Defining the EU certification mark

Defining the EU certification mark The authors Axel Ringelhann is an Associate at Kunz Schima Wallentin Rechtsanwälte GmbH, Vienna, Austria. Stefan Martin is a Member of the Boards of Appeal of EUIPO (Alicante, Spain) and CPVO (Angers, France), lecturer at CEIPI, Strasbourg, and a qualified Canadian lawyer. This article As from 1 October 2017, the rules for the new EU certification marks apply. In contrast to ordinary EU trade marks (EUTM), EU certification marks serve to communicate adherence to certain quality standards. This article aims to investigate the new legal framework for EU certification marks by comparing this new type of EUTM to already-existing categories of EUTMs. It also compares this new category of EU mark with certification marks of other jurisdictions. such as the UK and Switzerland. As from 1 October 2017, the rules for the new EU certification marks apply.1 In contrast to ordinary EU trade marks (EUTM), EU certification marks serve to communicate adherence to certain quality standards. The newly inserted Article 83 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR)2 provides Union-wide protection for certification marks and thereby remedies the pre-existing imbalance between national systems. In the absence of any experience with certification marks at European Union scale, national legislation and practice may provide guidance on how to interpret the new provisions on certification marks. Only time will tell how the full contours of the EU certification mark will evolve. It is the task of the European Union Intellectual Property Office (EUIPO), the General Court and the Court of Justice of the European Union (CJEU) to shape this new category of EU marks. This article aims to investigate the new legal framework for the EU certification mark by comparing the new EU mark to already existing categories of EUTMs (I). It then explores the function of EU certification marks, the obstacles to registration and the use requirements (II). Finally, it addresses practical issues such as e-filing, priority claims and fees (III) and provides a conclusion (IV). I. The categories of EU marks A. Introduction Article 83 EUTMR defines the EU certification mark 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. The underlying rationale for the introduction of this new type of EU mark is ‘to remedy the current imbalance between national systems and the EU trade mark system’.3 At national level, legislation in Austria,4 Bulgaria, Croatia, Cyprus, Denmark, Estonia, Finland, France, Hungary, Ireland, Latvia, Malta, Portugal, Romania, Spain, Sweden and the UK already provided a special certification mark system.5 Other Member States, for example Germany, protect quality labels marks in the form of collective marks.6 Against this backdrop, it may seem incoherent that the Trade Mark Directive does not mandate the introduction of national certification marks, but leaves to the Member States the option of introducing and, to some extent, determining the scope of such marks.7 Furthermore, by creating a new standalone category of trade marks, the EUTMR provides legal certainty regarding the eligibility of certification marks for trade mark protection.8 Concerning the previously applicable law, some proponents of certification marks argued that this category of marks may be registered as individual or collective marks, while other authorities suggested that the CTMR/EUTMR excludes registration of such marks, respectively certification marks could not be genuinely used in the form of individual or collective marks.9 Before turning to the EU certification mark in detail, for a better understanding of the nature of this new category of EU marks it is crucial to briefly outline and compare the characteristics of the different types of trade marks. B. Individual and collective EU marks Individual trade marks represent most EUTMs on the EUTM register. Therefore, from a legislative viewpoint this category constitutes the default EU trade mark within the EUTMR.10 Article 4 EUTMR defines (individual) trade marks as ‘signs […] capable of distinguishing the goods or services of one undertaking from those of other undertakings’. Put differently, their essential function is the function of origin.11 In contrast, Article 74(1) EUTMR provides that the sign must be ‘capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’. Thus, the function of the EU collective mark is to distinguish the goods and services originating from members belonging to an association from those of other undertakings.12 In other words, the badge of origin refers to a group of trade mark proprietors, whereas an individual trade mark refers to one specific trade mark owner.13 Interlinked with the trade mark’s function of origin is the question of ownership. While individual trade marks may be owned by natural or legal persons,14 for EU collective marks Article 74(1) EUTMR restricts ownership to associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law. II. The new EU certification mark A. Function Unlike the other categories of EU trade marks, which aim to distinguish the origin of goods and services, certification marks serve to distinguish certain characteristics of goods and services from those goods and services not certified.15 Hence, certification marks are sometimes called ‘guarantee marks’,16 with the emphasis on the guarantee function rather than the function of origin. This guarantee function must not be confused with the guarantee function of an ordinary trade mark. While the former refers to an absolute level of quality, ordinary trade marks attest to the consumer that the level of quality remains the same.17 The absence of the origin function is reflected, inter alia, in the requirement for EU certification mark owners not to ‘carry on a business involving the supply of goods or services of the kind certified’.18 Considering the certification mark’s guarantee function, the ‘“anti”-“use”-by-owner rule’19 appears perfectly reasonable. It lies in the interest of both the certification mark owner and the trade mark owner of the certified goods and services that the certification mark owner remains independent and transparent.20 Pursuant to Article 83(1) EUTMR, the characteristics in respect of which the marks may be certified by the proprietor are the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. In contrast to the initial proposal for the provision,21 this open list now explicitly excludes certification of geographical origin. Thus, for the protection of geographical characteristics of products throughout the EU, stakeholders must rely on EU collective marks, protected geographical indications (PGIs) or protected designations of origin (PDOs). (1) Who may own an EU certification mark? Regarding the requirements for ownership of certification marks, the conditions specified in the EUTMR are more generous than those required in other jurisdictions. Whereas under UK trade mark law, for example, the applicant must be competent to certify the goods and services for which the mark is to be registered,22 no such mandatory requirement can be found in the EUTMR or in the Implementing Regulation (EUTMIR).23 Initially, Article 74b(2)(b) of