PROTECTION OF CONSUMERS THROUGH

COLLECTIVE MARKS
A research prepared submitted in partial fulfilment of the course
Intellectual Property Law for obtaining the degree BBA LLB (Hons.)
for the academic year 2021-2022

Submitted by
RAHUL KUMAR
2032
Submitted to
Prof. Dr. S.C. Roy

Sept. 2021
Chanakya National Law University, Patna
Mithapur Nayaynagar, Patna

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 DECLARATION

We hereby declare that the project entitled “Protection of customer through collective
trademark” submitted by me at CHANAKYA NATIONAL LAW UNIVERSITY is a record of bona
fide project work carried out by me under the guidance of our mentor “Prof. Dr.Subhadh C.
Roy ”. I further declare that the work reported in this project has not been submitted and will
not be submitted, either in part or in full, for the award of any other degree or diploma in
this university or in any other university.

----------------

RAHUL KUMAR

ROLL NO. 2032

7Th SEMESTER

4th year

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 ACKNOWLEDGEMENT

It is a fact that any research work prepared, compiled or formulated in isolation is

inexplicable to an extent. This research work, although prepared by us, is a culmination of
efforts of a lot of people who remained in veil, who gave their intense support and helped
me in the completion of this project.
First, I am grateful to the almighty for the opportunity to thrush myself and realise the
potential to do being my belief and for the strength to make it realise.
Then, I am very grateful to my mentor “Prof. Dr. Subash C. Roy”, without the kind support
and help of whom the completion of this project was a herculean task for me. He donated
his valuable time from his busy schedule to help me to complete this project. I would like to
thank him for his valuable suggestions towards the making of this project.
I would like to extent my thanks to my family to keep me in good health both bodily and
mentally. I can not be thankful enough to them. Along with them, my heartiest thanks to my
friends, Gaurav, Ujjwal, Sid, and Ankuu who remain there standing by me and support me
through crest and trough.

we thank all of them !

_____________
RAHUL KUMAR

ROLL NO. 2032

7th SEMESTER

4th YEAR

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Contents
INTRODUCTION.....................................................................................................................................5
1. Meaning........................................................................................................................................6
o Trademark.................................................................................................................................6
o Collective mark..........................................................................................................................7
2. Collective mark under Trade Marks Act, 1999.............................................................................7
 Registration...............................................................................................................................7
 Regulations................................................................................................................................8
 Acceptance of application and regulations..............................................................................8
 Examination and hearing..........................................................................................................9
 Opposition.................................................................................................................................9
 Amendment..............................................................................................................................9
 Infringement.............................................................................................................................9
 Removal of registration............................................................................................................9
3. Membership mark.......................................................................................................................10
4. Advantages of collective marks..................................................................................................10
 Exclusive trademark rights:.....................................................................................................10
 Builds reputation and goodwill...............................................................................................11
 Unique Products......................................................................................................................11
 Identifies Value.......................................................................................................................11
 Intellectual Property...............................................................................................................11
 Product Symbol.......................................................................................................................11
 Protection against infringement.............................................................................................11
 10 Year-Validity:......................................................................................................................11
5. Case study – collective mark.......................................................................................................12
6. Conclusion...................................................................................................................................13
References...........................................................................................................................................14

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 INTRODUCTION

The trademark law includes within its scope a separate category of marks known as collective marks. The
World Intellectual Property Organization (WIPO) has defined these collective marks as “signs which distinguish
the geographical origin, material, mode of manufacturing or other common characteristics of goods or services
of different enterprises using the collective mark.” 1 The owner of a collective mark are members of an
association of such enterprises.

A collective mark is defined under Section 2(1)(g) of the Trademark Act, 1999 as a “trademark 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] which is the proprietor of the mark from those of others.” 2 Therefore, the
Trade Marks Act, 1999 has made special provisions under Chapter VIII for the registration of collective marks.

Moreover, the use of collective marks is governed by regulations which prescribe certain standards that need
to be complied with by the members of the owner of a collective mark. In this regard the Trade Marks Rules,
2017 prescribes special provisions for collective trademarks.

The products which are peculiar to a region can be promoted using collective marks. The use of a collective
mark helps to market the products domestically as well as internationally, thereby developing better
cooperation among the local producers. Most importantly, a collective mark provides crucial information
about the distinctive features of a product to the public for which the collective mark is used.

 Aim
The current research dwell into the world of intellectual property to understand the importance of
the properly developed entirely through the application of mind. The research is carried out with the
aim to understand the nature and scope of intellectual properties.

