Wednesday, 26 March 2014

Associations and marks: which is the best approach?

This blogpost has been composed by Sally Cooper, but is posted on her behalf by Jeremy

NewAssociation Limited (“NA”) provides a logo and explains its business plan which involves both (i) NA engaging in the manufacture and sale of (a variety of) goods to which the logo is attached and (ii) NA engaging in licensing to (carefully selected) others who want to use the logo.

NA has great faith in the attraction of its logo and experience in selling low-price merchandise (so T-shirts, mugs, keyrings etc). NA has no experience of selling luxury goods but (back to the power or attraction) great faith that it can find established businesses prepared to pay to use its logo. There may even be a time (says NA) when it can stop its own activity of manufacture and sale and rejoice in being an
Association devoted to allowing others to use its logo.   

I like the logo. I am sympathetic. And I need time to think.

That is, to think about “collective marks” which are marks “distinguishing the goods or services of members of [an] association [which is the proprietor of the mark] from those of other undertakings” [section 49 Trade Marks Act 1994].

I see that the UK Trade Mark Registry’s Manual of Trade Marks [Chapter 4] sets out what I learned at Law School: viz:  
“ [Certification and] collective marks differ from “ordinary” trade marks because an ordinary trade mark is one that distinguishes the goods and services of one particular trader (a single trade source) from those of other traders”.
 I am pleased that the Manual sorts out a fuzzy memory: certification marks (used to indicate that the goods in connection with which the mark is used are certified in respect of origin etc) are (says the Manual) “not used by the proprietor of the mark”: however “not used by the proprietor of the mark” isn’t a consideration in the context of collective marks.

I remind myself of NA’s long-term aspiration of being an Association devoted to allowing others to use its logo.

Do I recommend only filing an Application for an “ordinary” trade mark ? Or do I set off into the (largely unknown) territory of an Application for a collective mark ?

Fortunately (grateful thanks to IPKAT) I then read the decision of His Honour Judge Hacon in The National Guild of Removers and Storers Ltd v Derek Milner t/a Intransit Removals and Storage [IPEC: 18 March 2014, IPKat here].

From its final paragraphs, I learn two things. 

First, I see that the claimant in the case shared similar uncertainties. The judgment sets out that before filing an Application “[the claimant] professed no expertise whatever in the law of trade marks and said that [ it] was entirely guided by the IPO" / “ [the claimant] must have discussed the alternative possibilities of applying for a collective mark or a trade mark, but in any event [ it] would have gone with whatever [ the IPO] advised [ regardless of fees] “. The outcome of discussion with the IPO was that the claimant became the proprietor of an “ordinary” trade mark rather than a collective mark.

Secondly, I learn the opinion of the Judge that, since the Trade Marks Act 1994 was drafted and enacted , “the view on how a trade mark may be used has been updated and has altered”; indeed it has been updated and altered to the extent that His Honour says 
“I find it hard to think of a circumstance in which an association entitled to apply for a collective mark could not avoid the cost and inconvenience of those provisions [ section 49 Trade Marks Act 1994 / Schedule 1], and indeed evade the safeguards to the public they afford, by applying instead for a trade mark".
 I shall recommend an Application for an “ordinary” trade mark: if you disagree – there’s the Comment box!

2 comments:

Roland Wilding said...

The fact that ITMA has chosen an ordinary Trade Mark which is used under licence by its members says volumes.

NCMA is registered as a collective mark.
They have recently re-branded as PACEY
which as it happens is registered as an ordinary mark. They might need to rely on the members of NCMA as was impliedly accepting a licence to use PACEY when they renewed their subs. I would have got members to explicitly agree to this on renewal.

Collective marks are probably at their best for something like the Church of England or Association of Farmers Markets or Vintage Car clubs.

The All England Lawn tennis association has taken things one step further and parked all registered (ordinary) marks in the name of a limited company - presumably with
closed shareholding and secret agreement.

Anonymous said...

ITMA has chosen to register trade marks to protect its OWN activities. To the extent that it was in the business of allowing members to use the logo on their websites, it would need to register a collective mark as CIPA has done. Individuals are members of ITMA not firms so it is not directly equivalent