the Proposal for a Regulation amending the CTMR introduced this requirement,24 however, this idea was abandoned as it was considered to create additional workload for the register.25 It seems, therefore, that the EU certification mark owner may rely on competent certifiers who certify that the goods or services comply with specific requirements. Concerning the nature of the EU certification mark applicant, the European legislator followed the Max Planck Study which identified shortcomings for public and private bodies which intend to use collective marks as certification marks but do not meet the conditions for associations eligible to apply for collective marks.26 Unlike EU collective marks, which can only be owned by associations capable of contracting or by legal persons governed by public law, ‘any natural or legal person, including institutions, authorities and bodies governed by public law’ may apply for EU certification marks.27 The scope of this provision is even more expansive than that for individual marks, which refers to ‘any natural or legal person, including authorities established under public law’.28 As noted above, one caveat is that EU certification mark proprietors must not ‘carry on a business involving the supply of goods or services of the kind certified’. However, the term ‘business’ is not statutorily defined. Considering the public interest, the ‘duty of neutrality’ must be interpreted broadly.29 Article 21(2) of the Swiss Trade Mark Act seems to have served as an example for the Guidelines of the EUIPO as it also excludes undertakings to which the certification mark proprietor is economically linked. Accordingly, extensive corporate structures, for example a holding and its subsidiaries, should equally fall under Article 83(2) EUTMR.30 In practice, this will be difficult to enforce. It is unlikely that examiners will extensively check these requirements. The rather formalistic nature of this requirement can be deduced from Article 17(b) EUTMIR, which states that the applicant must submit a declaration that the applicant complies with the requirements laid down in Article 83(2) EUTMR. It is reasonable to assume, therefore, that examiners will not, of their own motion, embark on an extensive investigation concerning the corporate veil of the EU certification mark applicant. It is more likely that this point will be raised by a competitor in a third-party observation, invalidity or revocation proceedings.31 Nevertheless, it is likely that examiners will check on the register whether the owner of an EU certification mark is also the owner of a similar individual or collective EUTM for the same goods and services as those being certified.32 Pursuant to Articles 89, 91 and 92 EUTMR, the requirements of ownership must be satisfied not only by the applicant at the filing date but also by subsequent assignees at any time. B. Who may use an EU certification mark? (1) Regulations governing the use of EU certification marks As with EU collective marks, the EU certification mark applicant must submit the regulations governing the use of the mark within two months of the filing date.33 Subsequent amendments to the regulations must be notified to the EUIPO.34 The regulations governing use must specify the persons authorized to use the mark, the characteristics to be certified by the mark and how the certifying body is to test those characteristics and to supervise the use of the mark.35 Those regulations must also specify the conditions of use of the mark, including sanctions.36 In addition, Article 17 EUTMIR lays down detailed rules for the regulations governing use of the EU certification marks.37 The regulations governing use are subject to examination by the Office. If the regulations do no feature the said specifications, the application will be refused according to Article 85(1) EUTMR in combination with Article 84(2) EUTMR. It is noteworthy that, in contrast to Swiss and UK legislation, neither the EUTMR nor its implementing regulation touch upon fees or equitable remuneration incurred by users.38 The EUIPO Guidelines merely mention that fees may be specified in the rules governing use.39 Concerning the examination practice of the UKIPO, the Registrar must ensure that the regulations do not unfairly restrict the use of the mark by, for example, charging excessively high fees, which would have anti-competitive results.40 The same rationale underlies the Swiss legislation.41 Just like EU collective marks, third parties may submit observations on the regulations of use within three months of the publication of the application, before the final decision of pending opposition proceedings, or following any amendments to the regulations.42 If the regulations provided by the proprietor fail to meet the legal requirements—for instance, if they do not feature goods and services43 or they are contrary to public order or morality, and these deficiencies are not remedied upon notice by the Office—the EUIPO will refuse the application.44 These grounds for refusal are also valid grounds for invalidity.45 Once the regulations satisfy the legal requirements, they need to be enforced by the proprietor of the EU certification mark. Article 91(b) EUTMR requires the EU certification mark owner to play an active role. If he fails to supervise and to take reasonable steps to prevent the mark from being used in a manner that is incompatible with the conditions of use, the EU certification mark is liable to be revoked. (2) Persons authorized to use EU certification marks The criteria under which persons are authorized to use EU certification marks must be specified in the regulations governing use.46 Unlike EU collective marks, which generally require that the users be members of the association owning the mark, EU certification marks may be used by anybody complying with the standards provided by the regulation governing use. Thus, the users of a collective mark form a ‘club’ while, in respect of certification marks, an ‘open shop’ principle applies.47 J. Thomas McCarthy compares this situation to compulsory licenses, whereby once the owner of a certification mark has established standards for certain criteria, it must apply these fairly and equally to all whose goods or services satisfy those standards.48 In other words, the certification mark owner cannot refuse to allow someone to use the certification mark if their goods or services meet the standards.49 This raises the question as to whether there are any remedies for potential users excluded by the certification mark owner, even though their goods or services meet the prescribed standards.50 Article 21(3) of the Swiss Trade Mark Act, for example, stipulates that the proprietor must allow any person to use the guarantee mark for goods and services that possess the common characteristics guaranteed under the regulations governing use of mark. The excluded party may seek a declaratory judgment that no justified ground for exclusion exist.51 Furthermore, Schedule 2, Para. 6(2) of the UK Trade Marks Act 1994 provides that the regulations governing use of certification marks must indicate procedures for resolving disputes. Thus, under UK trade mark law there must be a possibility for the excluded