Trademark

Exemptions Granted to Certification Marks: Why Does a Lack of Section 9(1)(b) Exemption Defeat the Purpose?


We’re pleased to bring to you a guest post by Akshay Ajayakumar on exemptions granted to certification marks.  Akshay is a lawyer based in Munich, Germany. He is a graduate of National Law University, Jodhpur, and has an LL.M in IP and Competition Law from the 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. You can view his earlier posts on SpicyIP here, here and here.  As a disclaimer please note that he was a part of the team which represented the applicant in one of the referred certification marks. All views in the post are personal.

Exemptions granted to certification marks: Why does a lack of Section 9(1)(b) exemption defeat the purpose?

Akshay Ajayakumar

Halal India mark- An example of certification 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 like its mode of manufacture, origin quality, etc. This differs from a collective mark which indicates a trade connection with the association or organization that is the proprietor of the mark. For example, Certification Mark for Darjeeling tea. It depicts a lady holding a tea leaf.  (Registration no. 532240) is a certification mark that Tea Board (a statutory body which regulates the tea industry in India) uses for certifying tea originating from Darjeeling. Meanwhile, Certification Mark for Halal India. It depicts the word "Halal" in English and Urdu in the middle and has orange and green stripes at the bottom. (Registration no. 4475801) certifies that the goods and/or service bearing it is Halal as per Islamic law.

Certification marks are defined under Section 2(1)(e) of the Trade Marks Act, 1999 (‘TM Act’) as ‘a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade 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 not so certified and registrable ….’. Being a special provision, it has been exempted from some requirements usually imposed on individual trade marks as elaborated below.

Exemptions of certain requirements for certification trade marks (Sections 69 to 78)

Section 69 of the TM Act states that Sections 9(1)(a) (concerning distinctiveness) and 9(1)(c) (concerning trademarks which can be considered customary to trade) of the TM Act are inapplicable to certification trade marks.

Section 9(1)(a) of the TM Act bars trademarks that are devoid of any distinctive character. The exemption from the same makes a non-distinctive mark eligible to be a certification trade mark. In this context, the distinctive character of a trademark means the sign’s ability makes it possible for the relevant public to identify the product and/or services in respect of which registration is applied as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings. Without this exemption, non-distinctive marks like ‘Halal’ or ‘Darjeeling’ would be barred under Section 9(1)(a). This exemption can act as a bridge for non-distinctive marks. In essence, a certification mark that is not distinctive (for instance ‘Halal’ or ‘Darjeeling’) can be accepted if it is validly applied for and its regulations governing the use grant an authorisation allowing such certification.

However, Section 69 of the TM Act does not exempt the applicability of Section 9(1)(b) of the TM Act, which states that marks that ‘consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service’ are barred. This creates a contradiction with the definition of certification marks as given in the TM Act. Certification marks most likely designate, inter alia, the kind (Certification Mark for Halal India. It depicts the word "Halal" in English and Urdu in the middle and has orange and green stripes at the bottom. ) , quality (Certification mark for Rainforest Alliance. It depicts a frog in the middle with words "Rainforest Alliance" "People & Nature" circumscribing it. ), and geographical origin (Certification Mark for Darjeeling tea. It depicts a lady holding a tea leaf. ) of the products. By not giving an exemption of Section 9(1)(b) of the TM Act, essentially the TM Act has made certification marks not registerable unless it acquired distinctiveness under the proviso to 9(1) providing for acquired distinctiveness.

There lies an argument that Section 9(1)(b) of the TM Act prevents only marks that exclusively designate the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service. Therefore, this exception will still exempt device marks which have artistic elements and in an overall assessment, the certification marks will not be considered as exclusively designating its characteristic(s). However, this barks at the essential feature of a trademark– for instance in the above Darjeeling tea certification mark, Darjeeling remains one of the most prominent elements, if not the prominent element. Furthermore, people will refer to it as Darjeeling tea, be it made by any brand, and not anything else. Therefore, despite the fact that an applied-for certification mark is not exclusively designating its characteristic(s), it can still be objected to under Section 9(1)(b) of the TM Act as the prominent element designating its characteristic(s).

