3 Nov 2020
A "certification mark" (or as it is sometimes called a "guarantee mark") is defined by art 27 (a) of The Trade Marks Directive (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Text with EEA relevance) OJ L 336, 23.12.2015, p. 1–26) as:
"a trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified;"
Art 28 (1) of the Directive allows EU member states to provide for the registration of certification or guarantee marks.
Implementing Legislation
The Trade Marks Act 1994 implements the Trade Marks Directive in the United Kingdon. Provision had been made for certification marks before the Trade Marks Directive under s.37 of the Trade Marks Act 1938. Parliament elected to retain certification marks in the new legislation.
S.50 (1) of the 1994 Act defines a certification mark in substantially the same terms as the Directive. S.50 (2) states that the Act applies to certification marks subject to the provisions of Schedule 2. Further provision for certification marks is made in the Trade Marks Rules 2008.
Purpose of Certification Marks
The purpose of such marks is to guarantee the source, contents or method of manufacture or other characteristics of the goods bearing the mark. It is a way in which countries that are party to the WTO Agreement can fulfil their obligations under art 22 of TRIPS (Agreement on Trade-Related Aspects of Intellectual Property Rights) as I explain in Geographical Indications. Art 28 (4) of the Directive permits member states to provide that signs or indications which may serve, in trade, to designate the geographical origin of the goods or services may constitute guarantee or certification marks. Pursuant to that article, para 3 (1) of Sched 2 to the 1994 Act permits the registration of certification marks which consist of signs or indications which may serve, in trade, to designate the geographical origin of the goods or services. As of 14 March 2016 there were 402 certification marks in the UK and 60 applications for such marks had been filed in 2015 (see Freedom of Information Act release by the Intellectual Property Office of 14 March 2016).
Eligibility to Register
Art 29 (2) pf the Directive permits any natural or legal person, including institutions, authorities and bodies governed by public law, to apply for guarantee or certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified. Para 4 of Sched 2 expressly prohibits suppliers of goods or services of the kind certified from registering a certification mark. Certification marks are typically registered by trade associations or standards-setting institutions.
Conditions for Registration
Paea 5 (2) of Sched 2 permits the Registrar of Trade Marks ("the Registrar") to require applicants for the registration of a certification mark to include some indication that it is a certification mark. That is because para 5 (1) prohibits the registration of a certification mark if the public is likely to be misled as regards the character or significance of the mark. This prohibition applies in particular if the mark is likely to be taken to be something other than a certification mark.
Regulations
Para 6 (1) of Schedule 2 requires applicants for registration of certification marks to file with the Registrar regulations governing the use of the mark within a specified time. Para 6 (2) of Sched 2 stipulates that those regulations must indicate:
(a) who is authorized to use the mark;
(b) the characteristics to be certified by the mark;
(c) how the certifying body is to test those characteristics and to supervise the use of the mark;
(d) the fees (if any) to be paid in connection with the operation of the mark; and
(e) the procedures for resolving disputes.
Rule 29 of the Trade Marks Rules requires the regulations to be filed within such
period of not less than 3 months as the Registrar may specify together with
Form TM35 and the appropriate fee.
Examination
Para 7 (1) provides that a certification mark may not be registered unless the regulations governing the use of the mark comply with:
(i) para 6 (2) and any further requirements that may be imposed by The Trade Marks Rules;
(ii) are not contrary to public policy or to accepted principles of morality, and
(iii) the applicant is competent to certify the goods or services for which the mark is to be registered.
Para 8 (1) requires the Registrar to consider whether the above requirements are met. If it appears to him or her that they have not been met, para 8 (2) obliges the Registrar to inform the applicant to that effect and give the applicant an opportunity, within such period as the Registrar may specify, to make representations or to file amended regulations. If the applicant fails to satisfy the Registrar that those requirements are met, or to file regulations amended so as to meet them, or fails to respond before the end of the specified period, the Registrar must refuse the application under para 8 (3). If it appears that those and any other requirements for registration are met, the Registrar shall accept and publish the application pursuant to para 8 (4). The regulations will be published in compliance with para 9 and the application shall proceed in accordance with s.38 of the Act.
Registration
If the application is successful, para 10 requires the regulations to be open for public inspection in the same way as the register.
Infringement
Para 14 provides that in infringement proceedings brought by the proprietor of a registered certification mark, any loss suffered or likely to be suffered by authorized users shall be taken into account. The court may give such directions as it thinks fit as to the extent to which the claimant is to hold the damages, accountable profits or any other than may be recoevered on behalf of such users.
Defences
Art 28 (4) of the Directive provides that a certification mark shall not entitle the proprietor to prohibit a third party from using in the course of trade such signs or indications, provided that third party uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party who is entitled to use a geographical name. This provision is transposed into the laws of the UK by para 3 (2) of Sched 2.
Amendment of the Regulations
No regulations may be amended without the leave of the Registrar (see pars 11 (1) of Sched 2). Rule 30 (1) of the Trade Marks Rules requires an application for the amendment of the regulations to be made in
Form TM36 upon payment of a £100 fee.
Before accepting amendments, the Registrar may (if he considers it expedient) publish the proposed amendments in the journal under para 11 (2) and rule 30 (2). If he or she does so, objectors may oppose the amendments or submit representations in Form TM7.
Assignment
Reg 12 requires the consent of the Registrar for any assignment of a certification mark.
Revocation
In addition to the provisions of s.46 of the Trade Marks Act 1994, para 15 provides that a certification mark may be revoked on any of the following additional grounds:
(a) the proprietor has begun to carry on such a business;
(b) the manner in which the mark has been used by the proprietor has caused it to become likely to mislead the public as to the character or significance of the mark,
(c) the proprietor has failed to observe, or to secure the observance of, the regulations governing the use of the mark,
(d) an amendment of the regulations has been made so that the regulations-
(i) no longer comply with para 6 (2) or other conditions imposed by Trade Marks Rules, or
(ii) are contrary to public policy or to accepted principles of morality, or
(e) that the proprietor is no longer competent to certify the goods or
services for which the mark is registered.
Invalidation
In addition to the provisions of s.47, para 17 provides that the registration of a certification mark may be declared invalid on the ground that:
- the mark was registered in breach of the prohibition against carrying on business,
- the public is likely to be
misled as regards the character or significance of the mark, or
- the regulations do not comply with the statutory requirements.
Further Information
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