E-News No.45

E-News No.45

Certification marks under the new EU trademarks laws by Elena Molina (Secretary of the Standing Committee on Trademarks)

Certification marks are those marks that require that anyone who use them comply with certain established standards. They certify that the goods or services in connection with which are used have been manufactured in accordance with such standards. A well-known certification mark is, for example, WOOLMARKElena Molina_1 , which certifies that the goods on which this mark is used are made of 100% wool.

An important requirement for certification marks is that the applicant be considered “competent to certify” the products concerned. Certification marks may be used together with the individual trademark of the producer of a given good. Whereas the individual trade mark will indicate the origin of the product, the sign used as a certification mark will show that the product or service concerned meet the specific standards required for the use of the certification mark.

Certification marks have some features in common with collective marks: both can be used by a large number of producers and both can be a warranty of respect of certain standards for consumers. However, they have different objectives since a certification mark serves to certify that a good or a service complies with certain standards whereas a collective mark aims to signal that a good or a service is originated by a member of a given association. Consequently, they require certain specific rules.The Community Trade Mark Regulation provided for the possibility of registering collective marks but did not foresee a certification mark at European level. The Regulation amending the Community Trade Mark Regulation (EU Regulation No. 2015/2424) introduces the EU certification mark as a complement to the existing provisions on Community collective marks. The provisions governing the EU certification marks shall apply from October 2017.

The new Trade Marks Directive (EU Directive No. 2015/2436) defines the concept of “guarantee or certification mark” and establishes a set of rules for this type of marks (Article 28). In any event, under the new Trade Marks Directive, the registration of certification marks at national level is not compulsory, but an option.

The origin of the goods has traditionally been considered as one of the characteristics that could be certified by means of a certification mark. Therefore, the new Trade Mark Directive allows that certification marks at national level designate the geographical origin of the goods or services. However, the amended CTM Regulation expressly excludes the geographical origin from the list of characteristics that the EU certification mark may certify, thus separating the scope of protection of the EU certification mark from the scope of protection of the geographical indications and the traditional specialties at EU level.

The registration cost for an EU certification mark will be the same as for an EU collective mark.