Main characteristic collective trademark is its ownership by an association of persons and its use in relation to goods that have common characteristics. In contrast, a regular trademark can belong to a legal entity or an individual. Both marks serve to individualize goods on the market and identify them from other manufacturers, but if in the first case it is for the purpose of preserving the interests of the association, then in the second it is for a legal or natural person.
In practice, we rarely encounter this type of trademark, and its registration has its own characteristics.
It should be noted that according to Art. 1510 of the Civil Code of the Russian Federation, “An association of persons, the creation and activities of which do not contradict the legislation of the state in which it was created, has the right to register a collective mark in the Russian Federation,” which is a trademark to designate goods that have common characteristics, produced and sold by persons included in this association. Moreover, each of these persons has the right to use it and their goods.
The copyright holder of a collective mark may be a legal entity and not have the status of a legal entity, since the legislation does not indicate the need for an association to have it, but registration of collective trademarks in relation to an association of persons who do not have this status is permissible.
To register a collective mark, it is necessary to submit a complete and correctly executed package of documents to Rospatent, including the Charter, which must indicate:
- name of the association, list of all persons included in the association and having the right to use TK (according to Article 1511 of the Civil Code of the Russian Federation)
- rules governing the activities of the association;
- the procedure and conditions for the use of collective technical knowledge and control over its use;
- purpose of registration;
- requirements for the characteristics of manufactured and sold goods;
- responsibility for violations of established rules.
If violations of the provisions of the Charter are detected, the penalties prescribed in the document may be applied. For example, if goods do not have uniform quality characteristics or other common characteristics, complete or partial early termination of the collective trademark is possible based on a court decision in accordance with clause 3 of Article 1511 of the Civil Code of the Russian Federation.
After passing the formal examination and substantive examination and Rospatent making a positive decision to issue a registration certificate with information about all participants of the association, information about it is entered into the State Register of Trademarks.
It should be noted that, if necessary, a collective trademark can be converted into a regular mark both at the application stage and after its registration. To do this, you need to provide the consent of all participants in the association.
Also among the documents it is necessary to submit an application for transformation of the application and a confirming document on payment of the state fee for registering a trademark.
Based on the results of consideration of the application, Rospatent makes a decision on its satisfaction or refusal. The priority and filing date of the application are retained when it is converted.
Collective trademarks are not registered so often, but nevertheless, in practice we can come across them. For example, among them are known “Borjomi” No. 899664, “Derevenkino” No. 712363, “Silver of Russia” No. 484309 (later transformed), “Chaikhona No. 1” No. 690343, etc.
In conclusion, I would like to add that along with the advantages of using a collective trademark, there are also disadvantages. Its significant disadvantages include:
- a very complex and labor-intensive process of preparing documents, taking into account all the information, which requires certain qualifications when preparing them;
- presence of additional requirements at the registration stage;
- additional responsibilities for monitoring compliance with all provisions of the Charter of the collective mark;
- the existence of the possibility of early termination of protection as a result of non-compliance with the provisions of the Charter;
- the impossibility of concluding licensing agreements and alienation agreements, and therefore receiving additional profit.
