Certification Trade Marks
Certification Trade Marks
The Trade Marks Act 1995 provides for the registration of several different kinds of trade marks. Most registrations are of ordinary trade marks which are used by their owners to distinguish their goods or services in the marketplace. Registration provides a relatively simple means of protecting such trade marks from misuse by other traders and so protects a valuable business asset. Certification trade marks serve a quite different purpose.
What is a certification trade mark?
A certification trade mark may be registered in respect of goods and services.
a) When applied to goods in the course of trade, a registered certification trade mark (CTM) indicates that those goods have been “certified’ as meeting a particular standard of quality of accuracy, or as having a particular composition, mode of manufacture, geographical origin or some other characteristic.
b) A CTM may also be registered for use in connection with services to certify that the services provided have particular characteristics or meet specified standards of quality and accuracy.
Below are just a few of the many CTMs which are registered.
These marks have been registered for various classes of goods, including the class which covers clothing (class 25). However, their use on articles of clothing does not tell the purchaser who made or marketed the clothing. Instead, each of these marks certifies that the articles of clothing on which it appears have particular characteristics by certifying something about the fabric from which they are made.
The first four marks, taken in order, certify the composition of the fabric is pure new wool, a wool blend, pure cotton, or a cotton blend. The next three marks show that the fabric has been certified for its ability to absorb ultra-violet radiation. The last one certifies that the fabric is
Harris Tweed manufactured in the Outer Hebrides.
Note: Full details of the characteristics certified by these CTMs can be found in the Rules held in the Trade Marks Office.
Who certifies the goods or services?
The owner of the trade mark, or a person approved by the owner (an approved certifier), is responsible for ensuring that the CTM is used in accordance with the set of rules which govern its use and set the standards for certification. The owner or approved certifiers must be able to show they have the necessary expertise to test whether those standards are being met.
Who uses the certification trade mark by applying it to the goods or services?
The owner may use the CTM on goods or services, which it deals with or provides, but this is not a requirement. It is more usual that the owner allows other persons to become approved users of the CTM. In either case, the use must be in accordance with the rules governing use of the CTM.
What are the requirements for filing a certification trade mark?
The application procedure for a CTM is the same as for an ordinary trade mark except that a copy of the rules governing the use of the CTM must also be filed. These rules should be filed when the application is filed or as soon as possible after filing.
What must be contained in the rules for a certification trade mark?
The rules governing the use of a CTM must specify:
• the certification requirements that goods or services must meet for the CTM to be applied to them; and
• the process for determining whether goods or services meet the certification requirements; and
• the attributes that a person must have to become an approved certifier to assess whether goods or services meet the certification requirements; and
• the requirements that the owner of the CTM, or an approved user, must meet to use the CTM in relation to goods or services; and
• other requirements about the use of the CTM by owner or an approved user; and
• the procedure for resolving a dispute about whether goods or services meet the certification requirements; and
• the procedure for resolving a dispute about any other issue relating to the CTM.
The rules must include any other matter the Australian Competition & Consumer
Commission (ACCC) requires to be included, and may also include any other matter the ACCC permits to be included.
Once a CTM is registered the rules are kept on file at the Trade Marks Office in Canberra. They are available for inspection and photocopies of the rules will be sent to people who request them
What happens after filing a certification trade mark?
The steps following filing of a CTM are shown in the attached diagram. The registrability of a CTM is examined in much the same way as an ordinary trade mark. The applicant is advised if there are any grounds for rejecting the application or if there are formality matters which need attention.
However, before accepting an application for a CTM, the Registrar must first send a copy of the application and the rules, and any other relevant documents, to the ACCC. Under the Trade Marks Act 1995, the ACCC is required to consider CTM applications before acceptance to assess whether:
• the attributes of the approved certifier (determined by the owner of the CTM) are sufficient to enable competent assessment of the goods or services; and
• the rules governing use of the CTM would not be detrimental to the public, and are satisfactory in the light of certain principles in the Trade Practices Act 1974.
In making its assessment, the ACCC considers the rules themselves, and how effective they are in ensuring the specified standards are met, and it also considers broadly the effect the certification scheme is likely to have on the community. For example, the ACCC will consider whether use of the CTM is likely to lessen competitiveness and lead to restrictive trade practices or price fixing. The ACCC may also require additional provisions to be included in the rules.
After considering the application, the ACCC makes an initial assessment proposing to either approve or disapprove the CTM. The Registrar advertises this initial assessment in the Official
Journal of Trade Marks and for one month after the advertisement, any person or organisation having an interest in the use of the CTM can make submissions, or seek a conference with the ACCC, before the ACCC considers its final assessment.
The ACCC then proceeds to make the final assessment. If the final assessment is favourable, the ACCC will issue a certificate to the applicant and to the Registrar of Trade Marks who will then accept the application. The acceptance will be advertised in the usual way and, if there is no opposition, the CTM will be registered on payment of the required registration fee. (Should the final assessment of the ACCC be adverse, the applicant may apply to the Administrative Appeal Tribunal (AAT) for a review of that decision.)
The role of the ACCC is described in more detail in a brochure “Certification Trade Marks – role of the ACCC” which is available from the ACCC.
The brochure also outlines the steps to be taken if the owner wishes to change the rules after the registration or to assign the CTM.
Where to go for more information
You can contact IP Australia’s Customer Service Network on 1300 651 010 or email email@example.com .
The Australian Competition and Consumer
Commission on 1300 302 502.
© IP Australia 2010