party to appeal the proprietor’s decision not to allow use of its mark.52 As concerns EU certification marks, it is important to note that neither Articles 83 to 93 EUTMR nor Article 17 EUTMIR provide for dispute settlement procedures regarding the proprietor’s decision not to allow use of the mark. Absent legislative intervention, it appears that the only possible remedy to the excluded party is to bring unfair competition and antitrust claims against the certification mark and/or the certifier before national courts.53 An in-depth engagement with this area of law is beyond the scope of this article. (3) Genuine use Unlike other categories of EUTMs, EU certification marks, by their very nature, may not be used by their proprietors. Instead, EU certification marks are used by users who adhere to the rules specified in the regulations governing use, so-called ‘authorised users’.54 In this respect, Article 87 EUTMR derogates from the general rules governing genuine use of EU trade marks provided for in Article 15 and, by consequence, Article 42 EUTMR. Regarding other conditions, for example, the place, time, extent and nature of use,55 absent any special provision the general rules equally apply to EU certification marks. In addition, the sanctions for non-use governed in Article 58 EUTMR, whereby trade marks which are not used are liable for revocation, also apply to EU certification marks.56 In light of the particular distinguishing function of EU certification marks, the question as to how the essential function of such marks is reconciled with the origin function remains intricate. The CJEU will have to distinguish, with respect to certification marks, its consistent case law pursuant to which there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, that is, the function of guaranteeing the identity of the origin of the goods or services for which it is registered.57 In a recent judgment addressing this very question, the CJEU has clarified that a EU certification mark fulfils its function of indicating origin where it distinguishes ‘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 … from goods and services which are not so certified’.58 C. Absolute grounds for refusal In addition to the traditional grounds for refusal set forth in Article 7(1) EUTMR, Articles 85(1) and (2) EUTMR introduce new specific grounds for refusal concerning EU certification marks. Pursuant to Article 92 EUTMR invalidity claims may also be based on these grounds for refusal. Those newly inserted grounds of refusal are divided into three categories. First, applications which do not satisfy the criteria of ownership: Article 85(1) EUTMR states that an EU certification mark application shall be refused registration if it does not comply with the rules of Article 83 EUTMR. Therefore, the application is refused if it does not satisfy the criteria of ownership, lacks the particular distinguishing function, or violates the central ‘“anti”-“use”-by-owner rule’. Secondly, applications whose regulations of use do not satisfy the legal requirements shall not be registered. The third specific absolute ground concerns misleading applications. (1) Non-distinctive and descriptive certification marks Since certification marks do not serve to indicate the identity of the origin of the products for which they are registered, this type of mark seems ill-suited for overcoming the hurdles of Article 7(1)(b) and (c) EUTMR. It appears that there is no special provision which solves this dilemma. Arguably, the definition of the distinguishing function provided in Article 83(1) EUTMR could be interpreted as lex specialis derogating from Article 7(1)(b) EUTMR.59 However, Article 83(1) EUTMR defines the relationship of EU certification marks to other EUTM categories. It does not clarify the relationship between EU certification marks themselves. What is more, said provision is merely a legal definition, and therefore no true special ground for refusal. In light of the ‘“anti”-“use”-by-owner rule’, the question also arises whether EU certification marks are capable at all to function as indicators of (commercial) origin. If this is—by way of legal prohibition—not the case for those carrying on a business involving the supply of goods or services of the kind certified, this might well be the case for the certifying body or the testing requirements. Therefore, it is reasonable to suggest that Article 7(1)(b) EUTMR is equally applicable to EU certification marks. This is also the stance taken by the EUIPO, which succinctly states that the specific function of certification marks is to distinguish goods or services certified by one certifier (i) from those that are not certified at all and (ii) from those certified by another certifier.60 Regarding Article 7(1)(c) EUTMR, it may be posited that this ground for refusal also applies to EU certification marks, in particular due to the absence of a contrary provision such as Article 74(2) EUTMR, which excludes the application of Article 7(1)(c) EUTMR with respect to EU collective marks indicating a geographical origin. Moreover, such an exclusionary provision was proposed as part of the legislative reform. Article 74b(3) of the Proposal for a Regulation amending the CTMR61 derogated from Article 7(1)(c) CTMR to the extent that the certification mark designated geographical origin. The absence of that derogating provision from the final text of the amending regulation is further evidence that Article 7(1)(c) EUTMR does apply to certification marks. This would bring EU legislation in line with the position adopted by other jurisdictions.62 In practice, in order to avoid unsuccessful applications, just like for any other type of EUTM, applicants will have to recur to graphical representations, or imaginative word marks. (2) Misleading certification marks Pursuant to Article 85(2) EUTMR, an application for an EU certification mark shall be refused if it is liable to be misleading the public as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. This particular ground for refusal has its respective provision for EU collective marks.63 Applications will be misleading, for example, if consumers are led to believe that the goods or services are state-certified or otherwise officially certified when, in fact, they are not.64 Furthermore, an application could be misleading if the mark is likely to be taken to be something other than a certification mark, for example, an individual or an EU collective mark.65 Like for EU collective marks, EU certification marks which, at a later stage, become liable to mislead the public, can be revoked in accordance with Article 91(c) EUTMR. Clearly, the underlying rationale of Article 85(2) EUTMR is to protect consumers. Yet it is hardly imaginable in what way the public would be harmed if an EU certification mark was disguised as an individual EUTM. On the other hand, the inverse situation—where an individual EUTM is used as a certification mark—appears to be a more serious threat. In these cases, Article 7(1)(g) EUTMR (deceptive marks) may be invoked.66 D. Infringement (1) General principles In the absence of any special provision, Article 9(1)(b) EUTMR also applies to EU certification marks.67 Therefore, in accordance