8 Things To Know About The New EU Certification Marks

Nadaline Webster,

In late of March of this year, Regulation (EU) 2015/2424 of the European Parliament and the Council ushered in a number of changes to the European trademark registration system. The last of these changes came into force on the 1st October 2017. Amongst these is the introduction of certification trademarks to the EUIPO. While these kinds of marks are new to the EUIPO, they have been in use in many Patent Offices around the world for quite some time, including some national offices within the EU.

With increasing harmonisation of trademark systems and the globalisation of commerce, it will be important for those governing bodies and standards authorities seeking certification marks to familiarise themselves with how these new marks will work in the EU and also the differences with some of the international systems further afield.

1. Certification marks are not treated the same everywhere

The EUIPO has joined the list of regions that apply regulation to the registration and use of certification marks in their own right. Other areas include Australia, Brazil, China, Dominican Republic, Egypt, India, the United Kingdom and the United States. In some cases, certification marks are regulated within registration systems for collective marks and these regions include France, Germany, Iran, Mexico, Philippines and until recently, the European Union. Other regions, such as Japan, do not provide for the registration of certification marks at all.

2. Certification marks have a different definition than a regular trademark

Certification marks are designed to be issued by governing bodies or standards authorities to certify that a particular company supplies goods or services to a set of standards imposed by the particular body. This does not integrate well with the standard function of a trademark which, at its core, identifies the source of goods or service rather than the quality or standard. 

The new EU certification marks will be defined as (1) "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.” 

A similar definition applies in the United States where the USPTO defines certification marks as “owned by one party who certifies the goods and services of others when they meet certain standards.”

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3. There are more application requirements

In the EU, you must submit a statement that the application is for an EU certification mark which must be filed within two months of the application. There must also be a statement setting out the conditions intended to be imposed upon a third party intending to qualify for use of the mark and the regulations that will accompany such use.

4. There are different use requirements for certification marks

The intention of certification marks in general is to be assigned to third parties for use but that use will be subject to strict limitations. Accordingly, the owners of the certification mark must set out the qualifying criteria of goods or services that will be qualified to use the mark, the terms of use and the steps intended to be taken by the owner of the mark to ensure accuracy and supervision of such use.

5. The owner cannot always use the mark themselves

In step with the US and many other regions, the new EU certification marks will not permit use of the mark by the registered owner. A company or organisation who is involved in supplying relevant goods and services in a commercial capacity will not be permitted to own a certification mark. There are some countries that do permit use of a certification mark commercially by the registered owner, including Germany and Austria.

6. Certification marks exclude geographical origin

The new EU certification marks will not extend to marks which merely propose to certify a geographical origin for a particular good or service.

7. Certification marks can be more vulnerable to cancellation

Many countries include specific regulations allowing a third party to apply for cancellation in circumstances where the owner of the certification mark permits or causes it to be used in a manner which contravenes the regulations supplied by the owner during the application process and for which the mark was approved. Examples include a refusal to license it to a third party who meets the standards imposed or failing to address improper use of the mark.

8. They come with additional responsibilities

The use of a standard trademark comes with a set of requirements regarding use of the mark but those requirements are imposed on the company who both owns and uses the mark in commerce. In the case of certification marks, those requirements are imposed on the owner but it should be remembered that the owner is not the person who uses the mark in commerce. Certification marks impose a responsibility on the owner to properly control and manage the licensing and use of the mark in commerce by third parties.

To find out more about how these new marks will function in Europe and gain helpful insider tips on navigating the EU trademark system as a whole, join our experts Jan Gerd Mietzel and Carolina Calheiros. Click here to register for our free webinar! 

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