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Certification marks

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Lawdit Solicitors - Expert Author

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4 July 2009

The process of applying for a certification mark, whilst initially similar to a trade mark application has some important differences. The examination process has two main sections. Firstly (as with ordinary trade marks) they are examined under absolute and relative grounds. If this stage is successful certain regulations have to be complied within approximately 9 months of filing the application.

General Information

The main feature of a certification mark is that it is used not by the proprietor of the mark but instead by his authorised users for the purpose of guaranteeing to the relevant public that goods or services possess a particular characteristic. The proprietor's mark certifies the presence of the characteristic and will authorise the use of the mark to anyone who can demonstrate that the goods and services for which it will be used have that characteristic. Certification marks exist to distinguish goods and services from those that have been certified and those that have not.

If the initial examination matters have not been resolved within the nine month period, extensions of time can still be requested if further time is required to compile the regulations.

The regulations themselves must be accompanied with a fee of &pound200.00 once filed, the regulations are examined. If found to be unacceptable, they may be revised until they are in a form acceptable to the Registrar.

There is no limitation on who can be a proprietor of a certification mark except that the applicant/proprietor must have a legal personality. However, certification marks are normally applied for by trade associations or other similar bodies who have an interest in monitoring and maintaining standards in their particular field.

It is important to note that the proprietor of the certification mark cannot be engaged in the supply of the goods being certified. The Registrar does not investigate the applicant’s position in the market, but potential applicants should be wary that if this requirement is not met then the mark may be challenged by a third party through invalidity or revocation procedures.

is to be registered. If the Registrar is not satisfied on this point then the mark shall not be registered ( Para 7 (1)(b) of Schedule 2 of the Act). If the applicant is an established trade body or Government Department then it is unlikely that the Registrar will raise any questions relating to their competency. Save for the aforementioned circumstances, the applicant will, as part of the examination process, be asked to provide information to clarify why they are competent to certify. An explanation of the applicant's history in the particular field will often suffice.

Content of regulations

Who is authorised to use the mark.

Most certification marks are available for use by any person whose goods or services demonstrate the relevant characteristic being certified. If this is the case then this should be stated.

The characteristics to be certified by the mark

What is the specific characteristic of the goods or services that the proprietor is certifying as being present? The regulations should not simply list the goods and services being certified, they should explain what characteristic present in the goods and services is being certified. The aim of the regulations on this aspect is to provide a clear and objective statement that would allow anyone reading them to know precisely what characteristic is being certified.

How the certifying body is to test those characteristics and supervise the use of the mark

Here, an explanation of how the proprietor will test the presence of the characteristic will be needed. Testing does not need to be carried out by the proprietor themselves, but if this is the case an explanation of who (and how) will carry out the testing on their behalf will be needed. An explanation should be given as to how the proprietor will subsequently supervise the use of the mark.

A certification mark does not indicate origin. The message conveyed by a certification mark, when it is applied to goodsor used in connection with services, is that the goods or services have been examined, tested, inspected, or in some way certified by an independent organisation who is not their producer, by methods determined by the certifier/owner to indicate or guarantee a specific characteristic or quality.

A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified. In other words the proprietor of a certification mark shall not trade in the relevant goods or services.

Jane Coyle is a trainee solicitor at Lawdit and can be contacted at jane.coyle@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2009-07-05 18:07:34 in Legal Articles

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