Introduction
The quality of products has become the main concern for customers as a consequence of the great variety of goods and services offered on the market. This comes from the need to identify and guarantee the material, mode of manufacture of goods or performance of services, quality, accuracy, and compliance with specific standards. This can be guaranteed by certification marks, whose main function is to guarantee specific characteristics of the goods and services. Unlike the individual marks, which purpose is to guarantee the origin of the goods or services designated with the mark, the use of a certification mark on a product or in relation to a service certifies compliance with an accepted certification/quality standard and is controlled by the owner of the certification mark who shall ensure that the goods and services meet the required certification standards.
Certification marks have existed at a national level and are highly valued in certain industries as these marks can be registered in 120 countries worldwide. As of 1 October 2017, this became possible at an EU level, due to the fact that any natural or legal person, including institutions, authorities, and bodies governed by public law, may apply for registration of European Union certification marks before the European Union Intellectual Property Office (EUIPO). The introduction of European Union certification marks provides businesses a legal tool for protecting and fostering their commitment to quality.
Applications for registration of European Union certification marks
Definition
Before providing more information about the registration procedure, the definition of an EU certification mark shall be provided. According to Article 83 of Regulation 1001/2017, “an EU certification mark shall be an EU trademark which is described as such when the mark is applied for and 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”. The possibility of certifying the geographical origin of goods or services is explicitly excluded.
Who can file an application for registration of an EU certification mark?
Any natural or legal person, including institutions, authorities, and bodies governed by public law, may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified. The proprietor of a certification mark is precluded from using the certification mark for the certified goods or services covered. It shall be indicated that the application is for a certification mark, and the applicant shall submit regulations governing the use of the EU certification mark within two months of the date of filing. In order for a certification mark to be registered, it must comply with the same requirements needed for an individual mark, which means that it shall not fall within the absolute grounds for refusal set forth by article 7 of Regulation 1001/2017. It is important to note that the regulations governing the use of the EU certification mark are paramount for the legal protection of the certification marks. On the day of the writing of this article, more than two and a half years since 1 October 2017, the EUIPO has received 249 applications for registration of EU certification marks, many of which have received deficiencies. The statistics show that certification marks are more difficult to be registered than individual marks. In addition to being subject to the same expertises as individual marks, formal examination, as well as examination as to absolute grounds for refusal, European Union certification marks, can also be refused due to the fact that the deficiencies have been identified in the provided regulations of use. An application for an EU certification mark shall also be refused if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark.
It is important to note that the regulation of the use of an EU certification mark shall be drafted in a clear and accessible manner, i.e. with sufficient clarity and precision to enable the reader to understand the requirements that must be met for using the EU certification mark. The regulations of use must also comply with public policy and accepted principles of morality, e.g. the applicant would not be entitled to carry out the certification (for example, for lack of compliance with statutory provisions); the authorization or conditions of use discriminate between market operators without due justification (such as a lack of objective criteria or application of inadmissible criteria).
The regulations of use must contain the following obligatory information:
- Name of the applicant.
- A declaration of the applicant stating that it does not carry on a business involving the supply of goods or services of the kind certified.
- Representation of the EU certification mark. The representation of the sign must be exactly the same as the one reflected in the application.
- The goods or services covered by the EU certification mark. The list of goods and/or services must be exactly the same as the one provided in the application.
- The characteristics of the goods and/or services to be certified by the EU certification mark (e.g. material, mode of manufacture of goods or performance of services, quality, or accuracy). The characteristics must be clearly specified and explained in respect of which goods and/or services are being certified, with the need to allow the relevant public to clearly and precisely understand them. In case it covers a variety of products, with different characteristics to be certified, depending on the individual product category, standards to be certified must be specified for each of the different types of goods. With regard to services, their characteristics, and not the features of the service providers must be specified for each of the different types of services. The description of the characteristics can be described in general terms, with no need to detail all technical aspects and specifications, which can be simply completed by references to an official (i.e. private or public bodies) or generally available sources (e.g. by the applicant itself) by means of annexes or direct website links. The goods or services at issue cannot be certified in respect of their geographical origin, as established in Article 83.1 of Regulation 1001/2017.
- The conditions governing the use of the EU certification mark, including sanctions. The regulations of use need to include specific conditions of use imposed upon the authorized user: – that the mark is to be used as an EU certification mark; – whether there are fees to be paid in connection with the use of the mark; – etc. The regulations of use shall specify the appropriate sanctions that apply in the event: – the conditions governing the use are not respected; and – the EU certification mark is misused.
