Collective trademarks and certification trademarks

There are two special kinds of trademarks that do not serve as individual trademarks: collective trademarks and certification trademarks. These are signs that do not distinguish the products and services of a specific company, but which different companies can use for their products or services.

As is the case for individual trademarks, there is no Belgian system of collective or certification trademarks, but only a Benelux system. An application must, therefore, be submitted to the Benelux Office for Intellectual Property (BOIP) in The Hague and will result in a Benelux collective or certification trademark being granted. The application procedure is very similar to the one for an individual Benelux trademark.

In addition to Benelux trademark law, there is also the possibility of registering a European Union collective or certification trademark in the European Union trademark system.

Please note, a collective or certification trademark should not be confused with geographical indications, traditional specialties guaranteed or other quality labels.

Collective trademarks

Under the new system that has been in force since 1 March 2019, a collective trademark is a trademark used by the members of an association. The holder of the collective trademark must, therefore, be an association or a legal person governed by public law. A collective trademark indicates the commercial origin of certain goods and services, as it serves to demonstrate that the goods or services in question come from a member of that association. Collective trademarks may be used to foster consumer confidence in the products or services offered under the collective trademark. They are often used to identify the products or services of producers who have similar interests. It is typically a trademark for associations of manufacturers, producers, service providers or traders, for example a group of farmers who are active in a given region.

As regards the conditions for protection, the content of the right, the protection of the right against infringement and the end of the right, collective trademarks are subject to the same rules as individual trademarks, with the exception of the following:

• The holder must be an association or a legal person governed by public law. This holder will grant licenses to use the trademark to the members of this association.
• A collective trademark may designate a geographical origin. Nevertheless, such a collective trademark does not entitle the holder to prohibit a third party from using the signs or indications in the course of trade, provided that the third party uses them in accordance with honest practices in industrial or commercial matters. In particular, this kind of trademark may not be invoked against a third party entitled to use a geographical name.
• The filing of collective trademarks must be accompanied by ‘regulations governing use’. These regulations must specify the persons authorised to use the trademark, the conditions of affiliation to the association and the conditions of use of the trademark, including penalties. In the case of a collective trademark designating a geographical origin, the regulations governing use must explicitly authorise any person whose goods and services originate from the geographical area in question to become a member of the association that owns the trademark (provided, of course, that such person meets all the other conditions imposed).
• The purpose of collective trademarks and the regulations governing use explain why there are three particular reasons for the lapse of collective trademarks. For example, a collective trademark can be declared lapsed if:
  • the trademark holder does not take reasonable measures to prevent the trademark from being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use;
  • the manner in which the authorised persons use the trademark has resulted in the public being misled by it as to the nature or meaning of the trademark; and
  • a non-regulatory change to the regulations governing use is listed in the register.

Certification trademarks

A certification trademark is used to distinguish and certify one or more common characteristics (e.g. quality) of given products or services from different companies. The common characteristics to which certification trademarks pertain, may concern quality criteria, production methods, material, etc. In principle, it is possible to certify all possible and imaginable characteristics in this way, with the exception of the geographical origin of the products or services. Anyone can be the holder of a certification trademark (a natural or legal person, an institution, an authority or a body governed by public law), but the holder cannot provide the certified products or services himself.

An example of a certification trademark is the 'Woolmark' designation, which a producer may use, on the basis of a licence, as a sign on its wool and related products when they meet certain conditions.

As regards the conditions for protection, the content of the right, the protection of the right against infringement and the lapse of the right, certification trademarks are subject to the same rules as individual trademarks, with the exception of the following:

• The holder of a certification trademark must be independent and may not use the trademark himself (i.e. for products or services originating from his company or from a company in whose management or supervision he participates directly or indirectly). Indeed, it is the holder of the certification trademark who will be responsible for applying the regulations governing use and for supervision. To ensure independent supervision of quality and production criteria, a certification trademark cannot, therefore, be applied for, or owned by a company that wishes to use the trademark itself to exploit its products or services. The holder of the certification trademark is, for example, a standardisation body or a quality control body. This holder will grant licenses to use the trademark to producers who meet the conditions.
• A certification trademark may not designate a geographical origin.
• The filing of certification trademarks must be accompanied by ‘regulations governing use’. These regulations must specify the persons authorised to use the trademark, the characteristics certified by the trademark, the way in which the certification body verifies these characteristics and supervises the use of the trademark. These regulations governing use also indicate the conditions for using the trademark, including penalties.
• The purpose of certification trademarks and the regulations governing use explain why there are four particular reasons for the lapse of certification trademarks. For example, a certification trademark can be declared lapsed if:
  1. the trademark holder carries out an activity that relates to the supply of products or services of the certified type;
  2. the trademark holder does not take reasonable measures to prevent the trademark from being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use;
  3. the manner in which the authorised persons use the trademark has resulted in the public being misled by it as to the nature or meaning of the trademark; and
  4. a non-regulatory change to the regulations governing use is listed in the register.