 Objective
1. The objective of the research is to understand the nature and extent of collective marks.
2. The research further appraises the protection it grant to the consumer through law.

 Research methodology
In this part the researcher outlines the research strategy, sources of data, the research method and
the second part deals with review of literature.

1. Research strategy

The research held with respect to the given topic was an applied one, but not new. As such, the
proposed research took the form of a new research but on an existing research subject.

2. Sources of Data

Secondary data is used in this project. Secondary data are the data collected by a party not related to
the research study but collected these data for some other purpose and at different time in the
past. If the researcher uses these data then these become secondary data for the current users.

1
https://www.wipo.int/sme/en/ip_business/collective_marks/collective_marks. (last visited on Aug. 10, 2021)
2
The Trade Marks Act, 1999 (Act 57 of 1999), s. 2(1)(g).

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 Secondary data is also used to gain initial insight into the research problem. Secondary data is
classified in terms of its source – either internal or external. The present study relies on information
drawn from various secondary sources including books,
journals, and government survey reports.

3. Research Methods

This project is based upon doctrinal method of research. It has been done after a thorough research
based upon intrinsic and extrinsic aspects of the project.

 Hypotheses
The researcher while undertaking the research hypotheses that
1. The collective mark works as an indication of individuality and uniqueness.
2. The collective mark protects the interests of consumers through the identification it
provides
3. The collective mark protects the interests of authored members granting them the sole
authority to use such mark.

-Page break-

1. Meaning
o Trademark

The modern definition of trademark is that it is a word, name, symbol, or device, or a combination thereof,
used by a person (including a business entity), or that a person has a bona fide intention to use in commerce,
to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the
source of those goods.

The Trademark Act of 1946,3 popularly known as the Lanham Act, defines a trademark as "any word, name,
symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his
goods and distinguish them from those manufactured or sold by others." Trademarks are afforded a legally
protected status under the Act because they benefit society by promoting competition among sellers, protect
the public from deceit, and guarantee product quality. The law protects trademarks by allowing them to be
registered and retained for exclusive use by the trademark holder.

Trademark protection, however, is not absolute, and the grant of exclusive use can be cancelled for a number
of reasons.4 A ground for cancellation that has stirred recent controversy is genericness that is, whether a
trademark has become the "common descriptive name of an article." 5 A trademark deemed generic loses its
protected status because it has ceased to perform the functions that justified its protection. Competitors of
the holder of a generic mark, therefore, can use the mark to describe their products. 6

3
1 15 U.S.C. §§ 1051-1127 (1976).
4
15 U.S.C. § 1064 (1976).
5
The Lanham Act refers to a generic trademark as "the common descriptive name of an article." Id. § 1064(c).
The Act, however, does not use the term "generic" in any statutory definitions
6
When a term is held generic it "precludes federal trademark registration, prevents a federal trademark
registration from becoming incontestable, and is a ground for cancelling a federal registration at any time." Id.
at 2-3

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 o Collective mark

A collective trademark, collective trade mark, or collective mark is a trademark owned by an organization (such
as an association), used by its members to identify themselves with a level of quality or accuracy, geographical
origin, or other characteristics set by the organization. Collective trademarks are exceptions to the underlying
principle of trademarks in that most trademarks serve as "badges of origin"; they indicate the individual source
of the goods or services. A collective trademark, however, can be used by a variety of traders, rather than just
one individual concern, provided that the trader belongs to the association.

Collective trademarks differ from certification marks. The main difference is that collective trademarks may be
used by particular members of the organization which owns them, while certification marks may be used by
anybody who complies with the standards defined by the owner of the particular certification mark.

In other words, it is a trademark owned by an organization such as an association, and it is only used by its
members. Collective trademarks help in identifying the level of quality, geographical origin. It also indicates the
individual source of goods or services. Collective trademark is open for use to a variety of traders and not just
one individual, provided, the trader is the member of the organization.

Therefore, a collective trademark is made up of letter, words, designs, names, etc. Functions of the collective
marks are:

1. To inform the public about certain features of the product for which collective trademark is used.

2. They promote products which have a geographical origin, by this the product not only gets a
domestic recognition, also, it gains international recognition.

3. It also helps in differentiating one product from another.

2. Collective mark under Trade Marks Act, 1999

The term ‘Collective mark’ is defined under Section 2(1)(g) of Trade Marks Act, 1999 as a trade mark
distinguishing the goods or services of members of an association of persons (not being a partnership with the
meaning of the Indian Partnership act,1932) which is the proprietor of the trade mark those of others.
Collective Trade mark is dealt with Chapter VIII of the Act containing Sections 61 to 68. Part II of the Trade
Mark Rules, 2002 deals with special provisions for collective marks.

