All about Certification Marks

Definition

The statutory definition of certification marks is included in Section 2(1)(e) of the Trademarks Act, 1999. As the name suggests, it certifies products or services based on various parameters and characteristics and distinguishes those certified products or services from others that are not so certified. The parameters and characteristics of goods or services include—origin, material, mode of manufacture of goods or performance of services, quality, accuracy, or other characteristics. Like any other registered trademark, certification marks also has a registered proprietor. But there are certain differences between a regular trademark and a certification mark. Following are some examples of Certification Marks.

Difference

Under Section 2(1)(zb) of the Act, the definition of “Trademarks” includes certification marks as well. However, the certification marks are quite different from regular trademarks. The Act itself provides certain specific provisions that incorporate certain specialties in those marks. Chapter IX, Sections 69 to 78, of the Act provides these specificities which broadly categorizes these differences—

• The proprietor of the certification mark cannot use or associate such marks in its goods or services unlike other trademarks (section 70).

• The rights conferred by registration of a trademark (section 28), the limitations on those rights (section 30), and grounds of infringement of such trademarks (section 29) do not apply in the case of certification marks. Certification marks have a different set of provisions to address such situations (sections 78, 76, and 75).

• The proprietor of the certification marks is only allowed to authorize the use of such marks in respect of any goods or services, unlike other trademarks.

•  Assignment or transmission of a registered certification mark is not possible without the prior consent of the Registrar of trademarks (section 43), unlike other trademarks which allow assignment or transmission of a registered trademark without the prior consent of the Registrar.

Therefore, it is clear that the certification trademarks carry different rights and obligations compared to ordinary trademarks.

Requirements for Registrations

There are certain additional compliances that need to be adhered to during the filing of an application for Certification trademarks. These are—

• Filing of regulations governing the use of a certification trademark (section 74)

• Statement of case setting out the grounds on which he relies in support of his application (rule 138 of Trademark Rules, 2017)

• Consideration of application for registration by Registrar (section 72)

Now, the regulations governing the use of a certification trademark shall include [rule 137(4) of Trademark Rules, 2017]—

1. The applicant’s description

2. The nature of the applicant’s business

3. The particulars of infrastructure such as R&D, technical manpower support

4. Competence of the applicant to administer the scheme of certification

5. Financial arrangement of the applicant

6. An undertaking from the applicant requiring non-discriminatory conduct towards any party if they meet the regulation requirements

7. The characteristic, which the trademark will point out in the certified goods or regarding the rendering of certified services

8. The manner, in which the trademark is to be monitored in India, and

9. Such other relevant particulars as may be demanded by the Registrar.

While considering the application for registration of a certification trademark, the registrar shall consider the following matters (section 72) such as—

1. Competence of the applicant to certify the goods in respect of which the mark is to be registered

2. Whether the draft of the regulations (section 74) is adequate to the satisfaction of the registrar

3. Whether granting such application for registration (in all the circumstances) would be to the public advantage, and may either—

1. refuse the application, or

2. accept the application and approve the draft of regulations either unconditionally and without modification or with any conditions or any modifications of the application of the regulations, if he thinks it is necessary considering any of the stated matters.

After fulfilling all these requirements, the application for registration of certification trademark is published in the trademarks journal for any opposition for 4 months (section 21) from the date of advertisement, and in absence of any opposition, the certification trademark will be granted.

Infringement

Infringement of a registered certification mark occurs when any person, not being the registered proprietor or an authorized person, uses in course of trade a mark which is identical or deceptively similar to that certification mark in the same category of goods or services. While it is very unlikely, but there a situation may arise that a certification mark has been obtained both in respect of goods and services. This issue was dealt with by the Calcutta High Court in Tea Board vs Itc Limited. In this case, the use of the word ‘Darjeeling’ by the defendants in the luxurious lounge of its famous hotel chain was challenged by the plaintiff who is the registered proprietor of the ‘Darjeeling’ tea certification mark. The primary issue was, whether the plaintiff is entitled to bring an infringement suit against the defendant as the defendant used the mark in the service category while the plaintiff owns the certification mark in respect of the goods category. The court rejected the plea of the plaintiff on the ground that, the use of ‘Darjeeling’ by a person other than the plaintiff can be complained of only if the word or the geographical indication is associated with the product with which the plaintiff’s registered trademark ‘Darjeeling’ is exclusively associated. Thus it is very unlikely to create any deception or confusion between the plaintiff’s registered certification trademark ‘Darjeeling’ tea and the defendant’s lounge being named ‘Darjeeling’. Therefore, the court categorically refused a cross-category complaint in respect of the certification trademark.

Cancellation or Variation

The registration of a certification trademark can be canceled if, an aggrieved party files an application before the Registrar. However, the grounds on which a certification mark can be canceled are different from the grounds of cancellation of a trademark. Section 77 of the Trademarks Act, 1999 specifically mentions grounds for such cancellation. These are—

1. The proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services;

2. The proprietor has failed to observe any provisions of the regulations to be observed on his part;

3. It is no longer to the public advantage that the mark should remain registered;

4. For the public advantage, the regulations should be varied if the mark should remain registered

It is to be noted that one cannot simply file an application for cancellation of registration of a trademark on the grounds of non-use of the certification trademark by the registered proprietor as he is expressly barred to do so under section 70 of the Act.

Objective

The primary objectives of certification marks are—

• To provide a guarantee to the relevant public that the goods or services possess certain characteristics

• To certify that the products are thoroughly tested and have successfully passed the test

• To ensure that the nationally accredited standards of the goods or services are maintained

• To generate trust among the consumers that they are consuming authentic products or availing quality of services

• Even some certification marks indicate that industry standards are complied with. Ex. ISO, ISI, etc.

The primary objective of a certification trademark is not to indicate the source of goods or services. Rather it indicates that the goods or services possess certain characteristics. In this regard, one interesting example we can observe in India. This example revolves around the ‘Make in India’ logo, which is registered as a trademark in the trademark registry. The example is unique because the mark is not used by the Government of India in any of its goods or services in any course of trade. It was introduced as a symbol of a policy formulated by the Government in 2014. However, this mark is being expressly used by the companies or organizations in their goods or services to indicate their origin that is in India. Here lies the second most interesting factor. As it is already stated above, a certification trademark is not to indicate the source of goods or services, the ‘Make in India’ logo is expressly used for that very purpose only. As the logo is registered as a trademark, it can be used in the determination of the source of the goods or services. However, one can very well argue on the non-use of the trademark by the registered proprietor in course of trade.

Conclusion

Certification trademarks in India are generally held by any organization or association in India. However, individuals or corporations are not barred from filing a certification trademark under Indian law. However, it is practically not feasible for an individual or a corporation to file for a certification trademark because of the very obvious reason that they will not be able to make an exclusive profit out of it in their course of trade which is the primary objective of a corporation or a trademark proprietor. Also, it is very unlikely for an individual or a small corporation to monitor the proper and effective use of such marks by the authorized persons. Certification trademarks do not bring any such benefits to its proprietor. The authorized user of that certification trademarks, however, gains benefits from such use. The inception of certification trademarks is, in fact, beneficial for the consumers of the goods or services as it generates trust among the consumers regarding certain characteristics, standards, quality of goods, or services. Therefore, based on these mutually contradicting arguments, one may very well question the fruitfulness of certification trademarks in the Indian context. But as India’s economy growing day by day, the purchasing power of the consumers growing rapidly, and thus for the sake of a competitive healthy economy, compromise in quality and standards is not an option. This is where the certification trademarks will play the most important role.

To know more about, other different types of trademarks, see the video below -

BY -

DEBKRIPA BURMAN