Practice Amendment Notice

PAN 2/01

Section 3 and Section 5 practice in relation to applications made to register a mark as both a trade mark and a Collective Mark, or as both a trade mark and Certification Mark

Background

The Trade Marks Act 1994 allows for three different types of marks serving different functions in the marketplace.

An ordinary trade mark distinguishes the origin of goods or services and serves to identify the manufacturer, producer or provider of those particular goods or services.

A collective mark indicates commercial origin of goods or services, but as collective marks they indicate origin in members of an association rather than origin in one party.

A certification mark does not indicate origin. The message conveyed by a certification mark, when it is applied to goods or used in connection with services, is that the goods or services have been examined, tested, inspected, or in some way certified by an independent organization who is not their producer, by methods determined by the certifier/owner to indicate or guarantee a specific characteristic or quality.

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."

This paragraph is explicit - the proprietor of a certification mark shall not trade in the relevant goods or services.

When applying to register a collective mark, that status of the proprietor must be considered as it is a requirement of Section 49 of the Act that:

• "A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings."

This paragraph is explicit - the collective mark will be owned by an association (on behalf of its members) and will indicate origin in the members of the association rather than origin in one party.

It follows that an application to register an identical mark (or so nearly alike as to constitute essentially the same mark) as a certification mark (or as a collective mark) and as an ordinary trade mark, for the same goods or services should be regarded as prima facie evidence that the mark cannot serve the function specified for it in the Act.

Practice where the marks and goods/services are the same

If applications in the same ownership are made to register an identical (or essentially the same) mark as both a collective mark (or certification mark) and as an ordinary trade mark (or vice versa) for the same goods/services, objections should be taken to the later filed application under Section 3 (1)(a) and Section 3 (3)(a) and/or (b). If the later mark is a collective mark an objection should also be taken under Section 49. If it is a certification mark there should also be an objection under Section 50 and under Schedule 2, Paragraph 4.

An objection should be raised under Section 3 (1)(a) as the mark would be incapable of distinguishing goods and/or services of a particular trader from members of an association (if it is a collective mark) or from certified goods or services (if a certification mark).

The filing of an identical mark, or essentially the same mark, as both a trade mark and collective mark for the same goods/services would be contrary to Schedule 1, Paragraph 2 which states:

• "In relation to a collective mark the reference in Section 1 (1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed or interpreted as a reference to distinguishing goods or services of members of the association which is the proprietor of the mark from those of other undertakings."

and hence Section 3 (1)(a).

The filing of an identical mark, or essentially the same mark, as both a trade mark and a certification mark for the same goods and/or services would be contrary to Schedule 2, Paragraph 2 which states:

• "In relation to a certification mark the reference in Section 1 (1) (signs of which a trade mark may consist) to distinguishing goods or services of one undertaking from those of other undertakings shall be construed as a reference to distinguishing goods or services which are certified from those which are not."

and hence Section 3 (1)(a).

An objection should also be raised under Section 3 (3)(a) or (b) as a trade mark, collective mark or certification mark shall not be registered if it is contrary to public policy and/or of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or services).

The basic rule is that we should not register identical marks of different statuses for identical goods/services in any circumstances. Whether there is consent or they are in the same name is irrelevant because the Section 3 (3)(a) objection and (depending of the status of the later application) Section 3 (1)(a), Section 49 or Section 50 or Schedule 2, Paragraph 4 objection(s) are insurmountable.

Practice where the marks and/or goods/services are only similar

Where the marks are only similar, or the goods/services are only similar, there is no absolute bar to the registration of the later mark in the same ownership or, where there is consent, in different ownerships.

However, depending on the degree of similarity between the marks/goods or services, there may still be an objection under Section 3 (3)(a) or (b) to the later application.

If the goods/services are virtually the same there is likely to be an objection if one of the respective marks is a certification mark, eg. between "construction, building and repair services in Class 37" and "quality control services in the building industry in Class 42". This will give rise to an objection under Section 3 (3)(b).

Otherwise the later application may be allowed, but if the use of marks with different statuses causes confusion, this is a ground for revoking the certification or collective mark.