Book Review: Certification and Collective Marks

Katfriend Alex Mogyoros is a doctoral student at the University of Oxford, St. Peter’s College. Her research focuses on trade marks and certification marks, and is supported by a Canadian Social Sciences and Humanities Research Council Doctoral Fellowship. She has kindly provided us with a review of Belson's Certification and Collective Marks: Law and Practice : 

Jeffrey Belson’s book is a very welcome and highly needed contribution to trademark law scholarship. Certification and collective marks are an often-overlooked area of trademark law. They have been described as “shy beasts” [i] that “cast almost no shadow.” [ii]  So it is perhaps not surprising that little has been written on the subject.

For those new to this exotic area of trade mark law, certification marks and collective marks are special forms of trade marks, often regulated under trade mark legislation, but distinct from ordinary trade marks. Certification marks indicate that the goods or services bearing that mark are certified as meeting a particular set of standards or have certain characteristics or qualities. Collective marks, as Belson explains, are marks that generally function as a sign of membership, such as association with a trade or industry association.

This book is the second edition of Belson’s earlier book entitled Certification Marks: Law and Practice published in 2002, and is likely the only major treatise that has been written on the subject in the last 15 years. This book will be of particular interest to those who were keen to see the recent introduction of the EU Certification Mark.

In keeping with the first edition, Belson offers a comprehensive and mostly descriptive account of the law concerning certification and collective marks. It is self-described as a “wide-scope, research-based treatment of both the historical development and present state of applicable laws and policies,” and the book more than lives up to its promise. In eight chapters, Belson is able to bring a lot of clarity and insight to this topic. He positions the law of certification and collective marks in its historical context (Chapter 1), explores the statutory and doctrinal aspects of these legal entities (Chapters 3-5), and consider their application and use in practice – namely in regulation and standard setting, the use of ecolabels and the authentication marking of digital products (Chapters 6-8). His increased focus on collective marks, and focus on ecolabels (those signs that indicate a product is environmentally friendly) are two of the contributions to this new edition that stand out.

His chapter on ecolabels (Chapter 7), which Belson defines as “a voluntary sign, used on or with products, to represent that the product causes significantly reduced harm to the environment) is of particular interest given the growing prominence of such signs, and the increased value sustainable and environmentally friendly brands enjoy. Belson takes a broad approach to ecolabels, considering the legal status and typology of these signs, and the different intellectual property rights that may be engaged by their use. It would have been interesting to see a more focused examination of how ecolabels challenge traditional understandings of certification marks – especially, as Belson notes, some ecolabels are registered as trademarks and others as certification mark. Even still, Belson aptly identifies the different moving parts that are engaged where ecolabels are used, such as the trust consumers need to have for an ecolabel’s message, so these marks can be relied on to ultimately generate a positive environmental impact.

Kats love napping reading

While this book does put forward original arguments on the issues raised by the law of certification and collective marks, these arguments are at times obscured by the thorough and rigorous account of the law. Nevertheless, Belson undoubtedly brings to light some of the emerging issues and debates in this area of intellectual property law. Belson is particularly interested in, for instance, the controversial rule that a certification mark owner cannot make use of his or her own mark. This rule is often due to the idea that for certification marks to be able to perform their purported public interest role, the certifier must remain independent and detached. Belson notes that this rule may be a cause of the under-utilization of certification marks, and is somewhat in “tension” with the EU’s regulatory policy on self-certification of one’s own products, and is an area ripe for further exploration.

While there is no doubt the area of certification marks and collective marks could benefit from more scholarship, and theoretical work, on the issues they raise, this book is an extremely valuable contribution to the intellectual property community. It will no doubt be of value as a reference text, or those looking for a well-researched and thoughtful introduction into the often-under explored world of these shy trademark beasts.

Book details:

ISBN: 978 1 78536 879 0

£112.50

320 pp

Hardback

Available from Edward Elgar Publishers here.

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[i]               Dev Gangjee, 'The Business End of Collective and Certification Marks' in Illanah Simon Fhima (ed), Trademark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertaking (Edward Elgar Publishing Limited 2009) 79.

[ii]               Jeremy Phillips, Trademark Law: A Practical Anatomy (Oxford University Press 2003) 621.

cat pic credit: H. Wechsler