Collective mark

A collective mark is a trade mark designated as such when filed and capable of distinguishing the goods or services of the persons authorised to use it under its regulations governing use. It is governed by Articles L. 715-6 et seq. of the French Intellectual Property Code, which transpose Directive (EU) 2015/2436, and, at Union level, by Articles 74 et seq. of Regulation (EU) 2017/1001 for the EU collective mark. It guarantees not a quality but the user’s membership of a particular group.

Owners and regulations governing use

A collective mark may be filed by associations or groups with legal personality representing manufacturers, producers, service providers or traders, and by legal persons governed by public law. The application must be accompanied by regulations governing use, which specify the persons authorised to use the mark, the conditions of membership of the group and the conditions of use of the sign, and which are published with the mark. The regulations are a constituent element of the title, and any amendment must be entered in the register to be enforceable against third parties. The group may make use subject to a membership fee or to compliance with professional rules, but the regulations may not exclude members in a discriminatory manner.

Specific conditions of validity

The collective mark is subject to the ordinary absolute grounds for refusal, with one notable exception. A sign or indication which may serve to designate the geographical origin of the goods or services, in principle excluded for descriptiveness, may constitute a collective mark. This opening is tempered by a limit, since a collective mark so constituted does not entitle its owner to prohibit a third party from using the geographical name in accordance with honest practices in industrial or commercial matters. The application is also refused if the regulations governing use are contrary to public policy or if the mark is liable to mislead the public as to its character or significance, in particular if it is likely to be taken to be something other than a collective mark.

Exercise and loss of the right

The owner brings infringement actions, and authorised persons may in principle sue with its consent or intervene to obtain compensation for their own loss. In addition to the ordinary grounds for revocation, the owner is liable to revocation where it fails to take reasonable steps to prevent use of the mark incompatible with the regulations governing use, where the way in which the mark has been used by authorised persons has made it misleading, or where an amendment to the regulations has been entered in breach of the rules. The collective mark differs from the guarantee mark, which certifies characteristics of goods and whose owner must remain unconnected with their supply.

Key points

The collective mark signals membership of a group and is filed together with regulations governing use that determine its beneficiaries and conditions. It may, by way of exception, consist of a geographical name, without entitling its owner to prohibit fair use by third parties. Check the applicant’s standing, draft precise and non-discriminatory regulations, keep them up to date on the register and monitor members’ use of the mark to avoid revocation.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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