5.4.1 Additional identical or similar trade mark considerations

When considering potential citations of identical and/or similar marks under section 25 of the Act, the Examiner should take into account section 14 of the Act and the definition of a certification mark under section 5 (1) of the Act. In particular, when searching the register the examiner needs to keep in mind that the function of certification, collective and standard trade marks are different.

A standard trade mark distinguishes goods and services that originate from a single party and a collective mark distinguishes the origin of goods and services from a member of an association from those of a non member. A certification trade mark does not indicate origin. Rather, it indicates that some characteristic of the goods or services provided has been certified by the owner of the mark, who does not trade in the concerned goods or services.

Where an Examiner finds an identical or similar mark on the register for the same or similar goods or services and in the name of a different owner, they should take this as prima facie evidence that the mark cannot serve the function specified for it under the Act. The Examiner should raise a concern regarding the likelihood of confusion or deception of the applicant’s mark.

An Examiner should also raise a concern where a search of the Register discloses an earlier filed application or registration for an identical or similar mark and covering the same goods or services, in the name of the same owner. The registration of a certification mark is prohibited if the owner trades in the goods or services that are to be certified.²⁷

The owner of a certification mark is responsible for setting and regulating the standards which the goods or services to bear the mark must meet. Therefore the applicant must be independent of the supply of those goods and services to do this effectively and consistently.

Where the marks and/or the goods/services are only similar, acceptance of the mark for registration may be possible. The key factors for consideration by the Examiner are the degree of similarity between the respective marks and the goods or services covered by the respective marks. The Examiner must be satisfied that there is no real likelihood of confusion or deception resulting from the registration and use of the mark under consideration.

Footnote

²⁷ Section 14(b) of the Trade Marks Act 2002.