Certification Trade Marks – A Brief Guide

In response to a question we received about certification trade marks, here’s a brief guide. It draws on information from IP Australia, and adds some of our own insights.

What Is A Certification Trade Mark?

A certification trade mark is a special type of registered intellectual property right. Unlike a standard trade mark, which is used to distinguish one trader’s goods or services from those of another trader, a certification trade mark is used by authorised users to guarantee that the goods or services possess a particular characteristic or meet a certain standard. Examples of commonly-certified standards include geographic origin, content, manufacturing method and/or quality.

In Australia, certification trade marks are of the two most common ways of protection geographical indications, although geographical indications for wine may also be registered via Wine Australia.

One of Australia’s most famous examples is the Australian Made, Australian Grown certification trade mark. It’s used by more than 1700 companies on over 10,000 products sold globally.

Applying for a certified trade mark

A certification trade mark application is somewhat similar to an ordinary trade mark application. But your’e also required to provide a copy of the certification trade mark’s rules. This is done either at the time of application, or as soon as possible afterward.

Certification trade marks are given an initial examination by IP Australia. They check the distinctiveness of the application and look for any potential conflicts with existing trade marks. IP Australia also does a formalities check to ensure that the certification rules are fit for consideration by the Australian Competition and Consumer Commission (ACCC).

ACCC’s role

The ACCC assesses various aspects of the certification trade mark. They’ll want to be confident the rules are effective, and ensure that the effect of the certification scheme isn’t anti-competitive. To that end, the ACCC may require changes to the rules before they will approve them. More information about the ACCC’s role is provided in their brochure: Certification Trade Marks – the role of the ACCC.

Rules for a certification trade mark

There are rules about the rules!

Your certification trade mark’s rules must cover:

• the standards that the protected goods or services must meet
• the method for determining if the standards have been met
• the requirements an approved certifier must meet
• the requirements the owner of the certification trade mark, or an approved user, must meet
• any other requirements for the use of the certification trade mark
• the procedure for resolving a dispute about whether goods or services meet the certification standards
• the procedure for resolving any other issue regarding the certification trade mark

A Certification trade mark rules checklist is also available on the ACCC website.