The need for such exemptions

A certification mark which is exempt from the requirement of Section 9(1)(a) of the TM Act can, therefore, be objected to under Section 9(1)(b) of the TM Act. For, instance Certification Mark for Halal India. It depicts the word "Halal" in English and Urdu in the middle and has orange and green stripes at the bottom. (application no. 2207519) was refused under both Sections 9(1)(a) and Section 9(1)(b) of the TM Act. Thereafter, the Applicant applied for the same mark as a certification mark (registration no. 4475801) and the Registry did not raise an objection under Section 9(1). However, theoretically, the Registry could have raised an objection under Section 9(1)(b) for this mark again rendering the subsequent certification mark application redundant (unless acquired distinctiveness under the proviso to 9(1) is successfully claimed).

Even though the above Halal mark did not face it, there are instances where the Registry has raised a Section 9(1)(b) objection for a certification mark. The Tea Board faced a Section 9(1)(b) objection when it applied for Cirtification mark for Nilgiri Orthodox tea. It depicts a growing tea leaf in the middle with the words "Nilgiri Orthodox" circumscribing it in semicircular format. (registration no. 2332495) as a certification mark. This is a textbook example of the problems faced by an oversight made by the Legislators.

This allows the examiner to raise an objection under Section 9(1)(b) of the TM Act for a mark which may not be distinctive even by definition (Section 2(1)(e) of the TM Act) for a variety of reasons (kind, quality, quantity, intended purpose, values, geographical origin). A mark which is descriptive of characteristics of goods or services is also devoid of any distinctive character with regard to the same goods or services within the meaning of Sections 9(1)(a) of the TM Act. Therefore, in practice the exemption provided by Section 69(a) is ineffective and the Registry can easily raise a Section 9(1)(b) objection even if Section 9(1)(a) is inapplicable.

Could the inapplicability of Section 9(1)(b) open the floodgates for certification marks?

It could be argued that the inapplicability of Section 9(1)(b) of the TM Act would open the doors to a lot of non-distinctive and descriptive certification marks and also prevent genuine operators from acquiring trademark rights over non-distinctive and descriptive certification marks (would it mean that there can only be one Halal certification authority?).  However, to answer this question we need to go to the core of the trademark- priority. The prior user of a certification mark will block any subsequent user just like any prior trademark would do. Just like how NIKE or APPLE cannot be used by a subsequent operator (genuine or otherwise), a certification mark cannot be also. Also, the additional requirement needed for a certification mark, including a requirement for a regulation governing the use containing a non-discrimination policy (Section 74 of the TM Act), should prevent the opening of floodgates. Also, as per Section 70 of the TM Act, a certification mark cannot be registered in the name of the person who carries the trade (for instance, the Tea board cannot sell tea but can only certify it originates from a certain region). These additional requirements guarantee that the applicant is capable of certifying the purposed characteristics of goods/services, whether it has the financial ability to do so and in effect will limit the number of applications.

Would public interest be served by allowing descriptive certification marks?

It could be argued that there is an underlying public interest in making certification marks which exclusively designate its characteristic(s) to be registered only after it acquires distinctiveness thereby making sure that the audience is aware of the certified characteristics. As stated earlier, by definition (Section 2(1)(e) of the TM Act), certification marks are descriptive and cannot be otherwise.  The public interest element can be ruled out because a certification mark can only be registered only after meeting stringent requirements as stated earlier (in practise it is a different story, see here). By limiting certification marks to one which has acquired distinctiveness, an additional requirement which has not been anticipated by the Legislature would be mandated.

Conclusion

The implication of the application of Section 9(1)(b) to certification marks is pervasive and in essence, can prevent registration of certification marks (unless it proves acquired distinctiveness under the proviso to 9(1)).  Section 69 of the TM Act requires to be amended to include Section 9(1)(b) as an exemption to certification marks to enable the actual application of the exemption envisioned under the TM Act (as an analogy, the earlier the Trade and Merchandise Marks Act, 1958 had a complete exemption to Section 9).

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