with the general principles, there is likelihood of confusion if identical or similar signs are used for identical or similar goods or services for which an EUTM is registered. By contrast, Article 9(1)(a) EUTMR does not predicate on likelihood of confusion. The rights conferred by Article 9(1)(a) EUTMR can be exercised where a third party’s use of a sign affects or is liable to affect adversely the functions of a trade mark. As is apparent from paragraph 57 of the Advocate General’s Opinion in Gözze, Article 9(1)(a) EUTMR allows the proprietor of an EU trade mark in the form of a label of quality to prevent competitors from using an identical sign for goods or services which are identical to those in respect of which the trade mark was registered, where such use is liable to affect adversely one of the trade mark’s functions, such as the indication of the quality of the goods.68 Article 9(1)(c) EUTMR, and Article 8(5) EUTMR equally apply to EU certification marks. EU certification mark proprietors may prove reputation of its mark.69 (2) Persons entitled to bring action Pursuant to Article 90(1) EUTMR, only the proprietor of an EU certification mark, or any person specifically authorized by him to that effect, is entitled to commence an action for infringement. In practice, the persons authorized to instigate an action will be specified in the regulations governing the use of the mark. Regarding claims for compensation for damages caused as a consequence of unauthorized use, the EUTMR restricts the persons entitled to bring such actions to the proprietor of an EU certification mark. Unauthorized use may occur where a mark is used to label a product which is in fact not certified or where the certification has expired.70 According to Article 90(2) EUTMR, the proprietor is entitled to claim compensation on behalf of persons who have authority to use the mark. III. Application process A. General rules From 1 October 2017, applications for EU certification marks may be filed at the EUIPO or by way of international application at the International Bureau of the World Intellectual Property Organization (WIPO).71 Unlike the national legislation of some members of the Paris Union—for which the collective mark was introduced in 1911—the EUTMR does not provide transitional rules.72 Thus, owners of EU individual or collective marks which to date use these categories of marks as certification marks73 do not have the legal means to transform (‘legalize’) such marks into EU certification marks. Beside the requirement to designate the certification mark as such and to file within two months74 stipulated by the governing regulations, there are no additional conditions for the filing of EU certification marks. As for EU collective marks, there is no fast-track filing option for EU certification marks, the reason being that the regulations governing use must undergo examination. B. Fees The registration cost for an EU certification mark is the same as for an EU collective mark, that is, €1,800 (€1,500 e-filing); €50 for a second class; €150 for a third and all subsequent classes.75 C. Conversion In addition to the instances described in Article 139(2) EUTMR, conversion of an application for an EU certification mark or of a registered EU certification is excluded where the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of the Trade Mark Directive. D. Claiming priority/seniority Regarding priority claims and seniority, in the absence of a special provision in the meaning of Article 83(3) EUTMR, it appears reasonable that the same principles applied to EU collective marks shall also apply to EU certification marks.76 Thereafter priority can be claimed from a certification mark when applying for an individual European Union trade mark and vice versa. IV. Conclusion The present article has analysed the new EU legislation for certification marks. It scrutinized the functions of the EU certification mark and the connected questions of genuine use and absolute grounds of refusal. Due to the lack of practice in this area, the article embraced a comparative approach. In this perspective, the jurisdiction of the USA, the UK and to some extent Switzerland provide some helpful insights. Also, the comparison with EU collective marks was of particular significance. Eventually, it is the task of the EUIPO and the courts of the European Union to develop this new category of EU marks. Footnotes This article is not binding the EUIPO in any way, it exclusively reflects the personal opinion of the authors. 1 Article 4 of Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (hereafter referred to as Regulation 2015/2424); The respective provisions in Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (hereafter referred to as Trade mark Directive) must be transposed by the Member States into national law by 14 January 2019, see Article 54(1) legis citatae. 2 Regulation 2015/2424 was codified by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (hereafter referred to as EUTMR). In the former Regulation the rules governing the EU certification mark were stipulated in Articles 74a to 74k, the correct codified numbering is Articles 83 to 93. 3 Recital 27 of Regulation 2015/2424; see also, ‘Study on the Overall Functioning of the European Trade Mark System by the Max Planck Institute for Intellectual Property and Competition Law’ (2011), p. 212. 4 Austria only recently transposed parts of the Trade Mark Directive into national law. Section 63a et seq. of the Austrian Trade Mark Act as amended on 1 August 2017, which entered into force on 1 September 2017, provides separate protection for certification marks, see Federal Law Gazette I No. 124/2017. 5 M. Holah and P. Collis, The European Union Trade Mark – A Practical Guide (Globe Law and Business, London, 2016), p. 317. 6 Sec. 97(1) of the German Trade Mark Act (MarkenG); see, however, secs. 106a–106h of the Proposal for a Law Modernising the German Trade Mark Act, published on 3 February 2017 (Referentenentwurf des Bundesministeriums der Justiz und für Verbraucherschutz Entwurf eines Gesetzes zur Umsetzung der Richtlinie (EU) 2015/2436 des Europäischen Parlaments und des Rates vom 16. Dezember 2015 zur Angleichung der Rechtsvorschriften der Mitgliedstaaten über die Marken – Markenrechtsmodernisierungsgesetz) which introduces a new category of certification mark. 7 See Article 28(1) and (2) of the Trade Mark Directive 2015/2436. For reasons of competition, it is very likely that Member States will introduce a certification mark system. Some have planned to do so already, e.g. the German legislator (see above, n 6). 8 Compare US law, where certification marks were protected as a form of collective mark before in 1946 certification marks received standalone protection, J. C. Fromer, ‘The Unregulated Certification Mark(et)’, 69 Stan. L. Rev. 121 (2017), p. 125, n 4. 