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Different Types of Trade Marks: Beyond the Standard Names

By Giulia Didonè | Trade Mark Attorney

Trade marks are essential tools for businesses and organisations, protecting their unique brand and products or services in the marketplace. While most people are familiar with standard marks – such as word marks (brand names) or figurative marks (logos) – there are several also special types of trade marks that serve unique functions and offer tailored protection. Each type plays a distinct role in supporting industry standards, consumer trust, and brand reputation. 

In our latest article, Giulia Didonè, Trade Mark Attorney at XVII Degrees, explores the different types of trade marks and the process of application and ownership under each type. While trade marks might seem like a simple task, it is so important to protect your intellectual property and reputation.

Collective Trade Marks   

A collective trade mark is a sign used in relation to goods or services by members of an association to distinguish those goods or services from goods or services provided by persons who are not members of the association. 1

Unlike standard trade marks, which are typically owned and used by a single business, they cannot be registered by individuals and proprietary companies. 2  

Collective trade marks follows the same examination procedure as that used for standard trade mark applications, with identical registrability criteria applied. However, collective marks are not transferable and cannot be sold, assigned, or leased to others outside the association. 3 

Functions & Benefits: 

  1. Differentiate the goods or services of association members from those of non-members.
  2. Identify membership within a specific group or organisation.
  3. Foster consumer trust by signalling that products or services belong to an association. 

Collective trade marks registered in Australia are, for example: Certification Trade Marks 

Certification trade marks are used to indicate that goods or services are certified as having certain characteristics and so that they meet a defined standard, such as quality, composition, manufacturing method, or geographical origin. Unlike standard or collective marks, certification marks can be used by any business or trader whose products comply with the certifying body’s standards. 4 

Key features of a certification trade mark include:

  1. Certification marks require a set of rules outlining the standards, assessment processes, and dispute resolution mechanisms. These rules must be approved by the Australian Competition and Consumer Commission (ACCC) in Australia. 5 
  2. The owner of a certification trade mark does not usually use the mark themselves but licenses it to others who meet the criteria.

The ‘Australian Made®’ logo is a prime example that certifies a product is genuinely Australian. Geographical indications (GIs) – signs that identify the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin 6 – are also protected through certification trade marks in Australia.

For wine and grape products, GIs are protected under a separate legislative system administered by the Australian Grape and Wine Authority. 7 GIs are particularly important for agricultural and food products, where regional characteristics are integral to the product’s identity. 8

Some examples of GIs registered as certification trade marks include Parmigiano Reggiano cheese and Scotch whisky, ensuring only authentic products from those regions use the names. 

Defensive Trade Marks 

Defensive trade marks are registered by owners of well-known brands to prevent others from using their marks in unrelated categories, even if the owner does not intend to use the mark in those areas. This type of registration is a proactive measure to safeguard brand reputation and prevent consumer confusion. 9

Defensive trade marks are not subject to removal for non-use, unlike standard trade marks. They are particularly useful for famous brands that want to avoid dilution or mis association with unrelated goods or services. In any case, the application for a defensive registration should be supported by evidence.

The applicant must establish the reputation of the trade mark and show that use of the trade mark on the unrelated goods or services would be likely to cause consumers to wonder if there was an association with the owner of the trade mark. 

NIKE and ALDI have defensive registrations in classes like beverages and medical services, respectively, to prevent misuse of their brand names. 

Special types of trade marks (collective, certification, and defensive) offer tailored protection for brands, industries, and regions. They help foster consumer confidence, ensure product authenticity, and protect the reputation of well-known brands. Understanding these trade mark types is crucial for businesses and organisations seeking to leverage intellectual property for competitive advantage and long-term success. 

If you have questions about brand names or trade marks, please reach out to us at XVII Degrees. 

More Insights 

Photo by George Dagerotip on Unsplash

References

  1. Trade Marks Act 1995 (Cth), section 162. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
  2. Trade Marks Act 1995 (Cth), section 164. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
  3. Trade Marks Act 1995 (Cth), section 166. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
  4. IP Australia. (n.d.). Certification trade marks. https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks/kinds-of-trade-marks/certification-trade-marks
  5. IP Australia. (n.d.). Certification trade marks. https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks/kinds-of-trade-marks/certification-trade-marks
  6. Trade Marks Act 1995 (Cth), section 6. Retrieved from https://www.legislation.gov.au/C2004A04969/latest
  7. IP Australia. (n.d.). Geographical indications and trade marks. https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks/kinds-of-trade-marks/geographical-indications-and-trade-marks
  8. IP Australia. (n.d.). Geographical indications and trade marks. https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks/kinds-of-trade-marks/geographical-indications-and-trade-marks
  9. IP Australia. (2022, April 20). Australian trademarks law and defensive trade marks. IPA Manuals. https://manuals.ipaustralia.gov.au/trademark/1.-australian-trademarks-law-and-defensive-trade-marks

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