The CJEU is pondering over the standards that should be applied in the analysis of EU certification mark applications (case R-1650/2018)
Certification marks, which were introduced under the 2017 reform of the European Union Trademark Regulation, have recently come once again under the spotlight after the Second Chamber of Appeals of the Court of Justice of the European Union referred the case R-1650/2018 on February 15 to the Grand Chamber. This issue has raised, for the first time since the reform, the question concerning the examination criteria for certification marks and, more specifically, the degree of distinctiveness that makes possible to register this type of marks.
In connection with this case, Ballester IP briefly reviews the applicable legislation to certification marks, their nature and the differences with respect to other mark types.
What is a certification mark?
A certification mark is any sign “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 “(Article 83 EUTMR).
Therefore, the main objective of a certification mark is to distinguish the certified goods and services from those that are not so certified.
What makes them different from collective marks?
With regard to ownership, while collective marks can only be applied for by certain associations or by legal persons governed by public law, certification marks may be owned by: a) natural persons or b) legal persons; as long as they do not use them for their own goods and services, that is, they must always be used to certify the goods and services of third parties.
As for its use, certification marks may be used by anyone who complies with the rules established by the regulations of use of said mark. Collective marks, however, can only be used by the members of the association to which the mark belongs.
What about their connection with designations of origin (DO)?
The EUTMR clearly excludes from the scope of protection those marks whose object of certification is, specifically, the geographical origin of the goods and services for which it is applied for. Therefore, it will not be possible to register a mark that seeks to certify that a product or service comes from a specific place.
What requirements must be met by a certification mark application?
Like any other type of marks, EU certification marks must be able to distinguish the goods and services which are certified from those which are not. Indeed, this is the issue at stake that the CJEU considers that should be analysed by the Grand Chamber regarding the case mentioned at the beginning of this article.
Furthermore, certification marks must be expressly applied for as such. Otherwise, the mark application would be processed as a regular one and it would not be possible to convert any type of marks into a certification mark. Therefore, the application must initially specify its nature of certification mark and it must always be addressed to the specific goods and services which constitute the object of certification.
Finally, and probably being the most important requirement, when applying for a certification mark it is mandatory to submit, within the period legally established to this end, the “regulation of use” of the certification mark applied for. Otherwise, the mark application will not be granted registration.
Regarding the distinctiveness standards for certification marks, it seems that we will have to wait for the Grand Chamber to decide on the matter in order to know if they apply the same standards as for the rest of marks or more flexible or strict standards.
We will attentively follow any developments on this matter and will keep you updated as soon as the decision of the Grand Chamber is published.
Finally, if you wish to register your individual, collective or certification mark in the European Union, do not hesitate to request all the information you need here. We will be happy to assist you.