Understanding Collective and Certification Trade Marks in New Zealand
Trade marks are crucial for protecting your brand and distinguishing your goods or services in the marketplace. While standard trade marks identify the origin of goods or services from a single business, New Zealand IP law also recognises two other important types: collective marks and certification marks. This article provides an overview of these specialised trade marks, and their significance in New Zealand.
What is a Trade Mark?
Generally, a trade mark serves as a “badge of origin” for your business, linking it to the goods and/or services you provide. It can be a word, phrase, symbol, shape, colour, smell, sound, or a combination of these. Owning a trade mark grants you exclusive rights to use and profit from it and allows you to take action against others who infringe upon your mark. You can read more about trade mark protection in our ‘Know How’ article here.
Collective Marks
A collective mark is a specialised type of trade mark owned by an association whose members use the mark to identify their goods or services as originating from that association. Unlike a standard trade mark that points to a single entity, a collective mark indicates origin within a group. It is easy to think of it as a mark that signifies membership in a particular organisation or collective.
Key characteristics of collective marks:
- Indicates membership: The primary function of a collective mark is to distinguish the goods or services of members of the owning association from those of non-members.
- Owned by an association: The trade mark is registered in the name of a collective association. This association must be constituted for the joint benefit of its members, and its membership must be ascertainable at any time. Examples of such associations include cooperatives or unions such as HASANZ which is the umbrella organisation representing workplace health and safety professions in New Zealand.
- Used by members: Members of the collective association have the right to use the collective mark in relation to their goods or services. However, they cannot prevent other members from also using the mark.
- Registration process: The application process for a collective mark is similar to that of a standard trade mark, and it must meet similar eligibility criteria. Importantly, the application must clearly indicate that it is for a collective mark and include a declaration that the applicant is a qualifying collective association.
- Benefits: Collective marks can help build customer trust and goodwill for the entire association and its members. Customers who trust one member using the mark may be more inclined to trust other members as well, expecting similar quality standards.
Certification Marks
A certification mark, on the other hand, is a sign that indicates that the goods or services bearing the mark have been certified by the owner of the mark as possessing certain defined characteristics. This certification relates to aspects such as origin, material, mode of manufacture, quality, accuracy, performance, or other characteristics.
Key characteristics of certification marks:
- Indicates certified characteristics: Unlike standard or collective marks that indicate origin, a certification mark signifies that specific standards or characteristics have been met.
- Independent certification: The certification must be performed by an independent organisation that owns the certification mark. Crucially, the owner of a certification mark cannot trade in the goods or services being certified or own a standard trade mark for similar goods or services. This ensures impartiality in the certification process.
- Registration requirements: The application process is similar to standard trade marks but with additional requirements. Applicants must provide draft regulations governing the use of the certification mark for the Commissioner of Trade Marks’ approval. These regulations must set out the objective criteria for certification and must not be discriminatory, allowing any qualified trader in New Zealand to apply for authorisation to use the mark.
- Examination process: When examining a certification mark application, the Intellectual Property Office of New Zealand (IPONZ) considers not only the standard grounds for refusal but also additional factors. These include whether the mark should indicate that it is a certification mark, the competency of the applicant to certify the goods or services, the satisfactoriness of the draft regulations, and whether the registration would be in the public interest.
- Public accessibility: Once the draft regulations are approved, they are made available for public inspection. Furthermore, the regulations should require the owner to maintain a public register of authorised users of the certification mark.
How we can help
Understanding the nuances of collective and certification trade marks can be complex. Whether you are an association looking to protect the collective identity of your members or an organisation aiming to establish a mark that certifies specific standards, our experienced legal team at Duncan Cotterill can provide expert guidance. We can assist you with:
- Determining the most suitable type of trade mark for your needs.
- Navigating the application and registration process with IPONZ.
- Drafting and reviewing the necessary regulations for certification marks.
- Advising on the rights and responsibilities associated with collective and certification marks.
- Addressing any potential issues or disputes related to these specialised trade marks.
Special thanks to Partner Kieran O’Connell and Solicitor Christian Tucker for preparing this article.
If you have any questions about collective and certification trade marks, please get in touch with a member of our intellectual property team.
Disclaimer: The content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.
