A certification trade mark is a special type of trade mark used to indicate that a product or service meets a certain standard. For example, a certification trade mark may indicate that the product or service meets a certain standard of quality, is made of particular materials, has been made in a certain way, or is from a particular location.

In order to be registered certification trade marks must have rules governing their use approved by the Australian Competition and Consumer Commission (ACCC). The ACCC assesses the requirements that the goods/services must meet in order to use the certification mark, and the means by which compliance with the rules will be judged. The purpose of this is assessment is to ensure that the rules are not against the public interest, or likely to be unfair, misleading, anti-competitive, or contrary to public health and safety concerns.

Benefits of Certification Trade Marks

The main benefit of a certification trade mark is to promote the perception of impartiality and objectivity in use of the trade mark. Since the rules governing the use of certification trade marks must be approved by the ACCC, registering a certification trade mark may help to promote public confidence in the trade mark. Furthermore, the rules governing the use of certification trade marks are publicly available. This means that by registering a certification trade mark you are opening your certification process to public scrutiny as well, reinforcing public confidence in your trade mark.

Disadvantages of Certification Trade Marks

Since the rules governing use of the certification trade mark must be approved by the ACCC, there is considerable additional administrative overhead in the registration process. Furthermore, the rules must include:

  • the standards that the certified products or services must meet;
  • the method for determining whether these standards have been met;
  • the requirements that a person must satisfy in order to become an approved certifier;
  • the requirements the owner of the certification trade mark, or an approved user, must meet in order to use the mark;
  • any other requirements for the use of the mark;
  • a procedure for resolving a dispute about whether the goods/services meet the certification standards; and
  • the procedure for resolving disputes about any other issue regarding the mark.

Changes to the certification process or rules governing the use of the certification trade mark must be approved by the ACCC, as must a transfer of ownership of the mark.

Is a Certification Trade Mark Worthwhile?

Given the additional administrative and regulatory burden on certification trade marks vs standard trade marks, careful thought must be given to assess whether they are worthwhile. In most cases, the benefits of a certification trade mark can be achieved by registering a standard trade mark and adopting appropriate business practices and licensing arrangements.

For example, a business may achieve public confidence in their certification method by publishing their standards online. Although not assessed by the ACCC, for many consumers this difference will not be appreciated and it is sufficient that the certification practices subject to some form of public scrutiny.

Additionally, the practices of approved certifiers of goods or services can be governed by licensing (and sub-licensing) arrangements without the requirement that these practices by approved by the ACCC.

Organisations looking to certify goods or services provided by others with a trade mark should think carefully about whether a certification trade mark is appropriate for their situation. This should be done with the guidance of an appropriately qualified professional.

Conclusion

LegalVision can assist with providing guidance to organisations and businesses considering registering certification trade marks. For a free initial consultation please contact us.

Daniel Smith

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