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The purpose of a Certification Mark is to tell the consumer that a product or service meets a specific standard set by a regulatory body. This criteria can include a variety of things such as; the goods and services have certain characteristics, or the user has certain qualifications.
Some examples of certification marks you may be familiar with are:
The purpose of a traditional trade mark is to identify the origin of the goods or services offered under the mark. A traditional trade mark will be used by the trade mark owner, or by a third party under licence.
The essential function of a certification mark is fundamentally different to that of a traditional trade mark. A certification mark is an indication that the goods or services being offered comply with a certain set of standards – it is essentially a stamp of quality. Certification marks are owned by the regulatory body which governs use of the mark, and it is prohibited for that body to make use of the mark itself. Rather, a certification mark is used by third parties who are independent of the regulatory body, but who comply with the standards set out by the regulatory body.
How do I know if I need one?
It is important to ensure that you apply for the right type of trade mark for your business. Whilst it might be tempting to simply apply for a traditional trade mark in order to avoid the burden associated with filing regulations, applying for the wrong kind of mark can have consequences in the long run that could lead to a loss of rights.
Recent EU case law (DPG Deutsche Pfandsystem v EUIPO – Užstato sistemos administratorius (case T-774/21) indicates that it is essential to file for a certification mark and not a traditional trade mark if the mark is being used as a certification mark. In this case, there were the following facts:
DPG is part of the German recycling system for beverage containers mark of plastic, glass or metal. Consumers can return empty bottles and receive a small amount of money back in return. Bottles which are part of the scheme display this sign.
DPG obtained a traditional EU trade mark registration for the sign. During opposition proceedings against a third-party application, DPG was put to proof of use. The EU IPO found the mark had not been used because it would not be perceived as a mark of the origin of the bottles it was placed on, rather it would only be understood by consumers as a descriptive indication that the goods were made of disposable packaging and were part of the deposit scheme. On appeal, the General Court agreed with this decision confirming that a trade mark is not used in accordance with its essential function of identifying origin if the public perceives the trade mark as intending to certify the quality of the goods without guaranteeing that the goods originate from a specific source. DPG was therefore unable to prove use of its traditional trade mark. Had DPG applied for a certification mark instead, we would expect the outcome of the case to have been different.
It is also worth noting that, at least in the UK, certification marks and traditional trade marks are mutually exclusive, and you will be prohibited from obtaining both a traditional trade mark and a certification trade mark registration for the same sign for the same goods or services. It is therefore essential that the right form of protection is sought at the time of applying.
If your mark is being used by third parties to indicate their business or their products meet certain standards, it is possible you may require a certification mark.
The process for applying for a certification mark is similar to the process of filing a traditional trade mark. The key difference is that as part of the application process, the Applicant will be required to file Regulations which outline the criteria associated with use of the mark.
Unlike traditional trade mark applications, the Applicant is also scrutinised during the application process to ensure it is competent to certify the goods and services for which the mark is being registered. For example, the Applicant may need to be part of a Government Department or a trading body or provide evidence it is competent to certify the goods and services.
Provided they comply with the relevant regulations and requirements set by the Certification Mark owner, anyone can use it. Typically, the prospective user will apply to the owner requesting to use the mark and provide evidence that its goods or services comply with the regulations. Use of the mark often comes with a fee, but this is down to the requirements set by the owner. It is worth noting that ownership of a certification trade mark comes with a lack of control over who can use the mark, as long as the third party complies with the regulations, the trade mark owner does not have the option to refuse permission to use the mark.
If you have any queries regarding this topic and would like assistance on your IP strategy, please contact Sarah Neil and Devyani Patel of our team.
Category: Latest Insights | Author: Sarah Neil, Devyani Patel | Published: | Read more
