‘Trade marks by association’ – a review of collective trade marks

Many associations are not aware that the Trade Marks Act 1995 (Cth) (Act) provides for a type of trade mark registration exclusively for their use – the collective trade mark. 

In this article, we provide an overview of this rare species of trade mark and the benefits it can provide.  

What is a collective trade mark?

A collective trade mark is one example of a non-standard species of trade mark, other examples include certification trade marks and defensive trade marks.

A collective trade mark is a sign used, or intended to be used, in relation to goods and/or services dealt with or provided in the course of trade by members of an association to distinguish their goods or services from those of non-members.

Examples of collective trade marks currently registered on the Australian Trade Marks Register include:

• WAAFL in the name of the Western Australian Amateur Football League Incorporated;
  
  
• YWCA in the name of YWCA Australia; and
  
  
• THE AUSTRALIA INTERNATIONAL OLIVE AWARDS in the name of Australian Olive Association Ltd. 

There are some conceptual similarities between collective trade marks and certification trade marks. However, the key difference between those two types of marks can be explained quite simply – a certification trade mark indicates that the goods and/or services meet certain standards, or possess a particular characteristic(s), whereas a collective mark identifies that the goods and/or services originate from an ‘association’. 

Collective trade marks can only be owned by ’associations’

The key requirement for a collective trade mark is that it must be filed in the name of an association (either incorporated or unincorporated). 

An ‘association’ is not defined in the Act, however the Trade Marks Manual of Practice and Procedure provides the Macquarie Dictionary definition as “an organisation of people with a common purpose and having a formal structure”.  

Incorporated associations have a distinct legal personality (meaning they can sue and be sued), and are incorporated pursuant to state or territory based legislation. Filing an application in the name of an unincorporated association may create potential difficulties for enforcement.  

A consequence of the requirement of ownership by an association is that collective marks cannot be registered to individuals or companies.  

An application to register a collective trade mark must otherwise meet all of the registrability requirements of a standard trade mark.  

Key benefits of collective trade marks

Collective trade marks can be a helpful tool for associations, and there are a number of reasons why a collective trade mark application might be preferred over a standard trade mark application, including:

• Any member of the association may use the mark, which removes the need for formal licence agreements. That being said, it is beneficial for an association to set rules around the use of the collective trade mark, to ensure it is used by members appropriately.
  
  
• Unlike certification marks, rules set around the use of a collective trade mark do not need to be approved by the Australian Consumer and Competition Commission. Importantly, a member of the association cannot prevent another member from using the mark, unless that use does not comply with the association’s rules.
  
  
• A claim for financial relief in an infringement action can take into account the damage or loss suffered by each individual member of the association. 

A potential downside, however, is that a collective trade mark cannot be assigned or transmitted. This is not the case for standard trade marks, and so associations may find this limitation to be a disincentive.

Despite these potential benefits, collective trade marks remain an underutilised part of the Australian trade marks system. At the time of writing, there are only 391 collective trade marks registered in Australia (out of a total of almost 800,000 registered marks). Interestingly, there are 174 pending marks which have received adverse examination reports. This is a reminder that any associations considering filing a collective trade mark should ensure that they meet the requirements for this type of application, prior to filing.