The reform of European Union trademarks dated October 1st, 2017 has led to the introduction of a new type of European trademark: the certification mark. This is defined in Article 74(a) of Regulation (EU) 2015/2424 dated 16th December, 2015 as that “which distinguishes the goods or services for which the material, the way in which the products are produced or the services supplied, the quality, precision or other characteristics with the exception of geographical origin, are certified by the proprietor of the mark in relation to the goods or services which do not qualify for such certification”. This type of trademark guarantees the use of the mark in relation to the certification standards defined by the applicant.
The certification mark benefits the consumer, since it enables more transparency with regard to the quality of the products and/or services and the owner, who thereby gives value to his engagement and offer and proves his neutrality on the market. As for the European Union Trademark, this new kind of mark applies to all 28 countries of the European Union. Thus, it enables owners to easily provide and control the use of their signs by third parties.
In a recent decision, the CJEU (June 8, 2017, C-689/15, W. F. Gözze Frottierweberei GmbH c/ Verein Bremer Baumwollbörse) ruled that an individual trademark cannot be used as a certification mark and could be subject to revocation since it was not put to genuine use by its owner. Indeed, due to the lack of regulation regarding certificates, a significant number of certifying bodies applied in the past for individual marks. However, since the above-mentioned decision of the CJEU, it is important to react quickly in order to avoid any application for revocation.
In fact, individual marks and certification marks have different functions, the former enable the consumer to associate a mark with its owner and the latter enable one to distinguish between goods and services, which have been certified from those which have not. It is interesting to note that the company BREMER BAUMWOLLBÖRSE GmbH, which was involved in the case cited above, applied for an EU certification mark on the very day that the reform introducing this type of mark entered into force.
At the time of writing this document, only a few certification marks have been filed, including well-known signs such as or. It seems therefore to be the perfect time to file an EU certification mark and benefit from a right of priority.
Unlike the collective mark, which can be only filed by associations or state bodies, any legal or natural person may apply to register a certification mark.
However, the Office sets a limit under the title of “duty of neutrality”, namely:
- the applicant should not carry out any business involving the supply of goods and/or services protected by the certification mark and
- the applicant and the third parties using the certification mark should not be economically bound (for example a branch office).
Hence, the applicant wishing to register a certification mark should provide a simple signed statement to the Office that he does not carry out any activity relating to the supply of the certified products and services.
In the same way as for individual or collective marks, a certification mark has to be distinctive. However, in this instance, the function of the mark is not to distinguish the goods and services provided by a specific company but, as the Office mentions in its guidelines, “to distinguish goods or services certified by one certifier from those that are not certified at all and from those certified by another certifier”. This point will certainly give rise to several interesting decisions in the future.
Of course, the products and services to be certified have to be listed, just as for any individual or collective trademark.
The essential element of the certification is the regulation of use of the mark provided by the owner, which must be filed within two months at the latest from the date of application. This document defines objective conditions governing the use of the certification mark by a third party such as:
- the characteristics of the goods and services to be certified, e.g.:
- persons or type of persons authorised to use the mark
- quality of the goods and services
- mode of manufacture
- the testing and supervision measures to be applied by the owner, namely:
- control of the market by the owner or a third party
- sanctions for non-compliance with the regulations of use
- the fees to be paid in connection with the use of the trademark by third parties, where applicable.
All these conditions have to be drafted with precision in order to be clearly understood by the market operators. The definition of the controls and sanctions operated by the owner is also important in order to dissuade incorrect use of the mark.
However, the Office clearly mentions in its guidelines as an absolute ground of refusal that “an EU certification mark will not be capable of distinguishing goods or services certified in respect of the geographical origin”.
The Office has based the fees for the application for an EU certification mark on the fees for the application for a collective mark, namely:
- basic fee for the application for an EU certification mark: EUR 1,800.00
- fee for the second class: EUR 50.00
- fee for each class exceeding two: EUR 150.00.