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6.4 Examination of the draft regulations
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6.4.1 General
The draft regulations should be incorporated in a single document, setting out in a clear and easily read manner, exactly how the certification regime is governed, controlled and maintained. In addition, the draft regulations should set out precisely what the trade mark signifies in relation to the specified goods and services, so that both current and potential users of the certification mark are in no doubt as to what is required of them.
An applicant may attach supplementary documentation by way of an annexure to the draft regulations. Such documents cannot themselves constitute the draft regulations.
6.4.2 When the owner may certify goods and services
The draft regulations must contain provisions that relate to the circumstances when the owner is to certify goods or services.36
The draft regulations must specify the goods and services in relation to which the mark may be used. The goods or services being certified should reflect the goods or services specified in the application form.
The characteristics in respect of which goods and services are to be certified must be defined as precisely as the nature of the goods or services allow. These characteristics must be based on objective criteria and must not be matters of largely subjective criteria such as “good design” or “good practice”.
This is of high importance for certification marks as any person should be able to see exactly what is required in order for goods or services to qualify to use the mark.
In practice, the examiner will not get too involved in assessing this or technical requirements for authorised use of the mark as the regulations and the registration are open to cancellation or alteration.37
Footnotes
36 Section 55(2) (a) (i) of the Trade Marks Act 2002.
37 Section 63 of the Trade Marks Act 2002.
6.4.3 When the owner may authorise use of the mark
The draft regulations must contain provisions that relate to the circumstances when the owner is to authorise the use of the trade mark.38
There must not be any discrimination in authorising the use of the mark. Any persons in New Zealand trading in goods and services with the required characteristics should be eligible for authorisation to use the mark. This is provided that they can and do comply with the regulations. The regulations must not restrict use of the mark to any particular group drawn from traders qualified to use the mark.
These provisions must be based on objective criteria to ensure that the regulations clearly state the characteristics to be certified and be capable of objective assessment. Users of the trade mark must be left in no doubt as to the criteria that they must meet in order to be able to use the certification mark.
Although the certification mark must be open for use by any persons competent to produce goods of the required standard, use of the mark will be restricted to those persons authorised by the owner of the mark in accordance with the objective criteria set out in the regulations.
The regulations should require the owner of the certification mark to keep a register of all the authorised users of the mark and must state that the register will be made available at the owners’ head office. They should also state what information is to be entered in the register and indicate that the register is open to public inspection by the public on reasonable terms.
Footnote
38 Section 55(2) (a) (ii) of the Trade Marks Act 2002.
6.4.4 Other provisions
The Commissioner has discretion to require or permit the insertion of any other provision in the draft regulations.39
Footnote
39 Section 55(2)(b) of the Trade Marks Act 2002.
6.4.4.1 Supervision
There should be adequate supervision and control by the owner to ensure, as far as practical, that the goods or services bearing the mark have the required characteristics.
The regulations should provide for the adequate inspection of the goods in the course of manufacture or for the inspection of samples, or any other method that will ensure that the goods offered for sale comply with the stated characteristics. The draft regulations should include the checks that are in place and the timeframe in which inspections will occur. The Examiner will consider these in the context of whether the applicant is competent to certify the goods or services.
An owner may issue the authorised user with a licence or certificate as evidence of their authority to use the mark. This document should state if it is of a limited duration, when it should be renewed and the circumstances in which the owner may cancel it. A copy of this form may be attached to the regulations.
The provision of a register of authorised users and a programme for checking standards would indicate that the owner is adequately supervising and controlling the use of the mark.
6.4.4.2 Right of appeal
A right of appeal to an independent person (frequently the Commissioner) should be available in the regulations where the owner has refused to certify goods or services in accordance with the regulations or refused to authorise the use of the trade mark in accordance with the regulations or where an entity’s right to use the mark has been cancelled.
However, the Commissioner does not have any jurisdiction to award costs to or against another party against a refusal of the owner of a certification mark to certify goods or services or to authorise the use of the trade mark.40
Footnote
40 See section 208(3)(a) of the Trade Marks Act 2002.
6.4.4.3 Fees
The structure and frequency of any fees stipulated in the regulations must be fully described in the regulations and should not be altered without the consent of the Commissioner. If fees are not payable, this should be stated in the regulations.
The fee structure will be considered in light of any public policy requirements or other law which may be relevant to prevent the scheme contravening any legislation.
If the fee appears unduly high the Office can ask for justification of the fee. This is to ensure that any body that applies for the certification mark and meets the specified criteria is not unduly excluded from use on the basis of cost.
