Zuykov & Partners - Russia
Collective trademarks are subject to the same regulations as individual trademarks, including the same conditions of eligibility, legal protection and methods of protection, among other things, which are outlined in Articles 1510 and 1511 of the Russian Civil Code. Even without referring to these texts, the very term ‘collective trademark’ indicates that this is a designation owned by several entities.
However, a closer look at civil legislation highlights a number of distinct features of collective trademarks.
A designation may be registered by an association only
Under legal norms there is an indication that only an association can register a collective trademark. As such, collective trademarks can be registered by an association of individual entrepreneurs and/ or legal entities.
Despite the fact that all entities of the association can use the designation, the rights holder is exclusively the association. It is the association that has the right to protect the collective trademark from unlawful use by third parties and to appeal to the judicial authorities to suppress such acts. Among other things, the association is entrusted with a control function to observe the quality indicators of goods produced by the participants.
The mark is used to designate the goods produced or sold only by persons belonging to this association
In addition to this provision, the legislature limits the turnover of a collective trademark, indicating that it is impossible to alienate or grant the right to use the mark under a licence agreement.
The goods on which the designation is used must be of a uniform quality or share other common characteristics
In this case, the direct requirement to maintain quality indicators of products emphasises the importance of a collective trademark as a guarantor of product quality, whereas individual trademarks are primarily intended for the individualisation of goods. Perhaps, for this reason, there is no possibility to transfer the rights under a licence agreement. Thus, the legislature limits the number of manufacturers in order to control the quality of the manufactured products.
Peculiarities of the registration and use of collective trademarks
According to Article 1511(1) of the Civil Code:
An application for the registration of a collective trademark (application for a collective trademark) filed with the federal executive authority on intellectual property shall be accompanied by a charter of a collective trademark, which must contain:
- the name of the association that is authorized to register the collective mark in its name (the right owner);
- a list of persons having the right to use this collective trademark;
- the purpose for the registration of this collective trademark;
- a list of and the common characteristics of quality or other general properties of the goods that are to be designated by this collective trademark;
- the conditions for the use of the collective trademark;
- the procedures for controlling the use of the collective trademark;
- provisions on responsibility for violations of the charter of the collective trademark.
Thus, to register a designation as a collective trademark, it is necessary to draw up, accept and present to the Russia Patent and Trademark Office the charter of the collective mark. In addition, the association, according to the contents of the charter, has additional responsibilities to control the use of the sign. Persons that use a collective trademark in violation of the charter may be subject to liabilities described in the document.
Article 1511(3) of the Civil Code describes cases of early termination of a collective trademark. Where such a designation is used in relation to goods that do not possess the common characteristics of quality or other general properties, protection of the mark may be terminated prematurely in full or in part based on a court decision.
Collective trademark registration: pros and cons
Obtaining a collective trademark can be an excellent alternative to obtaining an individual trademark in the following cases:
- A number of organisations work closely and intend to produce products using a single, unified means of individualisation.
- The participants of the association do not want to use the trademark of one of the manufacturers under a licence agreements.
- The participants of the association want equal powers over the use of the trademark, since the rights holder will be the association rather than its members.
However, despite these advantages, the number of registered collective trademarks remains small for the following reasons:
- Such designations are subject to additional requirements at the registration stage.
- The registering association is entrusted with observing the charter of the collective mark, as well as maintaining the quality of the manufactured goods.
- The transfer of the designation is limited, as licensing and alienation agreements are prohibited.
- There is a risk of early termination of protection as a result of non-compliance with the quality requirements of the manufactured goods.