Certification marks

Let's start with the functions of a trademark

Typically, trademarks indicate which company has produced a product or provides a service, or that the trademark owner is ultimately responsible for the quality, if the products or services are commercialised under a licence. That is the traditional trademark function of guaranteeing the origin of goods and services and such trademarks are referred to as "individual trademarks".

However, labels can also serve other functions, such as guaranteeing that a product or service complies with certain requirements. Such trademarks cannot be protected in the usual way, but instead a specific "certification trademark" must be applied for. A few years ago, this kind of trademark was introduced in the harmonised EU trademark legal system.

What exactly is a certification mark?

A certification mark is a kind of trademark used to indicate that goods or services meet certain characteristics, such as quality, as certified by the trademark owner, distinguishing them from those that are not certified.

An exception for the EU Trademark is that the geographical origin of the goods or services cannot be the subject of an EU Certification Mark, although the national law of an EU Member State may allow certification of geographical origin for national certification marks. 

The characteristics to be guaranteed by the certification mark have to be set out in regulations of use. The owner of the certification mark is responsible for checking compliance with the regulations.

What are the specific requirements for registering a certification mark?

Neutrality. The owner of a certification mark must not carry out a business involving the supply of the goods or services to be certified.

Then there are regulations of use setting out the characteristics of the goods and services that are certified as well as the requirements for using the trademark. The trademark owner must also specify the control and monitoring measures it takes to ensure compliance with the requirements.

Why is the distinction between individual marks and certification marks important?

After an initial grace period, the enforceability of trademarks is subject to proof of genuine use of the trademark. Such genuine use must be according to the trademark function.

Thus, genuine use of an individual mark can only be established by its use to designate the origin of the goods and services from a specific company. If, however, an individual mark was only used to guarantee the characteristics of goods or services (which can come from various companies), this will not meet the trademark function of an individual trademark.

In such a case, the individual mark will not be enforceable and subject to cancellation on the grounds of non-use, which can be claimed by anyone. Or, put briefly, a trademark that has not been correctly identified will be lost.

authors: Christian Schumacher, Kerstin Wiesegger