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5. General examination
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5.1 Mandatory acceptance requirements
A certification mark application must meet the mandatory acceptance requirements set out in regulation 44 of the Regulations.19 The Examiner may also require further information to be provided to assist in the examination of the application.20
For more information on the mandatory acceptance requirements that would prevent acceptance of a certification mark for registration, please refer to the relevant section of the Practice Guideline on The Application Process.
Footnotes
19 Regulation 57(1) of the Trade Marks Regulations 2003.
20 Regulation 45 of the Trade Marks Regulations 2003
5.2 Prescribed fees
Before an application to register a certification mark can be accepted, the prescribed fee must have been paid in respect of the application. Where additional classes are requested after application, each additional class is subject to an additional class fee.21
Although the fee for an additional class is not essential for filing date purposes, payment must be made when filing the application for an additional class.22
Footnotes
21 Regulation 43(2)(b) of the Trade Marks Regulations 2003.
22 Additional classes may only be added within 1 month of the application. See regulation 43(2)(a) of the Trade Marks Regulations 2003.
5.3 Absolute grounds preventing registration
The Commissioner must be satisfied that there are no absolute grounds that would prevent the registration of a certification mark.23 The absolute grounds for not registering a certification mark are set out in sections 17 to 21 of the Act and concern the nature of the mark itself, the marks ability to distinguish goods and/or services being of a particular origin, material, mode of manufacture, quality, accuracy, performance, or other characteristics, and other public policy considerations.
An application to register a certification mark is examined in the same way as a standard trade mark in order to determine whether it complies with the absolute grounds of refusal in the Act. For more information on absolute grounds that would prevent the registration of a certification mark, please refer to the following Practice Guidelines:
Footnote
23 See section 208(3)(a) of the Trade Marks Act 2002.
5.3.1 Additional distinctiveness considerations
When considering eligibility under section 18 of the Act, the Examiner should take into account section 14 of the Act and the definition of a certification trade mark under section 5 (1) of the Act.
In particular, the Examiner should assess the distinctiveness requirement set out in section 18 (1) (b) by keeping in mind the nature of a certification mark, in that the mark must be capable of distinguishing the goods and services certified by the applicant from goods or services not so certified.24
Certification marks distinguish goods or services certified in respect of origin, material, mode of manufacture, quality, accuracy, performance, or other characteristics. This contrasts to the test for distinctiveness of a standard trade mark, as a standard trade mark must simply be capable of distinguishing the goods and services of a single party from those of another.
Footnote
24 Section 5(1) of the Trade Marks Act 2002.
5.4 Relative grounds preventing registration
25The Commissioner must be satisfied that there are no relative grounds that would prevent the registration of the certification mark.26 The relative grounds for not registering a trade mark are concerned with conflict between the applicant and rights held by other persons, entities or traders and are set out in sections 22 to 30 of the Act.
A certification mark application is examined in the same way as a standard trade mark application to determine whether it complies with the relative grounds of refusal in the Act. For more information on relative grounds that would prevent the registration of a certification mark, please refer to the following Practice Guidelines:
- Relative grounds: Prescribed words and abbreviations
- Relative grounds: Names or representations of persons
- Relative grounds: Representations of the Royal family
- Relative Grounds: Identical and Similar Marks
- Relative Grounds: Flags, Armorial Bearings, State Emblems and similar
Footnotes
25 Practice Guideline Amendment 2006/01, IPONZ Newsletter, February 2006.
26 Section 13(2) of the Trade Marks Act 2002. The absolute and relative grounds are set out in Part 2 of the Act.
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.
5.5 Specifications
The specification should only reflect the goods and services actually being certified, as detailed in the accompanying draft regulations.
Specifications and amendments to specifications for certification marks are dealt with in the same manner as a standard trade mark. For more information on classification and specifications, please refer to the Practice Guideline on Classification and Specifications.
5.6 Series
An application for series of certification marks are dealt with in the same manner as a standard trade mark. For more information, please refer to the Practice Guideline on Series Marks.
Where an application for a series of certification marks covers various types of membership such as “Fellow of…”, Member of… or “Associate of…”, IPONZ considers that these do not form a material part of the mark itself.