- The persons authorized to use the EU certification mark. The regulations of use shall indicate who is entitled to use the EU certification mark: – Any person who meets the required standard; – A specific category of persons (the objective criteria to be clearly set out). If the applicant intends to list the authorized users of the EU certification mark, it must be referred to by means of a website link that will allow a systematic update without the need to modify the regulations of use.
- How the certifying body is to test those characteristics and to supervise the use of the EU certification mark. The regulations of use shall specify the testing methods used and the supervision system employed by the applicant/owner of the EU certification mark to make sure that the goods and/or services marked actually possess the certified characteristics: – the methods and frequency of the testing and supervision; – the qualification of the persons carrying out the tests and the supervision; – the ‘triggers’ of additional or enhanced tests or supervision measures; – etc. Both sets of measures (testing and supervision) have to be described by the applicant with sufficient clarity as to convince the Office, as well as market operators, that these are adequate in order to ensure that the certification mark truly covers goods and/or services that are effectively certified. The applicant does not necessarily need to carry out the tests or supervise the conditions of use. In some cases, it might be necessary to cooperate with more specialized external testers and/or supervisors. Likewise, testing the goods and/or services marked, as well as supervising the conditions of use, can be limited to sample or random checks and do not need to extend to the entirety of certified goods or users.
If there are any changes in the regulations of use, the proprietor of an EU certification mark shall submit to the EUIPO any amended regulations governing use. Amendments to the regulations governing use shall take effect only as from the date of entry of the mention of the amendment in the Register.
Who is entitled to bring an action for infringement?
Only the proprietor of an EU certification mark, or any person specifically authorized by him to that effect, shall be entitled to bring an action for infringement. The proprietor of an EU certification mark shall be entitled to claim compensation on behalf of persons who have the authority to use the mark where they have sustained damage as a consequence of unauthorized use of the mark.
Grounds for revocation
The rights of the proprietor of an EU certification mark shall be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings, where any of the following conditions is fulfilled:
- if, within a continuous period of five years, the mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use; however, no person may claim that the proprietor’s rights in an EU trademark should be revoked where, during the interval between the expiry of the five-year period and filing of the application or counterclaim, genuine use of the trademark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;
- if, in consequence of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service in respect of which it is registered;
- if, in consequence of the use made of the trademark by the proprietor of the trademark or with his consent in respect of the goods or services for which it is registered, the trademark is liable to mislead the public, particularly as to nature, quality or geographical origin of those goods or services;
- if the proprietor no longer complies with the requirements set out in Article 83(2);
- if the proprietor does not take reasonable steps to prevent the EU certification mark being used in a manner that is incompatible with the conditions of use laid down in the regulations governing use, amendments to which have, where appropriate, been mentioned in the Register;
- if the manner in which the EU certification mark has been used by the proprietor has caused it to become liable to mislead the public as regards the character or the significance of the mark, in particular, if it is likely to be taken to be something other than a certification mark;
- if an amendment to the regulations governing the use of the EU certification mark has been mentioned in the Register in breach of Article 88(2), unless the proprietor of the mark, by further amending the regulations governing use, complies with the requirements of that Article.
Grounds for invalidity
In addition to the grounds for invalidity provided for in Articles 59 and 60 of Regulation 1001/2017, an EU certification mark which is registered in breach of Article 85 of Regulation 1001/2017 shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings, unless the proprietor of the EU certification mark, by amending the regulations governing use, complies with the requirements of Article 85 of Regulation 1001/2017.
Conversion
An EU certification mark cannot be converted into a national certification mark, if the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of Directive (EU) 2015/2436.
Due to the above-mentioned peculiarities and due to the fact that certification marks are more difficult to be registered than individual marks, it is advisable to seek the assistance of an intellectual property specialist with experience in this matter when registering an EU certification mark. The team of the law firm of Krasimira Kadieva will gladly assist you in the preparation and filing of an application for registration of an EU certification mark by providing professional advice and preparation of all necessary documents.
EACH CLIENT WILL RECEIVE A FREE E-BOOK CONTAINING ARTICLES WITH USEFUL INFORMATION ABOUT TRADEMARKS.
FOR YOUR NEXT ORDER OF ANY OF OUR SERVICES YOU WILL RECEIVE UP TO 15% DISCOUNT.
Legal Disclaimer: This material prepared by Krasimira Kadieva aims to provide information about European Union certification marks. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers comprehensive analysis and strategy for the effective protection of trademarks as objects of industrial property, both at the time of registration and in violation of the rights thereto. The IP attorney in Bulgaria Krasimira Kadieva assists in all types of trademark registrations by providing professional advice and preparation of all necessary documents.