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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.
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
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
£200.00 once filed, the regulations are examined. If found to be
unacceptable, they may be revised until they are in a form acceptable to the
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 firstname.lastname@example.org
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