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5. General examination
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5.1 Mandatory acceptance requirements
A collective mark application must meet the mandatory acceptance requirements set out in regulation 44 of the Regulations.18 The Examiner may also require further information to be provided to assist in the examination of the application.19
For more information on the mandatory acceptance requirements that would prevent the acceptance of the collective mark for registration, please refer to the relevant section of the Practice Guideline on The Application Process.
Footnotes
18 See section 208(3)(a) of the Trade Marks Act 2002.
19 See section 208(3)(b) of the Trade Marks Act 2002.
5.2 Prescribed fees
Before an application to register a collective mark can be accepted, the prescribed fee must have been paid in respect of the application. Where additional classes are requested after the date of application, each additional class is subject to an additional class fee.20
Although the fee for an additional class is not essential for filing date purposes, payment must be made when filing the application for an additional class.21
Footnotes
20 Regulation 43(2)(b) of the Trade Marks Regulations 2003.
21 Additional classes may only be added within 1 month of the application. See regulation 43(2)(a) of the Trade Marks Regulations 2003.
5.3 Absolute grounds preventing registration
The Commissioner must be satisfied that there are no absolute grounds that would prevent the registration of a collective mark.22 The absolute grounds for not registering a collective mark are set out in sections 17 to 21 of the Act and concern the nature of the mark itself, its ability to distinguish the goods produced or services provided by the members of the association from those of non-members, and other public policy considerations.
A collective mark application is examined in the same way as a standard trade mark application to determine whether it complies with the absolute grounds of refusal in the Act. For more information on absolute grounds that would prevent the registration of a collective mark, please refer to the following Practice Guidelines:
- Absolute Grounds: General
- Absolute Grounds: Distinctiveness
- Absolute Grounds: Chemical Names
Footnote
22 Section 13(2) of the Trade marks Act 2002. The absolute and relative grounds are set out in Part 2 of the Act.
5.3.1 Additional distinctiveness considerations
When considering eligibility under section 18 of the Act, the Examiner should take into account section 15 of the Act and the definition of a collective mark under section 5 (1) of the Act.
In particular, the Examiner should assess the distinctiveness requirement set out in section 18(1)(b) of the Act by keeping in mind the nature of the collective mark association, in that the mark must be capable of distinguishing the goods and services from a member of a collective association from those of a non-member, as opposed to the goods and services of a single party.
5.4 Relative grounds preventing registration
The Commissioner must be satisfied that there are no relative grounds that would prevent the registration of the collective mark.23 The relative grounds for not registering a trade mark are concerned with conflict between the applicant and rights held by other persons, entities or traders and are set out in sections 22 to 30 of the Act.
A collective mark application is examined in the same way as a standard trade mark application to determine whether it complies with the relative grounds of refusal in the Act. For more information on relative grounds that would prevent the registration of a collective mark, please refer to the following Practice Guidelines:
- Relative Grounds: Prescribed Words and Abbreviations
- Relative Grounds: Names or Representations of Persons
- Relative Grounds: Representations of the Royal Family
- Relative Grounds: Identical and Similar Marks
- Relative Grounds: Flags, Armorial Bearings, State Emblems and similar
Footnote
23 Section 13(2) of the Trade Marks Act 2002. The absolute and relative grounds are set out in Part 2 of the Act.
5.4.1 Additional identical and similar mark considerations
When considering potential citations of identical and/or similar marks, under section 25 of the Act, the Examiner should take into account section 15 of the Act and the definition of a collective mark under section 5 (1) of the Act. In particular, when searching the register the Examiner needs to keep in mind that the function of certification, collective and standard trade marks are different.
A standard trade mark distinguishes goods and services that originate from a single party whereas a collective mark distinguishes the origin of goods and services from a member of an association from those of a non member. A certification trade mark does not indicate origin. Rather, it indicates that some characteristic of the goods or services provided has been certified by the owner of the mark, who does not trade in the concerned goods or services.
Where an Examiner finds an identical or similar mark on the register for the same or similar goods or services, they should take this as prima facie evidence that the mark cannot serve the function specified for it under the Act. The Examiner should raise a concern that the mark on the Register has priority over the applicant’s mark.
5.5 Specifications
Specifications and amendments to specifications for collective marks are dealt with in the same manner as a standard trade mark. For more information on classification and specifications, please refer to the Practice Guideline on Classification and Specifications.
5.6 Series
An application for a series of collective marks is dealt with in the same manner as a standard trade mark. For more information on series marks, please refer to the Practice Guideline on Series Marks.
Where an application for a series of collective marks covers various types of membership such as “Fellow of…”, Member of… or “Associate of…”, IPONZ considers that these do not form a material part of the mark itself.
