Certification Marks

Introduction

Trade marks law permits an entire industry or trade to protect itself, by the registration of a certification mark to act as a guarantee that goods or services bearing the mark meet a certain standard or possess a particular characteristic. It is evident that traders believe that the use of a certification mark on their goods or services gives impetus to the sale of their products and "adds to the reputation" of their products.

Certification marks are used alongside "ordinary" trade marks. The fundamental difference between the two marks is that one serves to identify the individual trader, while the other serves to guarantee some characteristic of the goods or services.

Definition

A certification mark is a mark indicating that the goods or services on which it is used are certified by the proprietor of the mark in respect of geographical origin, material, method of manufacture of goods, standard of performance of services, quality, accuracy, or other characteristics.

Specification

When completing an application form to register a certification mark, please note that the specification(s) filed should reflect only the goods and/or services which are produced or provided by the authorised user of the mark and which are actually being certified by the certification mark proprietor.

Who can apply for one?

Any person or organisation, who authorises, or will authorise, traders to use it in relation to certain goods or services (which the proprietor himself must not trade in and who certifies, or will certify, that those goods or services possess certain characteristics.

What can be accepted as a certification mark?

A certification mark must, in the first instance, meet the acceptance requirements for "ordinary" trade marks, apart from geographical origin. See "The examination process".

A certification mark must also meet the detailed provisions set out in Schedule 2 of the Trade Marks Act 1994.

What other requirements are there?

An applicant for a certification mark must also supply a copy of the regulations governing the use of the mark, which must indicate:

• who is authorised to use the mark,
  
• the characteristics to be certified by the mark,
  
• how the certifying body is to test those characteristics and supervise the use of the mark,
  
• the fees (if any) to be paid in connection with the operation of the mark, and
  
• the procedures for resolving disputes.
  
• The regulations do not have to be sent at the same time as the application but must be sent within nine months of the date of the application. They must be accompanied by:
  
• A declaration of competency that the applicant is competent to certify the goods or services for which the mark is to be registered.

What does the Registry check?

Before a certification mark is allowed to be registered, the Registry consider whether:

• the mark is registrable as a trade mark,
  
• the applicant is competent to certify the goods or services for which registration is sought,
  
• the regulations governing the use of the mark are satisfactory, and
  
• n all the circumstances, registration would be to the public advantage.

We may accept the application, outright or after amendment, etc, or refuse the application, subject to the applicant's right to a hearing.

Who can use a certification mark?

Use of a certification mark will be permitted by the owner of the mark to anyone who complies with the regulations and produces goods, or supplies services, which have the certified characteristics.

Form(s)

Filing of regulations governing the use of certification or collective marks (TM35)

The application must be submitted with a fee sheet, which must be filled with all fee bearing forms.