9 D. Schennen in G. Eisenführ, D. Schennen, GMV4 (2014), Art 66, para. 11; Decision of the Second Board of Appeal of EUIPO (hereafter BoA), 10/5/2012, R 1007/2011-2 – FLAG WITH STARS, para. 13, advocate the registration of certification mark under the rules of the CTMR; see, also the Guidelines concerning proceedings before the Office, Part B, Version April 2008, p. 58; cf D. Slopek/ A. Leister, ‘Bio-Siegel & Co. – die markenrechtliche Einordnung von Güterzeichen’, GRUR 2013, p. 359. By contrast, BoA 20/02/2017, R 1357/2015-5 – EIN KREIS MIT ZWEI PFEILEN (fig.), para. 22; BoA 12/12/2014, R 1360/2014-5 – DOWNMARK, para. 36; Republic of Cyprus v OHIM, T292/14 and T-293/14 – Halloumi/ XAΛΛOYMI, EU:T:2015:752 and BoA 15/2/2011, R 675/2010-2 – BIODYNAMIC, para. 21, suggest otherwise. 10 This reflects in Article 74(3) and 83(3) EUTMR which state that special regime for collective and certification marks. 11 Arsenal Football Club plc v Matthew Reed, C-206/01, EU:C:2002:651, para. 48. 12 BoA, 23/11/2011, R 1497/2010-2 – Y (FIG. MARK) / Y (FIG. MARK), para. 34. 13 BoA, 20/02/2017, R 1357/2015-5 – EIN KREIS MIT ZWEI PFEILEN (fig.), para. 21. 14 Article 5 EUTMR. 15 Article 83(1) EUTMR. 16 Compare, e.g., Article 21 of the Swiss Federal Law on the protection of trade marks and indications of origin (Bundesgesetz über den Schutz von Marken und Herkunftsangaben vom 28.8.1992 idF vom 1.7.2011(hereafter Swiss Trade Mark Act)), which uses the term ‘marque de garantie’, ‘Garantiemarke’. 17 J. Belson, Certification and Collective Marks – Law and Practice (Edward Elgar, Cheltenham, 2017), p. 31, para. 3.08. 18 Article 83(2) EUTMR; in this regard compare Article 21(2) of the Swiss Trade Mark Act. 19 This expression is coined by the doyen of US trademark law, J. Thomas McCarthy, see: 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn), § 19:94. 20 Cf J. Belson, ‘Ecolabels: Ownership, Use, and the Public Interest’, JIPLP 7(2), 103 (2012). 21 Article 74b(3) of the Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 22 See para 7(1)(b) of Schedule 2 of the UK Trade Marks Act 1994. 23 The Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules for implementing provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark. 24 See Article 74b(2)(b) of the Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 25 Cf D. Slopek, BeckOK MarkenR, 9. Ed. 1 March 2017, VO (EG) 207/2009 Article 74a, para. 18. 26 Max Planck Study, above n 3, p. 212. 27 Article 83(2) EUTMR. By comparison, in some national guarantee mark systems only legal persons may apply for such marks, see, e.g., Art L715-2 (1) of the French Intellectual Property Code. 28 Article 5 EUTMR. 29 Compare EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 1 October 2017, p. 5. 30 Cf M. Thomann, ‘Zur Garantiemarke nach schweizerischem Recht’, SJW 92/1996, p. 327; S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 632. Similarly, A. Thünken, ‘Die Unionsgewährleistungsmarke: Sinnvolle Ergänzung eines Markenportfolios?’, GRUR-Prax 2016, p. 494. 31 Cf EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 01/10/2017, p. 6. 32 Cf UKIPO Guidance on collective and certification trade marks (2011), p. 14. 33 EU collective marks, see, Art 67(1) EUTMR; EU certification marks, see, Article 84(1) EUTMR. 34 Article 88(1) EUTMR. 35 Article 84(2) EUTMR. 36 Ibid. 37 See Article 84(3) EUTMR in combination with Article 17 EUTMIR. 38 Article 21(3) of the Swiss Trade Mark Act; Schedule 2, para 6(2) of the UK Trade Marks Act 1994. 39 Cf EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 01/10/2017, p. 8. 40 Cf UKIPO Guidance on collective and certification trade marks (2011), p. 11. 41 S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 635. 42 Article 86 and 88(3) EUTMR in combination with Article 45(2) EUTMR. 43 Article 17 EUTMIR. 44 Article 85(1) and (3) EUTMR. 45 Article 92 EUTMR. 46 Article 84 EUTMR and Article 17 EUTMIR. 47 WIPO SCT/9/4, p. 9. 48 McCarthy, McCarthy on Trademarks, § 19:92. 49 Ibid. 50 Regarding US trademark law, see the comprehensive article by J.C. Fromer, ‘The Unregulated Certification Mark(et)’. 51 S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 633. 52 UKIPO Guidance on collective and certification trade marks (2011), p. 15. 53 Cf S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 633; M. Thomann, ‘Zur Garantiemarke nach schweizerischem Recht’, SJW 92/1996, p. 327. 54 Article 87 EUTMR. 55 In accordance with Article 10(3) of the Delegated Regulation (EU) 2017/1430 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96, the proof of use shall consist of indications concerning the place, time, extent and nature of said use. 56 Article 91 EUTMR. 57 Cf Ansul BV v Ajax Brandbeveiliging BV, C-40/01, EU:C:2003:145 (also known as Minimax case), para. 43. 58 W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434, para. 50. 59 Similarly, A. Leister/L. Romeike GRUR Int 2016, 122 (126). 60 EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 1 October 2017, p. 9. 61 European Commission, Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 62 Regarding the USA, see McCarthy, McCarthy on Trademarks, § 19:95; regarding Switzerland see, however, the decision Felsenkeller, BGE 131 III 495, where the Swiss Supreme Court held that certification marks as opposed to individual marks would have to satisfy reduced requirements. According to Jeffrey Belson, also in the UK, the standard of distinctiveness has been judicially regarded as lower, see J Belson, Certification and Collective Marks – Law and Practice (Edward Elgar, Cheltenham, 2017) p. 60, para. 3.77. 63 Article 68(2) EUTMR. 64 Cf UKIPO Guidance on collective and certification trade marks (2011), p.10. 65 See, with regard to EU collective marks, BoA, 15/02/2011, R 675/2010-2 – BIODYNAMIC, para. 19. 66 W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434, paras 54–56. 67 Compare US law, where the same likelihood of confusion analysis applies to certification marks, McCarthy, McCarthy on Trademarks, § 19:92.50. 68 Opinion of Advocate General Wathelet in W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2016:916, para. 57. 69 BoA, 19/09/2013 – R 1274/2013-1 – F.F.R. (FIG. MARK) / CONSORZIO VINO CHIANTI CLASSICO (FIG. MARK) et al., para. 50. 70 Compare McCarthy, McCarthy on Trademarks, § 19:92.50. 71 Article 194 EUTMR. 72 Pursuant to Section 24g of the German Act on the Protection of trade signs as promulgated on 7 December 1923 (Gesetz zum Schutze der Warenbezeichnungen in der Fassung der Bekanntmachung vom 7. Dezember 1923, RGBl 1923 II S. 437) and Section 7 of the Austrian Act on the Protection of Collective marks as promulgated on 4 April 1930 (Bundesgesetz vom 4. April 1930 über den Schutz von Verbandsmarken, BGBl 109/1930) within one year of entering into force of the law protecting collective marks individual marks belonging to associations upon request could be converted into collective marks while keeping the priority of the underlying individual mark. 73 Cf W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434. 74 Articles 83(1) and 84(1) EUTMR. 75 EUTMR, Annex I, A. 76 Regarding EU collective marks see EUIPO Guidelines, Part B, Formalities, 1 August 2016, p. 51. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices) http://www.deepdyve.com/assets/images/DeepDyve-Logo-lg.png Journal of Intellectual Property Law & Practice Oxford University Press

Defining the EU certification mark

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Oxford University Press
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© The Author(s) 2018. Published by Oxford University Press. All rights reserved.
