Practice Amendment Notice

PAN 12/02 - Issued 16 December 2002

Certification Services being claimed in trade mark applications

Issue

1.Trade mark applications in Class 42 which include references to "certification services" or other similar terms.

Background

2. The Trade Marks Act 1994 allows for the registration of certification trade marks which serve a different function to ordinary trade marks.

3. An ordinary trade mark distinguishes the goods or services of one undertaking from those of other undertakings.

4. A certification mark does not indicate trade source. The message conveyed by a certification mark when it is applied to goods or used in connection with services, is that some characteristic of the goods or services has been certified by the proprietor of the certification trade mark.

5. When applying to register a certification mark, the nature of the proprietor’s business must be considered as it is a requirement of Schedule 2, Paragraph 4 of the Act that:

"A certification mark shall not be registered if the proprietor carries on a business involving the supply of goods or services of the kind certified."

6. The term "certification services" in Class 42 can cover services provided by, or on behalf of, the proprietor to others, eg, certifying that measurement apparatus is correctly calibrated. However, the context in which the term appears in some recent applications for ordinary trade marks suggests that some applicants may have applied for an ordinary trade mark even though they intend the mark to be used as a certification trade mark.

7. Practitioners are reminded that certification marks may only be registered by an application made under Section 50 of the Act, and subject to acceptance of appropriate regulations governing the use of the mark.

8. Ordinary trade marks must be used for the purpose set out in Section 1(1) of the Act. Use for other purposes may be insufficient to resist an application for revocation for non-use under Section 46 of the Act. Further, there may be a question as to whether an application to register a trade mark has been made in good faith if it has been deliberately classified as an ordinary trade mark in the knowledge that it is in fact to be used to certify characteristics of the goods/services of unconnected economic undertakings.

Action

9. Applications to register ordinary trade marks for "certification services" or equivalent terms, such as "guarantee services" will be scrutinised. If having regard to:

• (a) the nature of the trade mark;
• (b) the full list of goods/services;
• (c) the nature of the applicant;

it appears to the Examiner that the application may have been incorrectly classified as an ordinary trade mark, the applicant will be given the opportunity of:

• (a) amending the status of the trade mark, or
• (b) confirming, in writing, that the trade mark is to be used to distinguish the goods/services of one undertaking from those of other undertakings.