Collective Marks under the Trademark Act

Collective Marks under the Trademark Act

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The trademark law includes within its scope a separate category of marks known as collective marks. The World Intellectual Property Organization (WIPO) has defined these collective marks as “signs which distinguish the geographical origin, material, mode of manufacturing or other common characteristics of goods or services of different enterprises using the collective mark.”1 The owner of a collective mark are members of an association of such enterprises. 

A collective mark is defined under Section 2(1)(g) of the Trademark Act, 1999 as a “trademark distinguishing the goods or services of members of an association of persons [not being a partnership within the meaning of the Indian Partnership Act, 1932] which is the proprietor of the mark from those of others.”2 Therefore, the Trade Marks Act, 1999 has made special provisions under Chapter VIII for the registration of collective marks. 

Moreover, the use of collective marks is governed by regulations which prescribe certain standards that need to be complied with by the members of the owner of a collective mark. In this regard the Trade Marks Rules, 2017 prescribes special provisions for collective trademarks. 

The products which are peculiar to a region can be promoted using collective marks. The use of a collective mark helps to market the products domestically as well as internationally, thereby developing better cooperation among the local producers. Most importantly, a collective mark provides crucial information about the distinctive features of a product to the public for which the collective mark is used. 

Tamil Nadu Handloom Silk and Tamil Nadu Handloom Cotton have a registered collective mark representing the silk and cotton handloom of the state of Tamil Nadu. The two Marks i.e., silk and cotton handloom for the Tamil Nadu handloom weavers cooperative society has been designed by the National Institute of Design who was approached by the Government of Tamil Nadu. The mark depicts a lotus flower which symbolises the sacredness and purity of the Indian culture thereby reflecting upon the deep-rooted traditions of weaving in the state of Tamil Nadu. The letter ‘S’ has been incorporated into the symbol representing silk handloom and the letter ‘C’ for cotton handloom.3 

The illustration given below depicts the different types of trademarks that can be registered.   

Collective Marks under the Trade Marks Act, 1999 

Section 61 of the Trade Marks Act, 1999 prescribes the special provisions for collective trademarks. The provisions of the Trade Mark Act, 1999 are applicable to collective marks but they are subject to provisions under Chapter VIII of the Act.4 Under section 2(1)(zb) of the Act the “trademark” for the goods/services of one person are distinguished from those of others, whereas in the case of “collective marks” the “goods/services of members of an association of persons which is the proprietor of the mark” is distinguished from others.5 

A collective mark shall not be registered:6

  • If there is a likelihood of the public to be confused or deceived ;
  • If it is considered as something other than a collective mark.

Furthermore, for the mark for which registration is sought, the Registrar may require that the mark should be composed of some indication that signifies it to be a collective mark. The regulations governing the use of a collective mark must accompany the application for registration of a collective mark.7 Furthermore, as per Rule 131(4) of the Trade Marks Rules, 2017 the regulations governing collective trademarks should specify:

  • the association’s name and object;
  • the details of members;
  • the membership conditions and the relation of each member with the group;
  • the people authorised to use the mark and their control over the use of the collective mark;
  • conditions for using the mark;
  • sanctions against misuse;
  • the procedure to deal with appeals against the use of the collective mark. 

The important considerations which must be assessed by an Examiner with respect to a registration application for a collective mark are:

  • an association of persons own the collective mark and not a partnership;
  • the collective mark is used and belongs to a group;
  • the collective mark may not be used by the association itself, but the members using the collective mark must comply with certain quality standards;
  • the collective mark should be indicative of a trade connection with the association who is the proprietor of the mark. 

Section 68 of the Trade Marks Act, 1999 prescribes additional grounds on the basis of which the registration of a collective mark can be removed from the register. These include:

  • the proprietor or the authorised user has caused the collective mark to mislead the public through the manner in which it has been used by them;
  • the proprietor has not complied with the regulations that govern the use of the mark. 

Collective Mark- A Case Study

A well-known case involving collective marks is the case of Chirimoya Cumbe8. Chirimoya is a native fruit of Peru and Ecuador. Cumbe is a valley in the Huarochiri province of Peru where the climatic conditions are favourable for growing chirimoya. The fruit produced in the Cumbe valley is of superior quality characterised by large fruit size, greater nutrient value, softer skin and low seed index, thereby making chirimoya from the Cumbe valley the most sought after in the world.

In 1997, a farmer named Matildo Perez hailing from a village community in Lima personally applied for registering the trademark “Chirimoya Cumbe” at the National Institute for the Defense of Competition and Intellectual Property of Peru (INDECOPI). The application for registration was rejected on the grounds that an individual cannot claim exclusive rights in generic names. Mr Perez again met the officials at INDECOPI seeking to register “Chirimoya Cumbe” as a trademark which would give the community in Lima exclusive rights with respect to the name “Cumbe”. 

The officials at INDECOPI clarified that the “Chirimoya Cumbe” is an appellation or title of origin and not a trademark per se. Furthermore, the word “Cumbe” is of Peruvian origin because Cumbe is a valley thereby representing a geographical region which gives the Chirimoya grown in that region a distinctive character. 

After lengthy deliberations between the INDECOPI officials and the people of Cumbe to arrive at a plausible solution, it was suggested that “Chirimoya Cumbe” should be registered as a “collective mark”. Thus, the people of Cumbe would be the owners of this collective mark and they would use the mark as per rules laid down by them. 

As of today “Chirimoya Cumbe” is characterised by a logo and is registered as a collective mark in the name of the village of “Santo Toribio de Cumbe”. Therefore, a collective mark gives small business enterprises a competitive edge and warrants protection to their goods. It also distinguishes the goods represented by a collective mark from those of others which accords greater economic benefit to the small scale producers and boosts the faith of clients in the goods sold under the said collective mark. 

Conclusion

From the above discussion, it becomes amply clear that collective marks is a species of trademark for goods/services that are owned by members of an association. Moreover, the mark creates an identity for the members in relation to the degree of quality, geographical origin and other features laid down by the association. A trademark serves to identify the origin of a particular mark i.e., to say the individual source of goods/services can be known. Whereas, on the contrary, a heterogeneous group of traders, who belong to the association that owns the collective trademark, can use a collective mark, instead of just one individual. 

Thus, collective trademarks are an effective tool for promoting products of a particular region that are peculiar to that region. A collective mark enhances the marketing of such products and cooperation among the local producers. It is when products of a particular geographic origin have a certain historical, cultural or social association with that place, collective trademarks come into existence. 

Therefore, a collective trademark is an embodiment of all the special features of goods/services of a particular origin, which are used to market the goods and benefit the producers. Collective marks are a cost-saving device which cut down on the cost of mark development and its marketing and advertising. Thus, a collective mark imparts a unique identity and recognition to the goods/services belonging to members of the association, making them widely popular and marketable. 


Endnotes

1.  https://www.wipo.int/sme/en/ip_business/collective_marks/collective_marks.htm (last visited Dec 9, 2019). 

2.  The Trade Marks Act, 1999 (Act 57 of 1999), s. 2(1)(g). 

3.  https://priyankakalha.com/Collective-Mark (last visited Dec 10, 2019). 

4.  The Trade Marks Act, 1999 (Act 47 of 1999), s. 61(1).

5.  The Trade Marks Act, 1999 (Act 47 of 1999), s. 61(2). 

6.  The Trade Marks Act, 1999 (Act 47 of 1999), s. 62. 

7.  The Trade Marks Act, 1999 (Act 47 of 1999), s. 63(1). 

8.  https://www.wipo.int/ipadvantage/en/details.jsp?id=2561 (last visited Dec 10, 2019). 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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