AJPark

Collective trade marks benefit both the association and its members. Organisations can use a collective trade mark to promote their own interests and members can use the mark to tell the public they belong to that wider association or industry group. And collective trade marks are not necessarily complicated or difficult to use or register.

Your association’s name, brand, and reputation are very important.  These are your most valuable assets.  They communicate quality, ethics and values that make your members stand out from the crowd.  In New Zealand’s deregulated environment, it is important that your members can use your trade mark to give themselves a marketing advantage over non-members.

Collective trade marks surround us. One example is the Real Estate Institute of New Zealand Inc’s MREINZ collective trade mark. Other examples include CHARTERED ACCOUNTANTS owned by the Institute of Chartered Accountants, and TAANZ owned by The Travel Agents' Association of New Zealand.

It has not always been possible to register the trade marks of a club or association.  That meant any person or organisation could claim to be a member of your club or association and benefit from your reputation.  There are legal remedies for such misrepresentation, but none are easy or swift.  Conversely, your organisation’s reputation could be damaged by association with someone that does not meet your membership criteria.

It is now possible to register a “collective” trade mark.  

What is a collective trade mark?
A ‘collective trade mark’ is a sign that distinguishes the goods or services of members of the collective association from those who are not members of the collective association. 

What can you protect?
You can register your distinctive trade mark for goods or services provided by your members.

You can protect any part of your brand identity such as your association’s name, colour or logo.

Registration of a collective trade mark also gives you a strong right to register your mark as a domain name, and to prevent others from using it as a domain name.

How can the collective trade mark be used?
Any member of your association will have the right to use the collective mark on the goods or services listed in the collective trade mark registration.

A collective mark can be used in many situations including on your members’ websites. For individuals running their own business, being able to use the collective trade mark to demonstrate an association with a wider industry group may help promote their business and make it more successful.

What does registration of a collective trade mark allow?
It allows your members to distinguish the goods or services that you and they provide from similar goods or services provided by non-members.  It helps add value to your members’ businesses.  The association and its members will have the exclusive right to use the trade mark on the goods and services registered.

What does registration prevent?
Non-members using your trade marks would infringe your trade mark rights and you would be able to take legal action.  Registration of your collective trade mark is infringed when any non-member uses the trade mark (or a similar mark) on the same or similar goods or services it has been registered for. 

An opportunity lost
Despite the potential importance, many clubs, associations and industry groups are not benefiting from the ability to protect one of their most important assets.  Registering a collective trade mark is a relatively expeditious process which would provide members of your association with an advantage over their competitors.

An edited version of this article was published in Her Business, February 2009.

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  Corinne Blumsky

  Partner