Trademark

Certification Marks: A Tale of Continuing Confusion at the Registry


We’re pleased to bring to you a guest post by Akshay Ajayakumar that continues his scrutiny of the trademark registry’s standard of examination. In this post, he focuses on certification marks. Akshay Ajayakumar is a lawyer based in Munich, Germany. He is a graduate of National Law University, Jodhpur, and is currently pursuing his LL.M in IP and Competition Law from Munich Intellectual Property Law Center (MIPLC) – A cooperation project of the Max Planck Society, the University of Augsburg, the Technical University of Munich, and The George Washington University. All views in the post are personal. You can view his earlier post for us here.

 

Certification marks: a tale of continuing confusion at the Registry

In continuation to my earlier post concerning collective marks, an analysis of certification marks registered also yielded similar results. There exist numerous certification marks which have been granted registrations erroneously. This post will briefly examine the requirements for certification marks and will analyse a few erroneous registrations.

What is a certification trade mark?

Certification marks indicate to consumers that the goods/services meet certain standards (like quality, materials, geographical origin, etc.) The essence of a certification mark is not to identify the source but to certify certain characteristics.

Special provisions concerning certification trade marks

Section 71 of the TM Act : An application for registration of a certification trade mark is to be accompanied by the regulations governing the use of the certification mark.

Section 74 of the TM Act : Only if the Registrar is satisfied with the requirements, including the regulation, can be accept the certification trade mark. There is a specific requirement for the Registrar to be satisfied with the regulations for a certification trade mark for it to be accepted.

Rule 137(1) of the Trade Marks Rules, 2017 (‘TM Rules’) : Mandates that a certification trade mark application is to be accompanied by regulations governing the certification trade mark’s use.

Rule 137(4) of the TM Rules : Lays down the criteria for regulations (name, nature of business, particulars of infrastructure, competence, financial arrangement, characteristic of the certification, manner of monitoring, etc.).

Rule 138 of the TM Rules : Mandates a statement of case to be submitted along with the regulation.

Section 77(b) of the TM Act : A proprietor, having failed to observe, or to secure the observance of the regulations governing the use of the mark, is an additional ground for removal of registration

Chapter II, 8.3 of the draft manual of trade marks : Instructs the Examiner to defer the examination till a proper draft regulation is filed.

The Reality

A review of a few certification marks at the Trade Marks Registry reveals that the Registry is not adhering to the requirements of the Trade Marks Act:

Application Number: 4763669
Mark: BAYSHIP
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act without any objection.  The mark was Advertised as a certification mark in Trade Marks Journal No: 1979 referring to Section 18(2) of the TM Act.

Application Number: 4759360
Mark: (Pictured left)
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations:The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act overcoming an objection under Section 9(1)(a) and Section 9(1)(c) of the TM Act. The mark was Advertised as a certification mark in Trade Marks Journal No: 1990 referring to Section 71(1) of the TM Act. It is relevant to note that as per Section 69(a) of the TM Act, Section 9(1)(a) and 9(1)(c) is inapplicable to certification Marks and yet, Section 9(1)(a) was raised.

Application Number: 4366597
Mark: PLYNART
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act overcoming 2 conflict marks raised under Section 11(1) TM Act. The mark was Advertised as a certification Mark in Trade Marks Journal No: 1973 referring to Section 71(1) of the TM Act. It is relevant to note that the Applicant had filed a TM-M to amend the Application type from ‘Certification’ to ‘standard mark’ as it was filed erroneously. Despite this, the mark was Advertised as a certification Mark in Trade Marks Journal No: 1973 referring to Section 71(1) of the TM Act.

Application Number: 4424654
Mark: REVOLT
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act overcoming 2 conflict marks raised under Section 11(1) TM Act and an objection seeking to clarify if the subject was a certification mark. The Applicant, being unaware of what a certification mark is, gave a vague response to a query concerning the certification Mark. Despite this, the mark was Advertised as a certification Mark in Trade Marks Journal No: 1972 under Section 18(2) of the TM Act.

Application Number: 4674564
Mark: (pictured left)
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act without any objection.  The mark was Advertised as a certification mark in Trade Marks Journal No: 1971 under Section 71(1) of the TM Act.

Application Number: 4276232
Mark: (pictured left)
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act overcoming a conflict mark raised under Section 11(1) TM Act and an objection seeking to clarify the nature of the Applicant’s legal status. The mark was Advertised as a certification Mark in Trade Marks Journal No: 1968 under Section 71(1) of the TM Act.

Application Number: 3879362
Mark: NSF
Application Type: Certification
Whether Regulation and/or Statement of case filed?: Yes
Observations: The Registry has accepted the certification mark under Section 20(1) of the TM Act overcoming a conflict mark raised under Section 11(1) TM Act. The mark was Advertised as a certification mark in Trade Marks Journal No: 1935 under Section 71(1) of the TM Act. It is pertinent to note that despite the Applicant not filing the regulations governing the certification trade mark’s use at the time of the filing, the Registry did not object.

Application Number: 2867024
Mark: (pictured left)
Application Type: Certification
Whether Regulation and/or Statement of case filed?: No
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act without any objection.  The mark was Advertised as a certification mark in Trade Marks Journal No: 2000 under Section 71(1) of the TM Act.

Application Number: 4932569
Mark: (pictured left)
Application Type: Certification
Whether Regulation and/or Statement of case filed?: Regulations filed. Statement of case not filed.
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act without any objection.  The mark was Advertised as a certification mark in Trade Marks Journal No: 2000 under Section 18(2) of the TM Act.

Application Number: 3765433
Mark: FDI REGISTERED
Application Type: Certification
Whether Regulation and/or Statement of case filed?: Yes
Observations: The Registry has accepted the certification mark under the provisions of Section 20(1) of the TM Act overcoming an objection under Section 9(1)(a) of the TM Act. The mark was Advertised as a certification mark in Trade Marks Journal No: 1990 under Section 71(1) of the TM Act. It is relevant to note that as per Section 69(a) of the TM Act, Section 9(1)(a) is inapplicable to certification Marks and yet it was raised.

What does this tell us?

A look at the certification marks at the Indian Trade Marks Registry reveals the Registry lacks any standards for examination. The Registry has (advertised) and accepted numerous certification mark applications filed without the statement of case or regulation being filed. Without the regulations or statement of case, the Registry will not be able to determine whether the applicant is capable of certifying the purposed characteristics of goods / services and whether it has the financial ability to do so.

Section 77(b) of the TM Act allows the cancellation of certification marks if any regulation is violated. This begs the question, what if there is no regulation?

This is a direct contravention of the function and definition of a certification marks ‘ …a mark capable of distinguishing the goods or services … which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services.’ Certification marks guarantee origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics of the goods or services so certified. By allowing traditional marks to be filed as certification marks, the entire purpose of the certification mark is diluted and made moot.

Such institutional failure can also affect consumers. We often come across numerous certification marks from vegan certifications to various eco-labels. If certification marks are so easily registered, flouting basic requirements, then how much trust should consumers give to such certifications?

The Registry must take measures to make sure that Examiners are properly educated and sensitised about collective and certification marks to avoid such errors. The Registry has the power to initiate a suo motu rectification action under Section 57(4) of the TM Act. The right course of action is for the Registry to issue notice to the applicants / proprietors of certification marks that have been filed / registered without submitting the required regulations and statement of case. Failing which, the Registry may expunge wrongly granted certification and collective marks.

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