Following on from my previous posts regarding defensive and series trade marks, we continue our summary of less common trade mark applications which may be beneficial in providing additional protection to your brand in Australia. Defensive, series, collective and certification trade marks are not common trade mark applications, but provide unique and strategic protection which may supplement existing protection and/or provide additional protection. As seen below, of the 863,467 registered marks in Australia, 590 are certification marks. In this third article we look at certification trade mark applications, when they are useful, and how they work.
What is a Certification Trade Mark Application?
Section 169 of the Trade Marks Act 1995 (Cth) (‘TMA’) defines a certification trade mark as a sign, used or intended to be used, to distinguish goods or services:
(a) dealt with or provided in the course of trade; and
(b) certified by a person (owner of the certification trade mark), or by another person approved by that person (such as an approved certifier), in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture;
from other goods or services dealt with or provided in the course of trade but not so certified.
Requirements for Certification Trade Mark Application in Australia?
The application for a certification trade mark is similar to a standard trade mark application with one key difference … THE RULES. In accordance with section 173 of the TMA, a person who has filed an application for the registration of a certification trade mark must file a copy of the rules governing the use of the certification trade mark. The rules must specify the following:
- the requirements (the certification requirements) that goods and/or services must meet for the certification trade mark to be applied to them; and
- the process for determining whether goods and/or services meet the certification requirements; and
- the attributes that a person must have to become a person (an approved certifier) approved to assess whether goods and/or services meet the certification requirements; and
- the requirements that a person, who is the owner of the certification trade mark or an approved user, must meet to use the certification trade mark in relation to goods and/or services; and
- the other requirements about the use of the certification trade mark by a person who is the owner of the certification trade mark or an approved user; and
- the procedure for resolving a dispute about whether goods and/or services meet the certification requirements; and
- the procedure for resolving a dispute about any other issue relating to the certification trade mark.
Another key difference when compared with a standard trade mark application is the requirement for a certification trade mark application to be considered and approved by the Australian Competition and Consumer Commission (ACCC).
The ACCC must provide a certificate stating that they are satisfied that the attributes listed in part 3 of the above rules for a person to possess in order to become an approved certifier are sufficient to enable said person to assess competently whether goods and/or services meet the certification requirements. Furthermore, the ACCC must be satisfied that the rules would not be to the detriment of the public and the rules are satisfactory. The rules must also include any other matter the Commission requires to be included and may include any other matter which the Commission permits to be included.
Why have a Certification Trade Mark Application?
Certification trade marks can ensure that the goods/services being supplied and/or purchased meet a minimum standard as expected by the owner of the certification mark. Consider whether it is beneficial that you are able to determine by a mark alone whether the person preparing and filing your taxes has undergone an approved course and is properly trained to do so correctly.
Certification trade marks have benefits for consumers, producers, and the owner of the certification mark.
From the perspective of the owner of the certification mark, the mark may be licensed for a fee. These fees can be used for training of the approved certifiers as well as for ensuring that those licensees are abiding by the rules. This is a self-funding quality assurance and quality control program.
Producers are afforded the right to mark their goods with the mark. The mark can help to distinguish their goods/services, not just with their own trade mark, but also with a further mark that may make their goods/services more attractive than their competitors.
Consumers can be assured of the uniform quality of the goods/services being provided which have the certification mark applied thereto. As such, these expectations may be met by assurance that the goods are produced or made from uniform practices or previously purchased goods/services.
Certification trade marks may also directly or indirectly ensure that competition within certain industries does not lead to qualified suppliers or providers being undercut by those who are not qualified to supply or provide certain goods or services. As such, associations and clubs may have a special interest in the use of certification trade marks as an additional means of quality control.
Certification marks may currently influence your purchasing habits and you may not even be aware of it. From a marketing perspective, they may indicate that the product or service meets a certain standard of quality, is made of particular materials, has been made in a certain way, or is from a particular location. For example, the following is Australian trade mark registration no. 451318 and is a well-known mark in Australia:
This mark may be applied to all goods in classes 1 to 34. As a side note, IP Australia no longer allows applications to designate all goods under a class. As such, most newer certification trade marks will designate more specific goods. Under the rules of this certification mark, the entity applying the mark may describe their goods in one of the following six groups or ways:
- “Product of Australia” and similar
- “Australian Made”, “Made in Australia” or “Manufactured in Australia”
- “Australian Grown”
- “Australian Grown” followed by the name/s of the ingredient/s to which the claim relates
- “Australian Seafood”
In using one of the above markings, the entity applying the mark must only apply the mark to goods which Australia is the country of origin of each significant ingredient or significant component of the good and all, or virtually all, processes involved in the production or manufacture of the good must have happened in Australia. In other cases, the good must be last substantially transformed in Australia. The full set of rules for this specific certification mark can be found here or by clicking the link on the IP Australia website shown below.
Certification trade marks can be a great way to license your mark to any traders who wish to sell goods/services which follow the rules as outlined under the registration. If you are interested in a certification trade mark application, you wish to use a certification trade mark, or you are unsure whether one is right for you or your business, contact a Trade Marks Attorney at Michael Buck IP for advice, preparation, and filing of your trade mark application.