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THE NEEDS OF THE COLLECTIVE OUTWEIGH THE NEEDS OF THE FEW OR THE ONE: A look at Collective Trade Mark Applications

Taking a final look into the less common trade mark applications this article discusses collective trade marks and how they may be beneficial in providing additional protection to your brand in Australia. Defensive, series, certification and collective trade marks are less common trade mark applications, but provide unique and strategic protection which may supplement existing protection and/or provide additional protection. As seen below, of the 882,076 registered marks in Australia, 434 are collective marks. In this fourth article we look at collective trade mark applications, when they are useful, and how they work.

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What is a Collective Trade Mark Application?

Section 162 of the Trade Marks Act 1995 (Cth) (‘TMA’) defines a collective trade mark as a sign used, or intended to be used, in relation to goods or services dealt with or provided in the course of trade by members of an association to distinguish those goods or services from goods or services so dealt with or provided by persons who are not members of the association.

Requirements for Collective Trade Mark Application in Australia

Unlike other trade mark applications and in accordance with section 164 of the TMA, collective trade mark applications must be filed in the name of an association. The Macquarie Dictionary definition of an association is ‘an organisation of people with a common purpose and formal structure’. While some associations may be incorporated and therefore a separate legal entity, others may remain unincorporated and not a separate legal entity. Contrary to other types of trade marks, the Applicant of a collective trade mark may not be a separate legal entity.

Subject to the rules of the association, as a member of the association you have the right to use the trade mark in connection with the goods/services designated under the registration. However, you do not have the right to prevent another member of the association from using the mark in connection with the goods/services designated under the registration.

As a word of caution, in contrast to other trade mark applications, collective trade mark applications cannot be assigned or transmitted. Accordingly, the timing of if/when the association becomes incorporated should consider the effects on any collective trade mark registrations owned by the association.

Risks v. Benefits of Collective Trade Marks

Collective trade marks may have benefits for professionals or hobbyists alike, in that they can control who has access to use a trade mark without needing to utilise separate licensing agreements. Unlike certification marks, there is no set of rules which must be provided to determine who is or is not allowed to use the mark. Further, the Australian Consumer and Competition Commission is not involved in the process.

While the extent of damages may be considered from each of the members of the association, a legitimate risk is the difficulty with enforcement by the association, particularly in the case of unincorporated associations. Furthermore, associations may have limitations on who they can and cannot reasonably exclude, which may limit the specificity with whom you may allow or prevent from using the mark.

Real Life Example

Turning to Australian trade mark registration no. 1959122 for

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in relation to various health and lifestyle counselling services.

This is an example where the broader community of psychotherapists have a legitimate interest in ensuring that those who use the mark meet a set of self-governing rules. To this end, the association may implement ongoing rules and requirements to maintain your membership as part of the association. By controlling membership, you effectively control who does and does not have the right to use a mark. Alternatively, if done through licensing agreements you would be required to amend and/or abide by each individual licensing agreement.

By having the above registration, the association of certified practicing psychotherapists can control their reputation and prevent psychotherapists with insufficient or up-to-date qualifications from providing services under the trade mark. The continued control and build up of reputation in the mark will ensure that members of the general public looking for the services of a psychotherapist can be confident that the providers bearing this mark are accepted within the profession as having the minimum required for the title.

Conclusion

No two scenarios are identical and what is or will be beneficial for you, your company, your association, etc. will really be determined by a number of surrounding circumstances. Speaking with a trade mark attorney can not only rule out certain types of trade mark applications, but also assist in strategising for your current situation and future potential. If you are interested in a collective trade mark application or you are unsure whether one is right for your association, contact a Trade Marks Attorney at Michael Buck IP for advice, preparation, and filing of your trade mark application.