One of the biggest changes to the EU trade mark system which came into force on 1 October was the introduction of the EU Certification Mark. So far, however, it seems that uptake has been relatively cautious, with only 26 applications being filed to date, compared to the 21,907 applications filed on the day the EUTM was launched back in 1996.
Some of the more familiar names in the list of applications filed include HARRIS TWEED, JERSEY ROYALS and MANUKA HONEY, pointing to the ways in which Certification Marks might overlap with other forms of protection such as Protected Designations of Origin and Protected Geographical Indications. JERSEY ROYAL, for example, has been registered as a Protected Designation of Origin since 1996, whilst HARRIS TWEED is protected in the UK by the Harris Tweed Act 1993.
As these early adopters seem to have noticed already, the different forms of protection available can serve different roles in protecting a brand. Certification marks can only be registered by parties which do not produce items themselves, but which act as regulators controlling the quality of the products bearing the mark. Collective marks, on the other hand, can be used by the proprietor. Whilst many Certification marks do impose requirements regarding the geographical origin of their products, it’s not necessary in order to obtain a registration, unlike PDOs/PGIs which always protect a specific geographical origin.
The correct form of protection will always depend on the nature of the brand, the nature of the owner and the type of protection which needs to be obtained. The addition of the new EU Certification Mark gives another option for protection, and is to be welcomed as providing extra flexibility and potentially another string to the bow of brand owners.