“Are you certified?” is a question thrown around all too often. We’ve all seen the little certification stickers emblazoned on our food packaging, manufactured goods and even specialised services. From a marketing perspective, they entice consumers to purchase the product or service. But have you ever asked yourself, what does trade mark certification mean, and more importantly how did the trader obtain it? To understand how trade mark certification works, we need to know what it is.

Much like a regular trade mark, certification trade marks distinguish one trader’s goods and/or services from another. However, they also distinguish the product’s chracteristics, including:

  • Quality;
  • Accuracy;
  • Composition;
  • Mode of manufacture;
  • Origin of manufacture; or
  • Any other characteristic unique to the product in question.

Representative bodies or groups seeking to regulate a scheme related to the production or delivery of goods and/or services more commonly apply for trade mark certification.

The Registrability of a Certification Trade Mark

Have you decided to obtain a certification trade mark? If so, you need to be aware of the threshold requirements for registration under section 177(2) of the Trade Marks Act 1995 (Cth).

IP Australia will reject your application if your trade mark isn’t capable of distinguishing certified goods or services from those that aren’t. In determining the extent of your trade mark’s ability to distinguish, the Registrar considers:

  • To what extent has the applicant adapted the certification trade mark to distinguish from other traders? and
  • To what extent has the applicant adapted the certification trade mark to distinguish from other traders as a result of use or other circumstances?

Rules Governing the Use of a Certification Mark

Your application to register a certification trade mark must comply with a set of rules governing the mark’s use, and establish:

  • What certification requirements must the product meet before it can bear the mark;
  • Processes for determining the certification requirements;
  • What person or entity is responsible for ensuring compliance with the certification requirements; and
  • Any other matter the Australian Competition and Consumer Commission (ACCC) states.

Assessment of a Certification Mark by the ACCC

The ACCC must assess a certification trade mark before it’s registered.

In assessing the mark, the Commission must be satisfied that the mark does not cause a detriment to the public by promoting:

  • Restrictive trade practices;
  • Unconscionable conduct;
  • Unfair practices; or
  • Unsafe production/delivery methods.

If the Commission decides that the rules governing the certification mark’s use are detrimental to the public, the mark will not proceed to registration.

Rights Given Under a Certification Trade Mark

As with other types of trade marks, the registered owner of a certification trade mark has the right to the exclusive use of the trade mark. Apart from this however, the registered owner of a certification trade mark also holds the exclusive right to licence the mark to others whose goods or services accord with the rules governing the mark’s use.

Conclusion

LegalVision’s trade mark lawyers can assist you with applying for a certification trade mark, as well as draft the rules of use.

Questions? Please get in touch on 1300 544 755.

Vanja Simic

Next Steps

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