Collective and certification marks

Collective and certification marks are trademarks that several parties can use at the same time. All requirements and conditions that concern standard trademarks also concern collective and certification marks. In addition, collective and certification marks have a number of their own special requirements and features, which are described below.

Until the Trademarks Act came into force on 1 May 2019, the term “collective mark” was used for both collective and certification marks.

You can change a standard trademark into a collective or certification mark if the mark meets the requirements set for collective and certification marks. A collective mark can also be changed into a standard trademark or a certification mark. However, it is not possible to change a certification mark.

Collective mark

A collective mark is intended to be used in the course of trade that the trademark owner’s members carry out. For this reason, the owner of a collective mark can only be an entity that has members.

A private person or a company cannot own a collective mark; the owner must be, for example, an association.

In the same way as a standard trademark, you can gain the exclusive right to a collective mark through registration or establishment.

A collective mark must not be misleading in terms of its character or meaning. The owner can lose a collective mark if the mark is likely to appear as something other than a collective mark. The same impression may appear if the users of the collective mark have used the mark in a way that is beginning to make it misleading.

Certification mark

A certification mark is intended to act as a guarantee that the goods or services marketed with the mark meet certain quality requirements.

A certification mark owner must be an organisation that controls or examines goods and services or gives orders concerning control or examination.

A certification mark owner cannot engage in business that includes the supply of verified goods or services. This means that, for example, a certification mark owner who examines fuses cannot manufacture or sell fuses.

You can gain the exclusive right to a certification mark by registration only.

Statements enclosed with the application

With a collective or certification mark application, enclose evidence of the applicant’s type of activity and regulations governing the use of the mark. At a minimum, the regulations must describe:

• who is allowed to use the mark, and
• the consequences of breaching the regulations using the mark.

Also enclose the legal person’s by-laws with the application. The conditions for a legal person to become a member must be described in the legal person’s by-laws or the regulations governing the use of the mark when applying for a collective mark. You do not need to present evidence of the applicant’s type of activity or the legal person’s by-laws, if the details in question are available to the PRH in its current registers.

The regulations governing the use of the mark cannot be contrary to law, public policy or accepted principles of morality.

Any changes to the regulations governing the use of the mark must be filed with the PRH, even after registration. The owner may risk losing its collective or certification mark if the regulations governing the use of the mark do not fulfil these requirements due to the changes.

Risk of losing marks

A collective or certification mark can be lost if the owner does not take reasonable measures to prevent the use of the mark in conflict with the regulations governing the use of the mark.

or by any party entitled to use the mark.Read more about the grounds for losing a trademark.
It is also possible to lose a collective or certification mark in the same way as a standard trademark if it is not used. In the case of collective and certification marks, using the mark means use by the owner or by any party entitled to use the mark.

Read more about the grounds for losing a trademark.

Exclusive right to collective and certification marks

If a collective or certification mark has previously been applied for or registered, it will be an obstacle to the registration of the same or a similar trademark in the same way as a standard trademark. It is not possible to register an earlier mark, even if the owner was the same or the owner had consent to register the mark.

An existing certification mark is an absolute obstacle to registration, even if the certification mark is no longer valid.

Right of legal action in collective and certification mark matters

In an action for infringement concerning a collective or certification mark, the action can be brought either by the owner of the mark or by a party entitled to use the mark. A party entitled to use the mark can take action only with the owner’s consent unless agreed otherwise. However, it is allowed to take action if the owner fails to take measures within a reasonable time of becoming aware of the infringement.

The owner can also claim damages on behalf of a party entitled to use the mark. The party entitled to use the mark has a right to second the action for infringement brought by the owner and claim damages.