The same sign may be filed simultaneously as a collective and as an individual trademark, depending on the intentions of use of the trademark by its owner. But filing a sign as an individual trademark and using it as a collective trademark may be a problem.
That is the issue of the decision of the European Court of Justice (ECJ) ruling on whether a label of quality, namely a sign intended to guarantee the material used in the goods, their quality or manufacturing process, is capable of constituting an individual EU trade mark (ECJ, 8 June 2017, Case C‑689/15 Gözze v. VBB).
Whereas an individual trademark may have different functions including that of guaranteeing the quality of goods, it must necessarily fulfil the essential function of a trade mark, namely guaranteeing the identity of origin of the marked goods or services to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin.
In the present case, the association VBB, exercising various activities linked to cotton, filed the individual trademark “cotton flower” for textiles, and concluded license agreements with affiliated undertakings, allowing them to use the mark only for goods made from good-quality cotton fibers. If compliance with this commitment may be checked by the licensor, VBB remains external to the production of goods by its licensees and is not responsible for those goods either. VBB only certifies the quality of the raw material used, but not the quality of the goods bearing the trademark.
In such circumstances, the Court considered that the trademark had not been genuinely used and that VBB was not entitled to prevent a third party to use it.
Each type of marks has its own function, and VBB should consider to refile its trademark as from 1st October 2017 as a EU certification mark, which seems the most suitable IP title to protect the association’s interests.
Indeed, Regulation 2015/2424 inserted Article 74a into Regulation No 207/2009, which is worded as follows:
“1. An EU certification mark shall be an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.
- Any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified.”
Should this case have concerned a French trademark, the trademark owner could have added to the registration rules governing the use of the trademark. This addition to the registration would have automatically transform an individual trademark into a collective trademark and the trademark would have been saved.
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