It has been one and a half years since EU certification marks were launched by the EU Intellectual Property Office following the EU trade mark reforms (see our earlier blog for details of this second wave of reforms). This blog looks at how popular they have been and what the EUIPO has learnt so far.
What are certification marks?
A trade mark, as we all know, is used as a badge of origin to signify that goods or services originate from a particular supplier. Collective trade marks act as a badge of origin for an association of members. Certification trade marks perform a different function altogether and are designed to distinguish certified goods and services from non-certified goods and services.
Trade marks can be owned by any individual or business, and collective marks can be owned by any association, which sells or has an intention to sell the good and services in question. Certification marks, on the other hand, can only be owned by individuals or businesses which do not sell the goods or services in question. The point is that the entity that owns the certification mark should be an independent and neutral entity that is able to objectively ensure that the goods or services being sold meet the required certification standards.
One of the main distinguishing features of a certification mark is that it must have an accompanying set of "regulations of use", which certified users of the mark must comply with.
As of 22 February 2019, the EUIPO had received 172 certification mark applications and 100 of those have received deficiency objections. Only 15 have so far been registered and published.
Grounds for refusal
So the figures suggest that it is fairly difficult to obtain a registration for an EU certification mark, but what are the issues that the EUIPO has been encountering?
In addition to being subject to the same absolute grounds for refusal as standard trade marks, EU certification marks can also be refused for several specific reasons. The most common reason why the EUIPO has refused certification mark applications to date is because the regulations filed by the applicant do not meet the required standard.
One of the key points is that the standard/s to be certified by the mark must be linked to all the goods and services applied for and must be clearly defined.
In addition, regulations must:
- be filed within two months of the filing date of the application;
- comply with public policy and accepted principles of morality (e.g. cannot discriminate without objective criteria);
- be drafted in a "clear and accessible" manner (i.e. with sufficient clarity and precision to enable the reader to understand the requirements for using the mark); and
- a representation of the mark (must be exactly the same as shown in the application);
- the name of the applicant;
- a declaration that the applicant does not carry on a business involving the supply of goods or services of the kind certified;
- a list of the goods or services covered by the mark;
- the characteristics in respect of which the goods and/or services are to be certified (e.g. materials to be used, mode of manufacture of goods, performance of services);
- the conditions governing use of the mark, including the sanctions for failing to comply;
- the persons authorised to use the mark; and
- how the certifying body is to test those characteristics and to supervise the use of the mark.
Another important difference between EU certification marks and certification marks in some member states, including the UK, is that an EU Certification mark cannot be used to certify the geographic origin of the goods. The systems of geographical indications already in place under EU law, namely the protected designation of origin (PDO) and protected geographical indication (PGI), were considered to be sufficient for this purpose.
So, there is no real magic to it. The message is to take care to ensure that the regulations of use filed with an application for an EU certification mark comply with the requirements set out above. If they do then your application should stand a fighting chance of being registered.
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