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1747-1532
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1747-1540
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10.1093/jiplp/jpx233
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Abstract

The authors Axel Ringelhann is an Associate at Kunz Schima Wallentin Rechtsanwälte GmbH, Vienna, Austria. Stefan Martin is a Member of the Boards of Appeal of EUIPO (Alicante, Spain) and CPVO (Angers, France), lecturer at CEIPI, Strasbourg, and a qualified Canadian lawyer. This article As from 1 October 2017, the rules for the new EU certification marks apply. In contrast to ordinary EU trade marks (EUTM), EU certification marks serve to communicate adherence to certain quality standards. This article aims to investigate the new legal framework for EU certification marks by comparing this new type of EUTM to already-existing categories of EUTMs. It also compares this new category of EU mark with certification marks of other jurisdictions. such as the UK and Switzerland. As from 1 October 2017, the rules for the new EU certification marks apply.1 In contrast to ordinary EU trade marks (EUTM), EU certification marks serve to communicate adherence to certain quality standards. The newly inserted Article 83 of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR)2 provides Union-wide protection for certification marks and thereby remedies the pre-existing imbalance between national systems. In the absence of any experience with certification marks at European Union scale, national legislation and practice may provide guidance on how to interpret the new provisions on certification marks. Only time will tell how the full contours of the EU certification mark will evolve. It is the task of the European Union Intellectual Property Office (EUIPO), the General Court and the Court of Justice of the European Union (CJEU) to shape this new category of EU marks. This article aims to investigate the new legal framework for the EU certification mark by comparing the new EU mark to already existing categories of EUTMs (I). It then explores the function of EU certification marks, the obstacles to registration and the use requirements (II). Finally, it addresses practical issues such as e-filing, priority claims and fees (III) and provides a conclusion (IV). I. The categories of EU marks A. Introduction Article 83 EUTMR defines the EU certification mark 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. The underlying rationale for the introduction of this new type of EU mark is ‘to remedy the current imbalance between national systems and the EU trade mark system’.3 At national level, legislation in Austria,4 Bulgaria, Croatia, Cyprus, Denmark, Estonia, Finland, France, Hungary, Ireland, Latvia, Malta, Portugal, Romania, Spain, Sweden and the UK already provided a special certification mark system.5 Other Member States, for example Germany, protect quality labels marks in the form of collective marks.6 Against this backdrop, it may seem incoherent that the Trade Mark Directive does not mandate the introduction of national certification marks, but leaves to the Member States the option of introducing and, to some extent, determining the scope of such marks.7 Furthermore, by creating a new standalone category of trade marks, the EUTMR provides legal certainty regarding the eligibility of certification marks for trade mark protection.8 Concerning the previously applicable law, some proponents of certification marks argued that this category of marks may be registered as individual or collective marks, while other authorities suggested that the CTMR/EUTMR excludes registration of such marks, respectively certification marks could not be genuinely used in the form of individual or collective marks.9 Before turning to the EU certification mark in detail, for a better understanding of the nature of this new category of EU marks it is crucial to briefly outline and compare the characteristics of the different types of trade marks. B. Individual and collective EU marks Individual trade marks represent most EUTMs on the EUTM register. Therefore, from a legislative viewpoint this category constitutes the default EU trade mark within the EUTMR.10 Article 4 EUTMR defines (individual) trade marks as ‘signs […] capable of distinguishing the goods or services of one undertaking from those of other undertakings’. Put differently, their essential function is the function of origin.11 In contrast, Article 74(1) EUTMR provides that the sign must be ‘capable of distinguishing the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings’. Thus, the function of the EU collective mark is to distinguish the goods and services originating from members belonging to an association from those of other undertakings.12 In other words, the badge of origin refers to a group of trade mark proprietors, whereas an individual trade mark refers to one specific trade mark owner.13 Interlinked with the trade mark’s function of origin is the question of ownership. While individual trade marks may be owned by natural or legal persons,14 for EU collective marks Article 74(1) EUTMR restricts ownership to associations of manufacturers, producers, suppliers of services or traders, as well as legal persons governed by public law. II. The new EU certification mark A. Function Unlike the other categories of EU trade marks, which aim to distinguish the origin of goods and services, certification marks serve to distinguish certain characteristics of goods and services from those goods and services not certified.15 Hence, certification marks are sometimes called ‘guarantee marks’,16 with the emphasis on the guarantee function rather than the function of origin. This guarantee function must not be confused with the guarantee function of an ordinary trade mark. While the former refers to an absolute level of quality, ordinary trade marks attest to the consumer that the level of quality remains the same.17 The absence of the origin function is reflected, inter alia, in the requirement for EU certification mark owners not to ‘carry on a business involving the supply of goods or services of the kind certified’.18 Considering the certification mark’s guarantee function, the ‘“anti”-“use”-by-owner rule’19 appears perfectly reasonable. It lies in the interest of both the certification mark owner and the trade mark owner of the certified goods and services that the certification mark owner remains independent and transparent.20 Pursuant to Article 83(1) EUTMR, the characteristics in respect of which the marks may be certified by the proprietor are the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. In contrast to the initial proposal for the provision,21 this open list now explicitly excludes certification of geographical origin. Thus, for the protection of geographical characteristics of products throughout the EU, stakeholders must rely on EU collective marks, protected geographical indications (PGIs) or protected designations of origin (PDOs). (1) Who may own an EU certification mark? Regarding the requirements for ownership of certification marks, the conditions specified in the EUTMR are more generous than those required in other jurisdictions. Whereas under UK trade mark law, for example, the applicant must be competent to certify the goods and services for which the mark is to be registered,22 no such mandatory requirement can be found in the EUTMR or in the Implementing Regulation (EUTMIR).23 Initially, Article 74b(2)(b) of the Proposal for a Regulation amending the CTMR introduced this requirement,24 however, this idea was abandoned as it was considered to create additional workload for the register.25 It seems, therefore, that the EU certification mark owner may rely on competent certifiers who certify that the goods or services comply with specific requirements. Concerning the nature of the EU certification mark applicant, the European legislator followed the Max Planck Study which identified shortcomings for public and private bodies which intend to use collective marks as certification marks but do not meet the conditions for associations eligible to apply for collective marks.26 Unlike EU collective marks, which can only be owned by associations capable of contracting or by legal persons governed by public law, ‘any natural or legal person, including institutions, authorities and bodies governed by public law’ may apply for EU certification marks.27 The scope of this provision is even more expansive than that for individual marks, which refers to ‘any natural or legal person, including authorities established under public law’.28 As noted above, one caveat is that EU certification mark proprietors must not ‘carry on a business involving the supply of goods or services of the kind certified’. However, the term ‘business’ is not statutorily defined. Considering the public interest, the ‘duty of neutrality’ must be interpreted broadly.29 Article 21(2) of the Swiss Trade Mark Act seems to have served as an example for the Guidelines of the EUIPO as it also excludes undertakings to which the