Article 7bis of the Paris Convention for Protection of Industrial Property makes it obligatory on a member
country to accept for filing and to protect the collective marks belonging to associations, who are generally
association of producers, manufacturers, distributors, sellers or other merchants of goods, in accordance with
the national law. Our country is a member of the above convention. Trade Marks Act, 1999 is in compliance
with its obligations.

Section 61 provides that the provisions of this Act shall apply to collective marks subject to the provisions
contained in Chapter VIII. In relation to the collective mark to distinguishing the goods or service of one person
from those of others shall be construed as a reference to distinguishing the goods or services of members of
an association of persons which is the proprietor of the trade mark, from those of others. Thus the entire
definition of ‘trade mark’ applies to collective trade mark subject to the provisions contained in Chapter VIII.

 Registration

Section 62 deals with the registration of a collective trade mark. The two components of Section 62 are as

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follows:

 A collective mark shall not be registered if it is likely to deceive or cause confusion on the part of the
public;
 If it is likely to be taken to be something other than a collective mark and in such case the Registrar
may require that the mark in respect of which application is made for registration comprise some
indication that it is a collective mark.

Section 63 of the Act provides that an application for registration of a collective mark shall be accompanied by
the regulations governing the use of such collective mark. The regulation shall specify the persons authorized
to use the mark, the conditions of membership of association and, the conditions of use of the mark, including
any sanctions against misuse and such other matters as may be prescribed.

The Registrar is having power to require that the mark contains some indication that it is a collective mark.
Rule 25 (7)(a) of the Trade Marks Rules, 2002 provides that the application for registration for a collective
Trade mark is in Form No.TM – 3. Rule 128 (1) provides that an application for the registration of a collective
mark for goods or service under Section 63 (1) shall be made to the Registrar in Form TM-3, Form TM – 4 or in
the case of a single application Form TM-66 or from TM – 67, as the case may be, in triplicate and shall be
accompanied by five additional representations of the mark. The draft regulations to be submitted with the
application shall be in triplicate and shall be accompanied by Form TM – 49.

The references to acceptance of an application for the registration of a trade mark shall be substituted by
references to authorization to proceed with the application.

 Regulations

The draft regulations shall specify-

o persons authorized to use the mark;

o The conditions of membership of the association;
o Conditions of use of the mark;
o Sanctions against misuse.

The Regulations shall include the details as required under Rule 128-

o The name of the association of persons and their respective office addresses;
o The object of the association;
o The details of members;
o The conditions for membership and relation of each member with the group;
o The persons authorized to use the mark and the nature of control the applicant exercise over the
use of
o the collective mark;
o Conditions governing the use of the mark including sanctions;
o The procedure for dealing with appeals against the use of collective mark;
o Such other relevant particulars as may be called for by the Registrar.

 Acceptance of application and regulations

Section 64 provides that if it appears to the Registrar that the requirements for registration are satisfied he
shall accept the application together with the regulations, either unconditionally or subject to such conditions

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including amendments of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted
shall notify the regulations.

Section 65 provides that the regulations shall be open to public inspection in the same way as the register as
provided in Section 148.

 Examination and hearing

The applicant shall submit to the Registrar along with his application a statement of case setting out the
Grounds on which he relies in support of the application. Such case shall be furnished in triplicate. The
Registrar Shall cause an application to be examined, in the first instance, as to whether it satisfies the
requirements of The Act and Rules and issues a report to the applicant. The Registrar shall not refuse an
application or accept The application subject to any conditions or impose amendments or modifications to the
application or to the Regulation without giving the applicant an opportunity of being heard and the procedure
thereto shall be Regulated by the provisions of Rule 38 (4) to 42.

 Opposition

On acceptance of the application, the Registrar shall cause the applications to be advertised in the Journal. In
any case of doubt with regard to proceedings on the opposition to the registration of a collective trade mark
any party may apply to the Registrar for directions.

 Amendment

An application registered proprietor of a collective trade mark for any amendment to the regulation shall be
made in Form TM – 42. If the Registrar accepts any such amendment he shall advertise such application in the
Journal and further proceedings in the matter shall be governed by Rules 47 to 57.

