We hereby certify that...

One of our clients recently came to us with an idea of a unique shopping experience. It was something non-existent on the Belgian market at the moment: unique in terms of the goods offered, the service package that goes with them, and even the shop layout. Of course, for all of the elements, we ensured that proper protection mechanisms are put in place: trademarks and designs duly registered, agreements with partners and subcontractors carefully drafted, trade secret policy established etc.?

However, our client also had another idea, related to this business venture. He wanted in the future to have a “quality mark” to be used as a sort of certification for other companies that would want to offer their customers an alike experience. Hence, he was wondering about the certification mark…?

Fast forward, in our client’s case, setting up trademark licensing was in fact, much more in line with his business goals than having a certification mark, however, the latter is an interesting intellectual property protection mechanism.

By chance, next week, on October 01, it is exactly four years since the introduction of the certification marks at the European level. Therefore, it is a good moment to briefly talk about them.?

So what are the certification marks? Who can apply for them? Use them? What are other peculiarities to take into account? Below is a brief overview.

According to the legal definition, a certification mark is a mark that is:

• “capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified.”

The main purpose of certification marks is to guarantee the specific characteristics of goods and services and to distinguish these goods and services from those not bearing the certification mark.?

To ensure that the above purpose of the certification mark is fulfilled, the Applicant needs to have clear and objective Regulations of Use (RoU) which would define the standard that the goods and services must comply with in order to be able to use the certification mark.?

In particular, the RoU needs to clearly identify:

• the characteristics of the goods and services to be certified,?
• the conditions governing the use of the certification mark, as well as?
• the supervision and testing measures planned to be used by the owner of the certification mark.

There are two important points to stress in connection with the EU certification mark.?

1. First of all, the characteristic which cannot be certified is — geographical origin. The geographical origin of the goods and services in Europe is protected by sui generis geographical indications?regime (PDO/PGI/GI) and cannot be protected by certification marks.?
2. Second, the Applicant for the certification mark cannot be delivering goods or providing services that are meant to be certified with this mark. Hence, there is an obligatory requirement of neutrality, i.e. not having any economic or business interest in the relevant market. The only exception here would be the possibility for the owner of the certification mark to provide training on the certification scheme to its users.?

An explicit declaration of the Applicant that it does not carry on a business involving the supply of goods or services of the kind certified is also to be submitted together with the application for the certification mark. Failure to do so, or the established lack of neutrality will be considered as the ground for refusal of registration of the certification mark. Other possible grounds for refusal could be the lack or incompleteness of the RoU, the non-conformity of the certification mark to mark’s essential function, already mentioned reference to the geographical origin, or the misleading character or significance of the mark.?

There are not that many certification marks registered in Europe at the moment. Today, on the 22nd of September 2021, the EU trademark database showed only 209 hits. At the same time, many examples of them are already very well known to European consumers: “TüV”, “Manuka honey”, “FAIRTRADE”, “MSC www.msc.org", “TRUSTED SHOPS guarantee e”, “VERIFIED by safeshops.be", and others. All of these certification marks surely do what they were intended to do - they signal to the consumers certain quality they can expect from the goods and services bearing these marks.?

Want to know more about certification marks, or other kinds (individual, collective) or types (shape, colour, multimedia,…) of marks available for registration, feel free to refer to us at [email protected] or to me personally at [email protected].