COLLECTIVE TRADE MARK

The term ‘Collective mark’ is defined under Section 2(1)(g) of Trade Marks Act, 1999 as a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership with the meaning of the Indian Partnership act,1932) which is the proprietor of the trade mark those of others.  Collective Trade mark is dealt with Chapter VIII of the Act containing Sections 61 to 68.  Part II of the Trade Mark Rules, 2002 deals with special provisions for collective marks.

Article 7bis of the Paris Convention for Protection of Industrial Property makes it obligatory on a member country to accept for filing and  to protect the collective marks belonging to associations, who are generally association of producers, manufacturers, distributors, sellers or other merchants of goods, in accordance with the national law.   Our country is a member of the above convention.   Trade Marks Act, 1999 is in compliance with its obligations.

Section 61 provides that the provisions of this Act shall apply to collective marks subject to the provisions contained in Chapter VIII.   In relation to the collective mark to distinguishing the goods or service of one person from those of others shall be construed as a reference to distinguishing the goods or services of members of an association of persons which is the proprietor of the trade mark, from those of others.   Thus the entire definition of ‘trade mark’ applies to collective trade mark subject to the provisions contained in Chapter VIII.

Registration

Section 62 deals with the registration of a collective trade mark.   The two components of Section 62 are as follows:

• A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of the public;
• If it is likely to be taken to be something other than a collective mark and in such case the Registrar may require that the mark in respect of which application is made for registration comprise some indication that it is a collective mark.

Section 63 of the Act provides that an application for registration of a collective mark shall be accompanied by the regulations governing the use of such collective mark.  The regulation shall specify the persons authorized to use the mark, the conditions of membership of association and, the conditions of use of the mark, including any sanctions against misuse and such other matters as may be prescribed.

              The Registrar is having power to require that the mark contains some indication that it is a collective mark.  Rule 25 (7)(a) of the Trade Marks Rules, 2002 provides that the application for registration for a collective Trade mark is in Form No.TM – 3.  Rule 128 (1) provides that an application for the registration of a collective mark for goods or service under Section 63 (1) shall be made to the Registrar in Form TM-3, Form TM – 4 or in the case of a single application Form TM-66 or from TM – 67, as the case may be, in triplicate and shall be accompanied by five additional representations of the mark.   The draft regulations to be submitted with the application shall be in triplicate and shall be accompanied by Form TM – 49.

The references to acceptance of an application for the registration of a trade mark shall be substituted by references to authorization to proceed with the application.

Regulations

The draft regulations shall specify-

• The persons authorized to use the mark;
• The conditions of membership of the association;
• Conditions of use of the mark;
• Sanctions against misuse.

The Regulations shall include the details as required under Rule 128-

• The name of the association of persons and their respective office addresses;
• The object of the association;
• The details of members;
• The conditions for membership and relation of each member with the group;
• The persons authorized to use the mark and the nature of control the applicant exercise over the use of the collective mark;
• Conditions governing the use of the mark including sanctions;
• The procedure for dealing with appeals against the use of collective mark;
• Such other relevant particulars as may be called for by the Registrar.

Acceptance of application and regulations

Section 64 provides that if it appears to the Registrar that the requirements for registration are satisfied he shall accept the application together with the regulations, either unconditionally or subject to such conditions including amendments of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted shall notify the regulations.

Section 65 provides that the regulations shall be open to public inspection in the same way as the register as provided in Section 148.

Examination and hearing

The applicant shall submit to the Registrar along with his application a statement of case setting out the grounds on which he relies in support of the application.  Such case shall be furnished in triplicate.   The Registrar shall cause an application to be examined, in the first instance, as to whether it satisfies the requirements of the Act and Rules and issues a report to the applicant.   The Registrar shall not refuse an application or accept the application subject to any conditions or impose amendments or modifications to the application or to the regulation without giving the applicant an opportunity of being heard and the procedure thereto shall be regulated by the provisions of Rule 38 (4) to 42.

Opposition

On acceptance of the application, the Registrar shall cause the applications to be advertised in the Journal.   In any case of doubt with regard to proceedings on the opposition to the registration of a collective trade mark any party may apply to the Registrar for directions.

Amendment

An application registered proprietor of a collective trade mark for any amendment to the regulation shall be made in Form TM – 42.  If the Registrar accepts any such amendment he shall advertise such application in the Journal and further proceedings in the matter shall be governed by Rules 47 to 57.

Infringement

Section 67 provides that in a suit for infringement instituted by the registered proprietor of a collective mark as plaintiff the Court shall take into account any loss suffered or likely to be suffered by authorized users and may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any pecuniary remedy of such authorized users.

Removal of registration

Section 68 provides that the registration of a collective trade mark may also be removed from the register on the ground-

• That the manner in which the collective trade mark has been used by the proprietor or authorized user has caused it to become liable to mislead the public as a collective mark; or
• That the proprietor has failed to observe, or to secure the observance of the regulations governing the use of the mark.

The application for removal of a collective mark from the register including on any of the grounds above, shall be made in Form No. TM – 43 and shall set forth the particulars of the grounds on which the application is made.