 Infringement

Section 67 provides that in a suit for infringement instituted by the registered proprietor of a collective mark as
plaintiff the Court shall take into account any loss suffered or likely to be suffered by authorized users and may
give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any
pecuniary remedy of such authorized users.

 Removal of registration

Section 68 provides that the registration of a collective trade mark may also be removed from the register on
the ground-

o That the manner in which the collective trade mark has been used by the proprietor or authorized
user has caused it to become liable to mislead the public as a collective mark; or
o That the proprietor has failed to observe, or to secure the observance of the regulations governing
the use of the mark.

The application for removal of a collective mark from the register including on any of the grounds above, shall
be made in Form No. TM – 43 and shall set forth the particulars of the grounds on which the application is
made.

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 3. Membership mark
A collective membership mark is any word, phrase, symbol or design, or a combination thereof which
indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises
control over the use of the mark; however, because the sole purpose of a membership mark is to indicate
membership, use of the mark is by members. Unlike trademarks and service marks, which identify the source
of the goods/services, collective marks inform the public that an individual is a member of the group.

A collective membership mark differs greatly from a traditional trademark (or service mark). Collective
membership marks are much rarer than trademarks and most individuals, businesses, and non-profit
organizations will never have to worry too much about them. Having said that, they still serve a very
important purpose in our society and receive the same protections from infringement and misappropriation as
traditional trademarks.

The biggest difference between a trademark and a collective membership mark is the purpose each one
serves. The purpose of a trademark is to identify and distinguish products/services and to indicate the source
of those products/services. For example, Nike uses its iconic “swoosh” symbol on clothing and footwear to
identify and distinguish its products from those offered by competing athletic apparel companies (such as
Under Armour and Adidas). Similarly, Taco Bell uses its famous TACO BELL name on signage, menus, and
advertising materials to identify and distinguish its quick-service Mexican restaurants from other quick-service
Mexican restaurants (such as Chipotle and Qdoba).

Without these trademarks, we wouldn’t be able to determine which sneakers we were buying and which
restaurants we were ordering from. Could you imagine walking down the soda aisle in your local supermarket
and none of the bottles or cans have any names or logos printed on them? You wouldn’t be able to distinguish
between Pepsi, Coca-Cola, Dr. Pepper, Diet Coke, Diet Pepsi, Diet Dr. Pepper, and the many other dark colas in
the marketplace. There would be no way for you to select and purchase the particular beverage you feel like
drinking unless you started taste-testing each one right there in the store. That would be complete chaos! We
need those trademarks to make our everyday purchasing decisions.

Unlike a certification mark, a collective membership mark can also be a trademark. This means that the
identical name or logo that’s used by members of an organization to indicate their membership in the
organization can also be used by the organization itself to provide products or services. So, for instance, a
member of a teachers union may carry a membership card issued by the union that prominently displays the
union’s name and indicates that the person is a member of the union. But, the union itself also very likely uses
its name to promote the interests of teachers, to lobby on behalf of teachers, and to promote public
awareness of issues related to education. These are all services being rendered by the union under its name.
The union is using its name as a trademark to provide those services.

It’s important to note that while a collective membership mark can also be a trademark if it’s used by the
organization itself to provide products/services, a collective membership mark may not also be used by the
organization as a certification mark.

4. Advantages of collective marks

 Exclusive trademark rights:

When it comes to collective trademark registration, the business owner secures exclusive rights over the use of
the trademark. For this reason, the owner has the right to utilize the collective mark for all the products

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produced by his/her business or services rendered, submitted in the trademark application. Hence, the
business owner has sole rights over the trademark, which Preventions others from using it. And in case it is
used, the owner has the privilege to prosecute anyone who does.

 Builds reputation and goodwill

A trademark on the product helps build brand reputation, and generate goodwill. This will further help
customers identify products accordingly, and form a trust. Thus, enabling a loyal set of customers who will
always choose products belonging to one particular brand, for regular use.

 Unique Products

Concerning competition, a good service mark registration can help in making a service unique and further help
in its promotion as well. The trademark will represent the vision or quality of the brand and in turn, help
associate the business with it.

 Identifies Value

Another benefit of trademarking a product is that it helps in attaching identity to the value provided by the
product. This way, the brand also becomes part of that identity prompting customers to associate the same
value and draw in new customers or clients. They will be able to distinguish the quality of the product by its
trademark.

 Intellectual Property

A trademark essentially acts as a product brand name registration, which automatically makes it an intellectual
property for the business. The rights for trademark use can be sold, assigned, franchised or economically
contracted. This makes the trademark an asset for the business which gives its association an added benefit.

