Amendments to Regulation No. 207/2009 on the European Union Trade Mark ('EUTM') took effect as of 01 October 2017, including notably the introduction of a certification mark at the EU level under Articles 74a to 74k.

EU flag against a blue sky backdrop

Under these new provisions, any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for a certification mark, which is defined by Article 83 of Regulation No. 1001/2017 on the EUTM as: “an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.

A certification mark serves to guarantee specific characteristics of the goods and/or services to which the mark is applied, against standards set out in the certification mark holder’s own regulations describing these specific characteristics and the holder’s certification process, and governing the use of the mark.

Importantly, the certification mark holder cannot be a person carrying out a business involving the supply of the certified goods and/or services. By way of example, a vacuum cleaner manufacturer could not apply for a certification mark guaranteeing characteristics of power consumption and/or suction level of its own vacuum cleaners. But a commercial or professional association of vacuum cleaner manufacturers could do so, in respect of the respective vacuum cleaners of its members.

Practically, the holder’s own regulations must be filed within two months of making application for a certification mark and must specify the list of goods and/or services for which the certification mark is applied, the characteristics of the goods and/or services which the mark certifies, how the certifying body assesses the characteristics and supervises use of the mark, the conditions of use of the mark, including applicable fees and sanctions, and persons authorised to use the mark.

Certification marks are a legal novelty at the EU level, but some EU Member States have long made certification marks available under national trade mark law, including the United Kingdom. Franks & Co has extensive and practical experience of assisting applicants with drafting regulations for certification marks, and applying for and obtaining registration of certification marks in the UK. This experience is directly transferrable to the new EU procedure.

Please contact Stéphane Ambrosini if you wish to obtain more information about the new EU certification mark and how Franks & Co may assist your UK or EU requirements in that regard.

Article Published October 3rd, 2017