or;
  • Are you interested in protecting your quality mark(s) in the EU?

If the answer to any of these questions is a "yes", please contact your Novagraaf consultant for advice on applying for an EU Certification Mark. You can also contact us for general advice on protection of collective marks.

Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam