Collective Marks: A Tale of Collective Confusion at the Registry

We’re pleased to bring to you a post by Akshay Ajayakumar, discussing collective marks and analysing numerous erroneous collective mark registrations granted by the Indian Trade Marks Registry.  Akshay is a practicing advocate based in New Delhi. He is a graduate of National Law University, Jodhpur.

 Collective Marks: A Tale of Collective Confusion at the Registry

Akshay Ajayakumar

There are numerous collective marks registered at the Indian Trade Marks Registry (‘Registry’). However, what lies underneath these registrations are dismal examination standards. Out of 10 collective mark registrations unearthed by me, 9 were granted erroneously. An examination of these registrations reveals that the Registry has completely disregarded the mandatory requirements for registration of a collective trademark under the Trade Marks Act, 1999 (‘TM Act’) and has granted registrations without application of mind. This post briefly explains the requirements for a collective mark before the Registry and examines the erroneous collective mark registrations.

What is a collective mark ?

A collective mark indicates the commercial origin of certain goods/services by informing the consumer that the source of the goods/services belongs to a certain association and that it has the right to use the mark. The primary function of a collective mark is to indicate a trade connection with the association or organization who is the proprietor of the mark. As per Section 2(1)(g) of the TM Act, a collective mark means “a trade mark distinguishing the goods or services of members  of an association of persons (not being a partnership within the meaning of the Indian Partnership  Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others.” This differs from a certification mark, which are signs which seek to certify certain characteristics of the goods (for example, their quality, geographical origin, etc). A good example of a collective mark is the registration granted for Chandauli Kala Chawal (a mark containing 2 circles with ‘Chandauli Kala Chawal Krishak Samiti’ written in the outer circle and ‘Chandauli Kala Chawal CKC’ mentioned in the inner circle) to The Chandauli Kala Chawal Krishak Samiti, a society registered for the purpose of promoting black rice in the Chandauli region of Uttar Pradesh.

Special requirements for a collective mark under the TM Act

Sections 61 to 68 in Chapter VIII of the TM Act are special provisions for collective marks.

Section 62 of the TM Act mandates that a collective mark shall not be registered if it is likely to deceive or cause confusion on the part of the public and in particular if it is likely to be taken to be something other than a collective mark. In such cases the Registrar may require the applied-for mark to have some indication that it is a collective mark. Thereby, a collective mark should make it certain that it is a collective mark, and it should not deceive the public that it is trade mark or, even a certification mark for that matter. It is relevant to note that the Registrar is given powers to impose conditions to prevent such a scenario.

Section 63 of the TM Act mandates that an application for registration of a collective mark shall be accompanied by the regulations governing the use of the collective mark. Further, Section 64 states that only if the Registrar is satisfied with the requirements, including the regulation, he shall accept the collective mark. Hence, there is a specific requirement for the Registrar to be satisfied with the regulations for a collective mark for it to be accepted. In addition to the requirement under the TM Act, Rule 131(1) of the Trade Marks Rules, 2017 (‘TM Rules’) also mandates that a collective mark application is to be accompanied by regulations governing the collective mark’s use. Furthermore, Rule 131(4) of the TM Rules lays down the criteria for regulations (name, address, objectives, details of members, conditions for membership, control over the collective trademark, sanctions, etc.). In addition to the regulation, Rule 132 of the TM Rules also mandates a statement of case to be submitted along with the regulation.

It is also relevant to note that a proprietor having failed to observe, or to secure the observance of the regulations governing the use of the mark, is an additional ground for removal of registration as per Section 68(b) of the TM Act.

Therefore, an application for a collective trademark needs to be accompanied by an exhaustive regulation governing its use and a statement of case in support of the application. It is also relevant to note that the Draft Manual of Trade Marks also instructs the Examiner to defer the examination till a proper draft regulation is filed.

The deplorable reality at the Registry

Application No.	Mark	Application Type	Whether Regulation and/or Statement of case filed?	Observations
4379469	(A crest bearing the words ‘RTC RAMA TECHNICAL COLLEGE’)	Collective mark	No	The Registry has accepted the collective mark under the provisions of Section 20(1) of the TM Act without any objection.  The mark was Advertised as a collective mark in Trade Marks Journal No: 1937 under Section 63(1) of the TM Act.
4275904	FITTR	Collective mark	No	The Registry has accepted the collective mark under the provisions of section 20(1) of the TM Act after certain objections concerning the services description and user affidavit. It is also relevant to note that the Applicant in response to the objection concerning his service description filed a TM-M to amend his regulation concerning a collective mark(when he had not filed any regulation). The mark was Advertised as a collective mark in Trade Marks Journal No: 1944 under Section 63(1) of the TM Act.
4250192	(An artistic rendition of a bird in flight with ‘Vedika’ written below)	Collective mark	No	The Registry has accepted the collective mark under the provisions of section 20(1) of the TM Act without any objection.  The mark was Advertised as a collective mark in Trade Marks Journal No: 1918 under Section 63(1) of the TM Act.
4243012	(The word ‘Fittr’ written in stylised font)	Collective mark	No	The Registry has accepted the collective mark under the provisions of section 20(1) of the TM Act overcoming a conflict mark raised under Section 11(1) TM Act. The mark was Advertised as a collective mark  in Trade Marks Journal No: 1935 under Section 63(1) of the TM Act.
4291735	(A chair in middle of a garden with the words ‘Gappa Garden The Cafe’ below it)	Collective mark	No	The Registry has accepted the Collective mark under the provisions of section 20(1) of the TM Act without any objection.  The mark was Advertised as a collective mark in Trade Marks Journal No: 1923 under Section 63(1) of the TM Act. The Applicant herein is a partnership and therefore, the application has been applied-for in direct contravention of Section 2(1)(g) of the TM Act.
3525373	(‘Saam Marathi’ artistically written in Marathi)	Not available	No	The Registry has accepted the Collective mark under the provisions of section 20(1) of the TM Act overcoming conflict marks raised under Section 11(1) of the TM Act. The mark was Advertised as a collective mark  in Trade Marks Journal No: 1914 under Section 18(2) of the TM Act. It is relevant to note that Section 18(2) of the TM Act is not concerning a collective mark.
4387091	(The words ‘Hakuna Matata Preschool’ in stylised font along with a cartoon character.)	Collective mark	No	The Registry has accepted the collective mark  under the provisions of section 20(1) of the TM Act without any objection.  The mark was Advertised as a collective mark  in Trade Marks Journal No: 1938 under Section 63(1) of the TM Act.
4122416	(‘Khado’ written inside a circle and the phrase ‘Eat the Sindhi Way’ written below it.)	Collective mark	No	The Registry has accepted the Collective mark under the provisions of section 20(1) of the TM Act overcoming an objection under Section 9(1)(b) of the Tm Act. The mark was Advertised as a collective mark in Trade Marks Journal No: 1923 under Section 63(1) of the TM Act. The Applicant herein is a partnership and therefore, the application has been applied-for in direct contravention of Section 2(1)(g) of the TM Act.
4261539	beeboron	Collective mark	No	The Registry had raised an objection calling for the draft regulations. However, the Applicant neither filed the draft regulation nor gave a coherent response to the objection. The Applicant had filed a TM-M in response and gave a vague response. Thereafter, the Registry accepted the Collective mark under the provisions of section 20(1) of the TM Act without any objection.  The mark was Advertised as a collective mark in Trade Marks Journal No: 1924 under Section 63(1) of the TM Act.
4509962	(a device containing 2 circles with ‘Chandauli Kala Chawal Krishak Samiti’ circumscribed in the outer circle and ‘Chandauli Kala Chawal CKC’ mentioned in the inner circle)	Collective mark	Yes	The Registry accepted the Collective mark under the provisions of section 20(1) of the TM Act without any objection.  The mark was Advertised as a trade mark in Trade Marks Journal No: 1956 and later amended to a collective mark  under Section 63(1) of the TM Act  via a corrigenda in Journal No: 1978.

 A glance at the above marks will reveal that the Examiners at the Registry are clueless about collective Marks. The Examiners did not call for the statement of case in majority of the above erroneous registrations. There has been only one instance where the Examiner rightfully called for the draft regulation. Even then the mark got registered without the regulation. Even partnerships, which are explicitly barred from applying for a collective mark as per Section 2(1)(g) of the TM Act, have attained registrations for collective marks. In the 10 instances found by me, only one was a genuine case of a collective mark. In most of the cases, the Application was Accepted directly under Section 20(1) of the TM Act without any objection as to the regulation, statement of case or the nature of the Applicant in gross violation of the TM Act and the Rules. The factum of ignorance of collective marks is fortified by the fact that a collective mark was even advertised under Section 18(2) of the TM Act, a provision which has no correlation to collective marks.

In light of the glaring defaults in examination at the Registry, it is inevitable that there are other collective marks existing in the Register of trade marks which have not followed the due procedure of law. Further, as per my experience, even when regulations are filed, they are not examined properly. The Registry must take measures to make sure that Examiners are properly educated and sensitised about collective and certification marks to avoid such blatant errors. The sheer volume of erroneously accepted applications is also testimony to the lack of awareness about collective marks.

In my opinion, the erroneously granted applications were filed by the Applicants either by mistake or due to a misconception of law. In either case, the Registry was bound to follow the TM Act. Such registrations are lying on the Register in violation of Sections 2(1)(g), 61(2), 62, 63, and 64 of the TM Act. It is relevant to note the Registry has power to initiate a suo motu rectification action under Section 57(4) of the TM Act. The right course of action for the Registry would be a proper due diligence to expunge wrongly granted collective mark registrations. Additionally, the Registry should make the Examiners aware of collective marks through training sessions and issue proper guidelines concerning collective marks. Finally, the examination of collective marks should only be allotted to Examiners who are well versed in this subject.

Images taken from the Trade Marks Registry website here.