Certification marks are part of national trade mark law in a number of Member States and since the reform of European trade mark law, the EUTMR now covers them under articles 83 to 93. According to article 83 paragraph 1 EUTMR a certification mark is
“capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.”
So what’s the difference between certification marks, collective marks and geographical indications?
Unlike collective marks, certification marks can be filed by “natural persons”. Moreover, collective marks guarantee that the respective EUTM is owned by an association not a characteristic of the protected goods and services. It is important to understand that the person applying for a certification mark does not manage a business involving the supply of goods or services of the kind certified. Evidently, the person who produces, sells or offers the goods and services cannot (and should not) also guarantee that these goods and services have a certain characteristic (for instance, high quality). As a consequence, a collective of producers which registers a collective mark cannot file the same mark as a certification mark. However, a certifying body or authority can file a certification mark and the same mark as collective mark.
Geographical indications are names or signs used on products which correspond to a specific geographical location or origin (a town, region or country). An example is the “appellation d’origine controlee” (AOC) for agricultural products in France. The use of a geographical indication may serve as a certification that the product possesses certain qualities, is made according to traditional methods or enjoys a certain reputation due to its geographical origin. As such geographical indications serve the same purpose as certification marks. However, Article 83 paragraph 1 EUTMR expressly excludes geographical indications. The systems of geographical indications in place under EU law, namely the protected designation of origin (PDO) and protected geographical indication (PGI) were considered to be sufficient and more suitable (as they might be more detailed or more tailored to the subject matter).
How popular are EUIPO certification marks and how tricky is the “regulation” requirement?
So far the EUIPO has received 116 applications for certification marks, of which four have been withdrawn whilst the remainder are filed, under examination or published. From a practical point of view the biggest hurdle for successfully registering a certification mark is the “regulation” requirement. Art. 84 EUTMR requires all applicants to submit a set of rules governing use of an EU certification mark and there are a number of points to be observed. This regulation must contain the following:
- A statement that the applicant does not supply the certified goods/services itself.
- The representation of the EU certification mark.
- The goods/services which are to be certified and their characteristics.
- The conditions set for the use of the EU certification mark and the sanctions in case those are breached: this is usually a description of the process that a company must go through in order to obtain the certification and an outline of the way the owner will control that the standards are observed.
- The persons authorized to use the EU certification mark: EUIPO accepts a list or hyperlink to an updated list.
- The methodology of testing and monitoring set up by the certifying entity.
Sounds easy, right? However, in reality these requirements can cause headaches. The EUIPO has strict requirements for the representation of the mark. No variation is allowed at all including black and white depictions. Likewise, the goods and services must match those of the application. It is also not entirely clear how the applicants must present the regulation. The EUIPO will issue a template to facilitate the redaction of the testing and monitoring process applied by the certifying entity to help applicants. So far, seven certification marks were registered and four have been published. A brief check of the EUIPO online register shows that regulations submitted by the applicants vary considerably in length and complexity. It will certainly take some time until the Office has defined the standard here.
For the rest, the regulation must be clear and understandable, not be contrary to public order and it must be submitted within two months after the filing of the EUTM application.
The certification mark is subject to examination on absolute grounds, as is any other “regular” EUTM. Moreover, there’s a specific ground for certification marks requiring the applicant to submit the regulation, otherwise the certification mark application will be refused according to Art. 85 paragraph 1 EUTMR. The same applies to International Registrations designating the EU according to Article 76 paragraph 1(b) EUTMDR.
What about revocation or invalidity?
After registration, the certification mark becomes open to revocation actions as provided in Art. 91 EUTMR – the owner is required to enforce the regulation properly. If it does not take steps to prevent the EU Certification Mark from being used in a manner that is incompatible with the conditions of use laid down in the regulation the mark may be revoked. If the Offices accepts a certification mark for registration although it does not satisfy the specific requirements for such a trade mark the EUTM is subject to an invalidity action according to Art. 92 EUTMR.