Certification Trade Marks: Essential Guidance on Registration and Use

Global e-commerce has resulted in a vastly expanded range of products on the shelves that are manufactured overseas, often at lower prices. However, this has also meant that it can be more challenging for consumers who care about where a product comes from and how it is made to verify its quality.

That’s where a certification trade mark such as the ‘Australian Made’ logo can be helpful.

This article provides practical guidance and answers to FAQs on the registration process of certification marks, their proper use and how traders can apply these marks to their advantage.

What is a certification trade mark?

Unlike a standard trade mark which differentiates goods or services that are made or marketed by a single company from those of any other entity’s, a certification trade mark doesn’t serve to indicate a single trade origin of the goods or services.

Instead, a certification trade mark is as its name suggests. It generally takes the form of a logo, name or phrase and is used to certify that the quality and characteristics of the product or service meet an enforceable and independently verified set of rules. In other words, it serves as badge of guaranteed quality to help brands attract and retain customers.

A certification mark can indicate that a product:

Is made from specific materials or that it has specific ingredients
Complies with a particular manufacturing or production process
Meets established specifications in terms of quality
Is suitable for a certain task

These marks are owned by a single entity but they can be licenced to multiple approved users after a rigorous assessment and approval process.

Examples of certification trade marks in Australia

Some well-known certification trade marks in Australia are the ‘Woolmark’ logo, the ‘Australian Made’ device mark and the ‘Australian Certified Organic’ (ACO) mark.

To give you an idea of how extensive the reach of certification marks can be, the Australian Made logo featuring the distinctive green and gold kangaroo is used by over 4 500 businesses on thousands of products sold in Australia and globally. Relevantly, this certification trade mark is registered across all classes of goods/services but does not include the words “Australian Made”. It is the distinctive green and gold kangaroo design that consumers have learned to understand represents the product (or service) featuring that logo meets certain criteria.

Is there a benefit to certification trade mark?

A certification trade mark is an official identifier which provides consumers with reliable information about a product. It reassures consumers about a product’s quality or origin and is confirmation that item meets established standards.

It’s therefore a major asset in helping to build consumer trust and confidence.

Who can apply for a certification trade mark?

Any legal entity can apply for a certification trade mark, including:

private individuals
large companies
small to medium enterprises
government bodies
public interest groups and associations

However, the key issue for any applicant is demonstrating that it is able to control the standards for this ‘badge of quality’ and that it will ensure that all other goods and services that apply the mark will use it correctly and properly.

Applying for a certification trade mark is a more costly and complex process than a standard trade mark application. There are also considerable cost and operational considerations in terms of ongoing maintenance and management of the mark.

A qualified trade marks attorney can provide valuable advice and guidance on certification trade marks. They can also advise on whether applying to have a certification trade mark assigned to your brand is the best solution for protecting your intellectual property assets.

How does the registration process work for a certification mark?

The process for registering a certification trade mark in Australia differs markedly from that of a standard trade mark.

An initial application is made to IP Australia. Applicants will be given the option to select ‘certification trade mark’ when completing the online application, plus they will also need to submit the set of rules governing the use and compliance of the certification trade mark. The rules do not have to be filed at the same time as the application. These rules include parameters for determining the quality standards for goods or services and the procedures for resolving disputes about whether the items meet the stated standards.

Once the rules have been filed, the rules will then be examined by the Australian Competition & Consumer Commission (ACCC). The certification rules must be approved by the ACCC before the certification trade mark can be accepted for registration.

This regulatory requirement ensures that the proposed rules and requirements meet established standards and are in the public interest. The rules are also available to the public to ensure transparency.

If the ACCC adjudicates that the rules are satisfactory, the application then goes back to IP Australia to be assessed.

If the certification mark is adjudged by IP Australia examiners to have met registration requirements, it gets accepted and is advertised for opposition. The process and timeline are similar to those of a standard trade mark registration, depending on the timeliness of the applicant filing the proposed rules and the ACCC approving them..

You can find more information about certification trade marks in Australia on IP Australia’s website or on the ACCC website.

How do I go about obtaining ownership of an existing certification mark?

Certification trade marks may only be assigned to a new owner with the ACCC’s approval.

Your application must be made in writing to the ACCC and must include the name, business address and address of your organisation or the entity to which the proposed certification trade mark is to be assigned.

If you don’t intend to apply the same rules as the original certification trade mark, you will need to apply to the ACCC for a variation. You will need to state your proposed variation and include a copy of the certification trade mark rules that you wish to apply.

If you apply for changes to be made, the ACCC will follow the same assessment process used for new applications. If the rules remain the same, the ACCC will make the final decision on your application for assignment.

How do I obtain the right to use a certification mark?

The owners of certification trade marks will likely have applications available via their websites and similar that will explain how you can obtain a license to use the mark, the fees payable, and the rules to be followed.

Using the “Australian Made Campaign” and their kangaroo logo as an example, they have detailed information around applying for use of the logo, including providing a fee calculator and requiring applicants sign an undertaking concerning the use. Part of this is to confirm licensees will comply with their Code of Practice, which incorporates the rules the ACCC has approved when they registered the certification trade mark.

If you are interested in using a certification trade mark to ensure your product is recognised as meeting the standards/rules set, the best option is to apply directly through the owner’s website and application process.

Need help or answers on a proposed certification trade mark?

Our experienced team at MMW Trademark Services can help. If you want expert guidance on your application for a certification trade mark or are interested in understanding whether a certification mark is right for you or your business, we are happy to assist. Contact MMW Trademark Services on 03 8288 1432 or get in touch via our website today.