This post is the first of a two-part series on certification trademarks in India.
A certification trademark is “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”.
Thus, the sole purpose of a certification trademark is to indicate that certain standards set by the proprietor of the mark have been met. Some examples of Indian certification trademarks are as follows: WOOLMARK (that certifies that a product is made from 100% wool), ORGANIC INDIA (that certifies a method or mode of manufacture), ISI mark (that certifies that products conform to a set of standards laid by the Bureau of Indian Standards).
As with other countries, such as the United Kingdom and the United States of America, Indian law does not allow the proprietor of a certification trademark to use the mark in association with its own goods or services. The proprietor can only authorize others to use it. Further, the proprietor of the certification trademark must oversee others’ use of the certification trademark to ensure that the mark is being properly used.
Applicants must file applications to register the certification trademarks in the classes of goods or services being certified. Applicants must submit, with a certification trademark application, a Statement of Case that sets out the grounds of the application, i.e., grounds that demonstrate why an applicant is entitled to file the application. It is important to note that every certification trademark application must be accompanied by draft regulations that contain detailed provisions relating to the applicant’s competence to administer the certification scheme, characteristics of the mark being certified, manner of monitoring use of the mark, etc. The Trade Marks Act, 1999 makes detailed provisions regarding the types of information that must be included in certification trademark applications.
Once the application to register a certification trademark is filed, the Indian Trade Marks Registry shall ascertain whether the application satisfies the necessary requirements as per Indian law, such as determining whether the certification trademark is capable of distinguishing the certified goods or services from those not so certified. Once the Registry is satisfied that the requirements set out under the law have been met, the application will be advertised in the Trade Marks Journal. The application will remain open to opposition by any third party for four (4) months. If there is no opposition or the opposition proceeding has been decided in favor of the applicant, the certification trademark will be registered. The term of registration for a certification trademark is ten (10) years.
The registration of a certification trademark can be cancelled if, an aggrieved party approaches the Registrar. However, the grounds for the cancellation of a certification trademark are different from that of a trademark. As per Indian law, the Registrar can cancel the registration of a certification trademark, or vary the draft regulations, on any of the following grounds:
That the proprietor is no longer competent, in the case of any of the goods or services in respect of which the mark is registered, to certify those goods or services; or
That the proprietor has failed to observe any provisions of the regulations to be observed on his part; or
That it is no longer to the public advantage that the mark should remain registered; or
That it is requisite for the public advantage that if the mark remains registered, the regulations should be varied.
The next part of this series will deal with the rights conferred on a proprietor of a certification trademark, and the enforcement actions available to a proprietor.