Collective Mark in New Zealand

In the world of intellectual property, we often think of a trade mark as a “badge of origin” for a single company, i.e. a sign that distinguishes the goods or services of one business from all others. But what if your goal isn’t to protect one business, but to provide a badge of quality, membership, and shared origin for an entire group?

This is the purpose of a Collective Trade Mark. It is a specialized and powerful legal tool designed for associations, guilds, co-operatives, and other member-based organizations. A collective mark signals to the public that the goods or services bearing the mark originate from a member of that specific association and thus meet the standards and values that the group represents.

Unique Nature of Collective Mark Ownership

The most fundamental difference between a standard mark and a collective mark is the concept of ownership and use.

A standard trade mark is owned and controlled by a single legal entity. A collective mark, by contrast, operates on a “hub and spoke” model, i.e. the collective mark is not owned by the individual members. It is registered in the name of the collective association itself.  The association holds the title to this mark for the “joint benefit of all members”. Its legal function is to distinguish the goods or services of members from those of non-members. The association, as the owner, has the exclusive right to the mark. However, every member of that association also has a co-existing right to use the mark on their own goods or services, provided they comply with the association’s rules. A crucial legal distinction is that no single member has the right to “exclude any other members” from using the mark. This right is shared equally among all who qualify for membership.

Securing Your Filing Date

The journey to registration begins, as with any trade mark, by securing a filing date. To do this, an application must meet the same mandatory filing requirements as a standard mark .

As your legal representatives, we manage this entire process. We prepare and file the application, ensuring it contains all the essential elements to be accepted by the Intellectual Property Office of New Zealand (IPONZ):

• The Applicant’s Name: The full, correct legal name of the collective association.
• An Address for Service: A required address in New Zealand or Australia.
• A Clear Representation: A high-quality digital image of the collective mark.
• The Goods and Services: A carefully drafted list of all goods and services that the association’s members produce or provide.

This last point is critical. Drafting the specification for a collective mark is often more complex than for a standard mark, as it must accurately cover the commercial activities of a diverse membership base, not just a single company.

Once these mandatory requirements are met, your application is assigned a filing date, and the formal examination process begins.

The Examination Process

Once filed, your collective mark application is examined for both “absolute” and “relative” grounds for refusal, just like a standard mark. However, the way these grounds are assessed is fundamentally different, and this is where expert legal argument becomes essential.

Absolute Grounds (Distinctiveness)

This is the most significant departure from a standard application. A standard mark is often refused under Section 18 if it is descriptive, for example, a mark like “NEW ZEALAND WINE” would be refused as it describes the goods.

However, a collective mark is not judged on its ability to identify a single party. It is judged on its ability to distinguish the goods of members from those of non-members. This is a completely different legal test. A mark that includes a geographical name or a descriptive term may be registrable as a collective mark if it can be shown that it functions as a badge of membership for an association in that region or trade.

Our firm’s role is to frame the distinctiveness argument for the examiner, highlighting that the mark’s function is to identify a group and that, in this specific context, it is fully capable of performing its legal function.

Relative Grounds (Conflict with Other Marks)

Your application will also be checked against all prior-ranking trade marks on the register for conflicts under Section 25. The examiner will still cite identical or similar marks for the same or similar goods as a prima facie block to your application.

The Two Critical Requirements for Collective Marks

Herein lies the most specialized part of the application. Before a collective mark can be accepted, we must satisfy two additional requirements that do not apply to standard marks.

• Indication of Mark Type- The application must clearly indicate that it is for a collective mark. This is a procedural step that we ensure is correctly filed, as the mark cannot proceed to acceptance without it.
• The Declaration of Association- This is the most substantial legal hurdle. We must file a formal declaration stating that the applicant is a “collective association” as defined by Section 5(1) of the Act.

This legal definition has two very specific prongs, and our declaration is drafted to prove both:

• Part A: “Constituted for the joint benefit of its members”. We must formally declare that the association is a genuine group, such as a guild or trade body, and not a private company simply licensing a mark for its own profit.
• Part B: “Membership at any time can be ascertained”. This is a practical test of your organization’s governance. We must be able to state, in the declaration, that your association maintains a list of its members, where that list is held, and how often it is updated.

Our service includes advising you on these internal requirements before we file, ensuring your association’s structure qualifies under the law. While IPONZ has the discretion to request a formal statutory declaration, a comprehensive and correctly-drafted initial declaration prepared by our firm often satisfies this requirement without further query.

Why work with us?

A collective mark is a powerful asset that builds trust, communicates shared quality, and protects the reputation of your entire membership. Its application, however, is a specialized legal process that demands a deep understanding of its unique function and requirements. Contact our team of experts to ensure your association’s mark is secured correctly, efficiently, and with the strongest possible legal foundation.