The collective mark and the EU certification mark - governed by the European Union Trademark Regulation (EUTRM, EU Reg. 2017/1001) - have a high potential still unexpressed, in the agri-food chain.
The requirements of novelty, legitimacy and distinctive capacity to which trademark law responds also apply to these signs which are able to distinguish products and services that follow shared logic.
1) Collective trademark
The associations from 'manufacturers, producers, service providers or traders who, in accordance with the legislation applicable to them, have the capacity, in their own name, to hold rights and obligations of any kind, to enter into contracts or perform other legal acts and to sue, as well as legal persons under public law'may submit a request for registration of an EU collective trademark (EUTRM, art. 74.1. See note 1).
Collective brands 'they can be used to designate the geographical origin of the products or services'. However, without authorizing their owners to prohibit third parties from using geographic references in the trade, in accordance with 'the habits of loyalty in the industrial or commercial field; in particular, such a trademark must not be opposed to a third party authorized to use a geographical name'(EUTRM, art. 74.2).
1.2) Regulations of use
Within two months from the presentation of the application for registration, the applicant must file the regulations for the use of the collective mark, where the following must be indicated:
- persons authorized to use the trademark,
- conditions of membership of the association and, where applicable,
- conditions for the use of the trademark, including penalties.
The rules of use of a collective trademark that includes geographical references'authorizes persons whose goods or services originate from the geographical area in question to become members of the association that owns the trade mark'. (art. 74)
2) Certification mark
2.1) Certification and neutrality
The EU certification mark - so designated during the filing of the application - it is valid to 'distinguish the products or services certified by the trademark owner', with respect to non-certified products and services, in relation to:
- procedures for manufacturing products (or providing services),
- quality, accuracy or other characteristics, 'with the exception of geographic origin'(EUTRM, art. 83.1).
Any natural or legal person - 'including institutions, authorities and public law bodies'- can apply for an EU certification mark, under a condition of neutrality. That is to say that the owner of the trademark can certify the products and services that other subjects use in their respective activities, but must not carry out an activity that involves the supply of the products or services subject to certification (EUTRM, art.83.2).
2.2) Regulations of use
The question EU certification mark must be accompanied, within two months following its presentation, by its regulations for use. It must specify:
- the persons authorized to use the trademark,
- the characteristics that the trademark must certify,
- the methods for verifying the characteristics and monitoring the use of the trademark,
- the conditions of use of the trademark, including penalties.
3) EU trademarks and national trademarks
Lo EU trade mark 'has a unitary character. It produces the same effects throughout the Union: it can be registered, transferred, be subject to renunciation, a decision to forfeit the rights of the owner or to make it null and void, and its use can only be prohibited for the entire Union.'. (EUTMR, art.1.2).
The dir. EU 2015/2346 - implemented in Italy with Legislative Decree 15/2019, which amends the Industrial Property Code (Legislative Decree 10.2.05 n.30) - has in turn updated the provisions on national trademarks (2,3) . The regulation of the EU trademark is thus, in fact, re-proposed at the level of individual Member States. (4)
4) Provisional conclusions
Both EU trademarks, collective mark and certification mark, allow operators to define the shared rules to characterize a product or service and protect the distinctive sign associated with it. They can also be used as 'umbrella brands', guaranteeing a set of products and services. (5) Also in relation to the territories, only in the case of the collective trademark. (6)
Reduce the scope of protection of the trademark to a single national territory is undoubtedly cheaper - since the registration costs are lower, as well as the risks of oppositions that involve additional costs - but exposes its owner to the risk of 'brand grabbing'which precludes its use in other member countries, should others decide to register even an identical trademark there.
Cover image from Fair World Project, NGO that promotes organic, fair and solidarity chains through third party certification
(1) EU Reg. 2017/1001, on the European Union trade mark. https://bit.ly/3CCWcwH
(2) EU Dir. 2015/2436, on the approximation of the laws of the Member States relating to trade marks. Consolidated text as of 23.12.15 on Europa Lex, https://bit.ly/3N19E1W
(3) Legislative Decree 20.2.19, n. 15. Implementation of Directive (EU) 2015/2436 on the approximation of the laws of the Member States relating to trademarks as well as for the adaptation of national legislation to the provisions of Regulation (EU) 2015/2424, amending the regulation on the Community trademark. Text updated to 30.12.21 on Normattiva, https://bit.ly/3Ij73gt
(4) The industrial property code in Italy has also hypothesized the possibility of registering an Italian certification mark also to certify the geographical origin of products and services (art. 11-bis, paragraph 4. See Legislative Decree 10.2.05. 30 n. 30.7.21, text updated on XNUMX on Normattiva, https://bit.ly/3qeMVWr). However, this rule is in contrast with the EU rules that prohibit the use of any geographical reference both in the sign, in the list of products and services, and in the regulations for use (EU regulation 2017/1001, art.83.2) . And it is therefore unconstitutional and ineffective
(5) Dario Dongo. Labels and advertising, principles and rules. Il Sole 24 Ore - Edagricole (Bologna, 2004). ISBN 8850651228
(6) Geographical collective marks can also be used 'together with the protected designation of origin'(DOP)'or to the protected geographical indication'(IGP. V. Reg. EU 1151/2012, art. 12)