“Pick up the phone” – raising the standard of collective and certification mark applications
When it comes to collective and certification marks, there are special requirements that can challenge even the most experienced Chartered Trade Mark Attorney.
In a bid to forge a constructive relationship between attorneys working with collective and certification marks and ultimately see more proceed easily to registration, Mark Studley, examiner technical lead at the IPO with 30 years’ experience, gave a fascinating webinar for CITMA members.
Mark leads a small team responsible for examining collective and certification marks at the IPO.
His number one takeaway for trade mark attorneys is simply to pick up the phone to him or his team if you have a query when preparing an application.
This can save a great deal of time and effort compared to email back-and-forth, and make life easier for both attorneys and the IPO team. Ultimately, this is more effective for the client, too.
Beyond this central piece of advice, Mark delved into the key features of collective and certification marks and explored the common problem areas examiners face.
Certification and collective marks – what are they?
A certification mark indicates that the goods and services bearing it are certified by the proprietor of the mark in respect of features such as origin, material, mode of manufacture, quality of services, or other
characteristics as set out by the regulations associated with it
A collective mark is a mark used by members of an organisation or association who qualify to use it through compliance with the related regulations. This could be through having passed an examination, for example.
These marks are very important because they could become a de facto industry standard. They are often used in as references in other industry regulations relating to public health and safety.
The role and importance of regulations
Given the potential importance of certification and collective marks, it is crucial that they are accompanied by regulations clearly stating what a person or organisation must do to comply and earn the right to use the mark.
A key role for IPO examiners is determining that the regulations submitted with the application are clear and precise.
This is not a straightforward undertaking as these are detailed and complex documents, often dealing in detail with sectors that the examiner may not be familiar with. However, they must ensure that the regulations are fit for purpose.
They must also be fair to the persons or organisations that may wish to use them. Here the IPO has a public interest role – part of the remit is to ensure that potential users are not priced out of participating in the certification scheme, particularly when a certification has become an accepted industry standard.
Consequently, when a certification or collective mark proprietor wishes to increase the fees associated with applying to use the mark, they should submit the proposed new fee structure to the IPO so examiners can assess whether the rise is proportionate and fair.
Competency and independence
When reviewing applications for certification marks, the IPO must be satisfied that the applicant has sufficient resources to administer the proposed certification i.e. that they are competent.
Typically, a single person could not effectively provide assessment and certification for companies across an entire industry, for example.
Applicants should also be aware that they cannot apply to register a certification mark if they are involved in the supply of the goods or services to be certified.
In other words, you can’t mark your own homework. Previously the IPO required all applicants to confirm that they did not operate in the relevant fields, but now applicants are just made aware of this stipulation.
Timing and format of regulations for certification marks
The IPO appreciates that the regulations accompanying an application for a mark are complex.
They should be submitted by three months from the date of the initial applications, but the IPO offers an
extension via form TM35. The fee for extension is £200.
Examiners find it helpful if applications use a standard layout for regulations. Using the headings within the Trade Mark Act in Schedule 2, paragraph 6(2) as an outline for the application is a good solution. The sections should include:
- Who is authorised to use the mark: this may simply be termed “anyone who meets the requirements” but typically a mark is aimed at a particular group e.g farmers, carpenters, etc.
- The characteristics to be certified by the mark: what features must the goods or services bear to merit permission to use the mark?
- How the certifying body will test the characteristics and supervise the use of the mark.
- The fees, if any, to be paid in connection with the operation of the mark. If no fees are to be charged, this must also be stated.
- The procedures for resolving disputes.
The description of the characteristics to be certified is often the most problematic area for examiners. The applicant must clearly explain the characteristics that must be present in the goods or services to qualify to use the mark.
Applicants should bear in mind that the examiners are not experts in the subject matter, so the terminology
must be clear and ideally measurable. Simply using terms like “follows good business practices” is not specific enough to merit a certification mark and makes it very difficult to ascertain that a standard is being met.
This can cause problems later if there is any dispute over an organisation’s right to use the mark.
If the regulations are not precise, an independent arbiter aiming to manage a dispute will not have an objective standard by which to judge the situation.
Collective mark requirements
Applicants for collective marks are advised to base headings on Schedule 1, paragraph 5(2) covering who is authorised to use the mark; the conditions of membership of the association; the conditions of use of the mark including any sanctions for misuse.
Moving forward – a quick phone call can save a lot of time
In closing, Mark reiterated his advice that chartered trade mark attorneys involved in filing applications for certification and collective marks should pick up the phone with any queries. This can often cut through red tape and help both parties resolve any issues more quickly.