 Product Symbol

A registered trademark can use the symbol on its logo, to communicate that it is part of a registered trademark
and no one can use any of its symbols. It is inclusive of its different uses just as rights. If someone, replicates,
the design, logo or symbol then that person can be sued by the business.

 Protection against infringement

Through a product brand name registration, the trademark becomes an exclusive right for the owner of the
business, in terms of the usage. Hence, competitors or individuals cannot use the trademark or logo without
the endorsement of the business owner. Thug registering a product helps in protecting against infringement of
the logo.

 10 Year-Validity:

Registered trademarks have a 10-year validity and can be renewed indefinitely. It is cost-effective and enables
the business to create and maintain a unique identity.

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 5. Case study – collective mark
A well-known case involving collective marks is the case of Chirimoya Cumbe7. Chirimoya is a native fruit of
Peru and Ecuador. Cumbe is a valley in the Huarochiri province of Peru where the climatic conditions are
favourable for growing chirimoya. The fruit produced in the Cumbe valley is of superior quality characterised
by large fruit size, greater nutrient value, softer skin and low seed index, thereby making chirimoya from the
Cumbe valley the most sought after in the world.

In 1997, a farmer named Matildo Perez hailing from a village community in Lima personally applied for
registering the trademark “Chirimoya Cumbe” at the National Institute for the Defense of Competition and
Intellectual Property of Peru (INDECOPI). The application for registration was rejected on the grounds that an
individual cannot claim exclusive rights in generic names. Mr Perez again met the officials at INDECOPI seeking
to register “Chirimoya Cumbe” as a trademark which would give the community in Lima exclusive rights with
respect to the name “Cumbe”.

The officials at INDECOPI clarified that the “Chirimoya Cumbe” is an appellation or title of origin and not a
trademark per se. Furthermore, the word “Cumbe” is of Peruvian origin because Cumbe is a valley thereby
representing a geographical region which gives the Chirimoya grown in that region a distinctive character.

After lengthy deliberations between the INDECOPI officials and the people of Cumbe to arrive at a plausible
solution, it was suggested that “Chirimoya Cumbe” should be registered as a “collective mark”. Thus, the
people of Cumbe would be the owners of this collective mark and they would use the mark as per rules laid
down by them.

As of today “Chirimoya Cumbe” is characterised by a logo and is registered as a collective mark in the name of
the village of “Santo Toribio de Cumbe”. Therefore, a collective mark gives small business enterprises a
competitive edge and warrants protection to their goods. It also distinguishes the goods represented by a
collective mark from those of others which accords greater economic benefit to the small scale producers and
boosts the faith of clients in the goods sold under the said collective mark.

7
https://www.wipo.int/ipadvantage/en/details.jsp?id=2561 (last visited on sept. 12 2021)

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 6. Conclusion
From the above discussion, it becomes amply clear that collective marks is a species of trademark for
goods/services that are owned by members of an association. Moreover, the mark creates an identity for the
members in relation to the degree of quality, geographical origin and other features laid down by the
association. A trademark serves to identify the origin of a particular mark i.e., to say the individual source of
goods/services can be known. Whereas, on the contrary, a heterogeneous group of traders, who belong to the
association that owns the collective trademark, can use a collective mark, instead of just one individual.

Thus, collective trademarks are an effective tool for promoting products of a particular region that are peculiar
to that region. A collective mark enhances the marketing of such products and cooperation among the local
producers. It is when products of a particular geographic origin have a certain historical, cultural or social
association with that place, collective trademarks come into existence.

Therefore, a collective trademark is an embodiment of all the special features of goods/services of a particular
origin, which are used to market the goods and benefit the producers. Collective marks are a cost-saving
device which cut down on the cost of mark development and its marketing and advertising. Thus, a collective
mark imparts a unique identity and recognition to the goods/services belonging to members of the association,
making them widely popular and marketable.

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 References
 Books

o Intellectual property Law, 3rd ed. By P. Narayan

o Intellectual property rights, 2nd ed. LawExpress by David Bainbridge and Claire Howell

o Intellectual property, 4th ed. Deborah E. Bouchoux

 Websites
o https://lawcirca-com.cdn.ampproject.org/v/s/lawcirca.com/collective-marks-under-the-
trademark-act/
o https://www.taxmanagementindia.com/
o http://www.legalservicesindia.com/law/article/914/7/Collective-Marks-Section-61-to-Section-68-
of-Trade-Mark-Act
o https://indiankanoon.org/doc/117176/

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