The Collective Trademark is a distinctive sign that protects the consumer, distinguishing the products or services of multiple undertakings by their specific origin, quality, or nature.
What is a collective trademark?
It is a distinctive sign whose function is to guarantee the origin, characteristics, and qualities of a product through appropriate controls on the goods of the producers (or traders) who have been granted use by the owner. It is usually requested by a group of consortium members for the production of a product or service according to specific regulations.
It is a different distinctive sign compared to an individual trademark, which as a rule distinguishes the products or services of a specific company from those of the competition.
Some examples:
"Grana Padano": one of the most famous collective trademarks, which marks the flavorful Italian cheese. Only companies that follow the production specifications have the possibility to use it on their products.
"Bancomat": this is also an example of a collective trademark, usable by multiple companies provided they comply with the regulations imposed by the owner of the distinctive sign at the time of filing.
"Pure Virgin Wool": used in the presence of a product that follows certain standards expressed in the regulations for the use of the collective trademark.
What does Art. 11 of the Codice della Proprietà Industriale say?
Article 11 of the Codice della Proprietà Industriale (CPI - Industrial Property Code) provides us with the legal definition of a collective trademark in 5 points.
- Entities performing the function of guaranteeing the origin, nature, or quality of certain products or services may obtain registration for specific marks as collective trademarks and have the power to grant the use of such marks to producers or traders.
- Regulations concerning the use of collective trademarks, controls, and relative sanctions must be attached to the registration application; amendments to the regulations must be communicated by the owners to the UIBM (Ufficio Italiano Brevetti e Marchi - Italian Patent and Trademark Office) to be included among the documents attached to the application.
- The provisions of paragraphs 1 and 2 are also applicable to foreign collective trademarks registered in their country of origin.
- By way of derogation from Article 13, paragraph 1, a collective trademark may consist of signs or indications which may serve in trade to designate the geographical origin of the products or services. In such cases, however, the UIBM may refuse registration, by a reasoned decision, when the requested marks may create situations of unjustified privilege or otherwise cause prejudice to the development of other similar initiatives in the region. The UIBM has the power to request the opinion of public administrations, categories, and interested or competent bodies in this regard. The registration of a distinctive sign consisting of a geographical name does not authorize the owner to prohibit third parties from using the name itself in trade, provided that such use conforms to the principles of professional fairness and is therefore limited to the function of an indication of provenance.
- Collective trademarks are subject to all other provisions of this code insofar as they do not conflict with their nature.
Who can file a collective trademark?
Generally, by virtue of its characteristics, it is requested by an institutional or associative body (for example, industrial or agricultural producers), but it can be requested, by law, by anyone.
Once registration of collective trademarks is obtained, the owners may grant their use, according to the rules of their respective regulations, to producers and traders.
How is it filed?
In order to register a collective trademark, it is necessary to file, together with the distinctive sign, the regulations concerning its use, controls, and relative sanctions.
Verification of the regulations for use by the Office
The statutory requirement for the filing of the regulations for use, controls, and sanctions tasks the Office where registration is requested with a verification that is not limited to the subjective profile of abstract compatibility with the guarantee function. It extends to an objective level of assessment regarding the effectiveness of such function, which must be reflected in the rules drafted by the applicant for the use of the distinctive sign, for monitoring compliance with these rules by users, and for sanctioning any violations.
Guarantee function
Even after the registration of the trademark, the guarantee function that the owner is called upon to perform is of fundamental importance: it is ensured by a specific sanctions regime that punishes with revocation (forfeiture) any failure by the owner to implement the controls regarding the correct utilization of the sign by its users.
Difference between collective trademark and individual trademark
The difference from an individual trademark lies in the phenomenon of dissociation between ownership of the distinctive sign and its use, in the sense that the entity requesting and obtaining the registration does not coincide with the user of the same. This dissociation leads to significant repercussions regarding legal protection, in the sense that in case of trademark abuse by third parties, the owner is entitled to bring a trademark infringement action, but not an action for unfair competition pursuant to Art. 2601 of the Civil Code.
Revocation of the trademark
There are 3 grounds for revocation (decadenza) of a collective trademark:
- the hypothesis just mentioned, namely the omission by the owner of the controls provided for in the Regulations for use;
- use of the trademark that misleads the public as to the "character or meaning of the trademark itself";
- amendments to the regulations that conflict with the general provisions on the requirements for the Regulations for use.
What are the advantages of a collective trademark?
Let's look below at the advantages of the protection offered by the registration of this type of distinctive sign.
Firstly, for the owner who requests and then grants third parties the correct use of the trademark, the main advantage consists in being able to utilize an effective tool to guarantee the quality and origin of goods produced within its territory (if, for example, it is a local authority) or by its associates or consortium members;
Secondly, for the licensee companies that use it, the advantage consists in the possibility of exploiting the trademark's recognizability among consumers, inducing them to prefer products or services that carry it.
Ultimately, collective trademarks are valid tools for both protection and communication.
Finally, it is a communication tool because it is capable of strengthening the communication and marketing policy of a group of producers/entrepreneurs.