certification mark proprietor is economically linked. Accordingly, extensive corporate structures, for example a holding and its subsidiaries, should equally fall under Article 83(2) EUTMR.30 In practice, this will be difficult to enforce. It is unlikely that examiners will extensively check these requirements. The rather formalistic nature of this requirement can be deduced from Article 17(b) EUTMIR, which states that the applicant must submit a declaration that the applicant complies with the requirements laid down in Article 83(2) EUTMR. It is reasonable to assume, therefore, that examiners will not, of their own motion, embark on an extensive investigation concerning the corporate veil of the EU certification mark applicant. It is more likely that this point will be raised by a competitor in a third-party observation, invalidity or revocation proceedings.31 Nevertheless, it is likely that examiners will check on the register whether the owner of an EU certification mark is also the owner of a similar individual or collective EUTM for the same goods and services as those being certified.32 Pursuant to Articles 89, 91 and 92 EUTMR, the requirements of ownership must be satisfied not only by the applicant at the filing date but also by subsequent assignees at any time. B. Who may use an EU certification mark? (1) Regulations governing the use of EU certification marks As with EU collective marks, the EU certification mark applicant must submit the regulations governing the use of the mark within two months of the filing date.33 Subsequent amendments to the regulations must be notified to the EUIPO.34 The regulations governing use must specify the persons authorized to use the mark, the characteristics to be certified by the mark and how the certifying body is to test those characteristics and to supervise the use of the mark.35 Those regulations must also specify the conditions of use of the mark, including sanctions.36 In addition, Article 17 EUTMIR lays down detailed rules for the regulations governing use of the EU certification marks.37 The regulations governing use are subject to examination by the Office. If the regulations do no feature the said specifications, the application will be refused according to Article 85(1) EUTMR in combination with Article 84(2) EUTMR. It is noteworthy that, in contrast to Swiss and UK legislation, neither the EUTMR nor its implementing regulation touch upon fees or equitable remuneration incurred by users.38 The EUIPO Guidelines merely mention that fees may be specified in the rules governing use.39 Concerning the examination practice of the UKIPO, the Registrar must ensure that the regulations do not unfairly restrict the use of the mark by, for example, charging excessively high fees, which would have anti-competitive results.40 The same rationale underlies the Swiss legislation.41 Just like EU collective marks, third parties may submit observations on the regulations of use within three months of the publication of the application, before the final decision of pending opposition proceedings, or following any amendments to the regulations.42 If the regulations provided by the proprietor fail to meet the legal requirements—for instance, if they do not feature goods and services43 or they are contrary to public order or morality, and these deficiencies are not remedied upon notice by the Office—the EUIPO will refuse the application.44 These grounds for refusal are also valid grounds for invalidity.45 Once the regulations satisfy the legal requirements, they need to be enforced by the proprietor of the EU certification mark. Article 91(b) EUTMR requires the EU certification mark owner to play an active role. If he fails to supervise and to take reasonable steps to prevent the mark from being used in a manner that is incompatible with the conditions of use, the EU certification mark is liable to be revoked. (2) Persons authorized to use EU certification marks The criteria under which persons are authorized to use EU certification marks must be specified in the regulations governing use.46 Unlike EU collective marks, which generally require that the users be members of the association owning the mark, EU certification marks may be used by anybody complying with the standards provided by the regulation governing use. Thus, the users of a collective mark form a ‘club’ while, in respect of certification marks, an ‘open shop’ principle applies.47 J. Thomas McCarthy compares this situation to compulsory licenses, whereby once the owner of a certification mark has established standards for certain criteria, it must apply these fairly and equally to all whose goods or services satisfy those standards.48 In other words, the certification mark owner cannot refuse to allow someone to use the certification mark if their goods or services meet the standards.49 This raises the question as to whether there are any remedies for potential users excluded by the certification mark owner, even though their goods or services meet the prescribed standards.50 Article 21(3) of the Swiss Trade Mark Act, for example, stipulates that the proprietor must allow any person to use the guarantee mark for goods and services that possess the common characteristics guaranteed under the regulations governing use of mark. The excluded party may seek a declaratory judgment that no justified ground for exclusion exist.51 Furthermore, Schedule 2, Para. 6(2) of the UK Trade Marks Act 1994 provides that the regulations governing use of certification marks must indicate procedures for resolving disputes. Thus, under UK trade mark law there must be a possibility for the excluded party to appeal the proprietor’s decision not to allow use of its mark.52 As concerns EU certification marks, it is important to note that neither Articles 83 to 93 EUTMR nor Article 17 EUTMIR provide for dispute settlement procedures regarding the proprietor’s decision not to allow use of the mark. Absent legislative intervention, it appears that the only possible remedy to the excluded party is to bring unfair competition and antitrust claims against the certification mark and/or the certifier before national courts.53 An in-depth engagement with this area of law is beyond the scope of this article. (3) Genuine use Unlike other categories of EUTMs, EU certification marks, by their very nature, may not be used by their proprietors. Instead, EU certification marks are used by users who adhere to the rules specified in the regulations governing use, so-called ‘authorised users’.54 In this respect, Article 87 EUTMR derogates from the general rules governing genuine use of EU trade marks provided for in Article 15 and, by consequence, Article 42 EUTMR. Regarding other conditions, for example, the place, time, extent and nature of use,55 absent any special provision the general rules equally apply to EU certification marks. In addition, the sanctions for non-use governed in Article 58 EUTMR, whereby trade marks which are not used are liable for revocation, also apply to EU certification marks.56 In light of the particular distinguishing function of EU certification marks, the question as to how the essential function of such marks is reconciled with the origin function remains intricate. The CJEU will have to distinguish, with respect to certification marks, its consistent case law pursuant to which there is ‘genuine use’ of a trade mark where the mark is used in accordance with its essential function, that is, the function of guaranteeing the identity of the origin of the goods or services for which it is registered.57 In a recent judgment addressing this very question, the CJEU has clarified that a EU certification mark fulfils its function of indicating origin where it distinguishes ‘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 … from goods and services which are not so certified’.58 C. Absolute grounds for refusal In addition to the traditional grounds for refusal set forth in Article 7(1) EUTMR, Articles 85(1) and (2) EUTMR introduce new specific grounds for refusal concerning EU certification marks. Pursuant to Article 92 EUTMR invalidity claims may also be based on these grounds for refusal. Those newly inserted grounds of refusal are divided into three categories. First, applications which do not satisfy the criteria of ownership: Article 85(1) EUTMR states that an EU certification mark application shall be refused registration if it does not comply with the rules of Article 83 EUTMR. Therefore, the application is refused if it does not satisfy the criteria of ownership, lacks the particular distinguishing function, or violates the central ‘“anti”-“use”-by-owner rule’. Secondly, applications whose regulations of use do not satisfy the legal requirements shall not be registered. The third specific absolute ground concerns misleading applications. (1) Non-distinctive and descriptive certification marks Since certification marks do not serve to indicate the identity of the origin of the products for which they are registered, this type of mark seems ill-suited for overcoming the hurdles of Article 7(1)(b) and (c) EUTMR. It appears that there is no special provision which solves this dilemma. Arguably, the definition of the distinguishing function provided in Article 83(1) EUTMR could be interpreted as lex specialis derogating from Article 7(1)(b) EUTMR.59 However, Article 83(1) EUTMR defines the relationship of EU certification marks to other EUTM categories. It does not clarify the relationship between EU certification marks themselves. What is more, said provision is merely a legal definition, and therefore no true special ground for refusal. In light of the ‘“anti”-“use”-by-owner rule’, the question also arises whether EU certification marks are capable at all to function as indicators of (commercial) origin. If this is—by way of legal prohibition—not the case for those carrying on a business involving the supply of goods or services of the kind certified, this might well be the case for the certifying body or the testing requirements. Therefore, it is reasonable to suggest that Article 7(1)(b) EUTMR is equally applicable to EU certification marks. This is also the stance taken by the EUIPO, which succinctly states that the specific function of certification marks is to distinguish goods or services certified by one certifier (i) from those that are not certified at all and (ii) from those certified by another certifier.60 Regarding Article 7(1)(c) EUTMR, it may be posited that this ground for refusal also applies to EU certification marks, in particular due to the absence of a contrary provision such as Article 74(2) EUTMR, which excludes the application of Article 7(1)(c) EUTMR with respect to EU collective marks indicating a geographical origin. Moreover, such an exclusionary provision was proposed as part of the legislative reform. Article 74b(3) of the Proposal for a Regulation amending the CTMR61 derogated from Article 7(1)(c) CTMR to the extent that the certification mark designated geographical origin. The absence of that derogating provision from the final text of the amending regulation is further evidence that Article 7(1)(c) EUTMR does apply to certification marks. This would bring EU legislation in line with the position adopted by other jurisdictions.62 In practice, in order to avoid unsuccessful applications, just like for any other type of EUTM, applicants will have to recur to graphical representations, or imaginative word marks. (2) Misleading certification marks Pursuant to Article 85(2) EUTMR, an application for an EU certification mark shall be refused if it is liable to be misleading the public as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. This particular ground for refusal has its respective provision for EU collective marks.63 Applications will be misleading, for example, if consumers are led to believe that the goods or services are state-certified or otherwise officially certified when, in fact, they are not.64 Furthermore, an application could be misleading if the mark is likely to be taken to be something other than a certification mark, for example, an individual or an EU collective mark.65 Like for EU collective marks, EU certification marks which, at a later stage, become liable to mislead the public, can be revoked in accordance with Article 91(c) EUTMR. Clearly, the underlying rationale of Article 85(2) EUTMR is to protect consumers. Yet it is hardly imaginable in what way the public would be harmed if an EU certification mark was disguised as an individual EUTM. On the other hand, the inverse situation—where an individual EUTM is used as a certification mark—appears to be a more serious threat. In these cases, Article 7(1)(g) EUTMR (deceptive marks) may be invoked.66 D. Infringement (1) General principles In the absence of any special provision, Article 9(1)(b) EUTMR also applies to EU certification marks.67 Therefore, in accordance with the general principles, there is likelihood of confusion if identical or similar signs are used for identical or similar goods or services for which an EUTM is registered. By contrast, Article 9(1)(a) EUTMR does not predicate on likelihood of confusion. The rights conferred by Article 9(1)(a) EUTMR can be exercised where a third party’s use of a sign affects or is liable to affect adversely the functions of a trade mark. As is apparent from paragraph 57 of the Advocate General’s Opinion in Gözze, Article 9(1)(a) EUTMR allows the proprietor of an EU trade mark in the form of a label of quality to prevent competitors from using an identical sign for goods or services which are identical to those in respect of which the trade mark was registered, where such use is liable to affect adversely one of the trade mark’s functions, such as the indication of the quality of the goods.68 Article 9(1)(c) EUTMR, and Article 8(5) EUTMR equally apply to EU certification marks. EU certification mark proprietors may prove reputation of its mark.69 (2) Persons entitled to bring action Pursuant to Article 90(1) EUTMR, only the proprietor of an EU certification mark, or any person specifically authorized by him to that effect, is entitled to commence an action for infringement. In practice, the persons authorized to instigate an action will be specified in the regulations governing the use of the mark. Regarding claims for compensation for damages caused as a consequence of unauthorized use, the EUTMR restricts the persons entitled to bring such actions to the proprietor of an EU certification mark. Unauthorized use may occur where a mark is used to label a product which is in fact not certified or where the certification has expired.70 According to Article 90(2) EUTMR, the proprietor is entitled to claim compensation on behalf of persons who have authority to use the mark. III. Application process A. General rules From 1 October 2017, applications for EU certification marks may be filed at the EUIPO or by way of international application at the International Bureau of the World Intellectual Property Organization (WIPO).71 Unlike the national legislation of some members of the Paris Union—for which the collective mark was introduced in 1911—the EUTMR does not provide transitional rules.72 Thus, owners of EU individual or collective marks which to date use these categories of marks as certification marks73 do not have the legal means to transform (‘legalize’) such marks into EU certification marks. Beside the requirement to designate the certification mark as such and to file within two months74 stipulated by the governing regulations, there are no additional conditions for the filing of EU certification marks. As for EU collective marks, there is no fast-track filing option for EU certification marks, the reason being that the regulations governing use must undergo examination. B. Fees The registration cost for an EU certification mark is the same as for an EU collective mark, that is, €1,800 (€1,500 e-filing); €50 for a second class; €150 for a third and all subsequent classes.75 C. Conversion In addition to the instances described in Article 139(2) EUTMR, conversion of an application for an EU certification mark or of a registered EU certification is excluded where the national law of the Member State concerned does not provide for the registration of guarantee or certification marks pursuant to Article 28 of the Trade Mark Directive. D. Claiming priority/seniority Regarding priority claims and seniority, in the absence of a special provision in the meaning of Article 83(3) EUTMR, it appears reasonable that the same principles applied to EU collective marks shall also apply to EU certification marks.76 Thereafter priority can be claimed from a certification mark when applying for an individual European Union trade mark and vice versa. IV. Conclusion The present article has analysed the new EU legislation for certification marks. It scrutinized the functions of the EU certification mark and the connected questions of genuine use and absolute grounds of refusal. Due to the lack of practice in this area, the article embraced a comparative approach. In this perspective, the jurisdiction of the USA, the UK and to some extent Switzerland provide some helpful insights. Also, the comparison with EU collective marks was of particular significance. Eventually, it is the task of the EUIPO and the courts of the European Union to develop this new category of EU marks. Footnotes This article is not binding the EUIPO in any way, it exclusively reflects the personal opinion of the authors. 1 Article 4 of Regulation 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (hereafter referred to as Regulation 2015/2424); The respective provisions in Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (hereafter referred to as Trade mark Directive) must be transposed by the Member States into national law by 14 January 2019, see Article 54(1) legis citatae. 2 Regulation 2015/2424 was codified by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (hereafter referred to as EUTMR). In the former Regulation the rules governing the EU certification mark were stipulated in Articles 74a to 74k, the correct codified numbering is Articles 83 to 93. 3 Recital 27 of Regulation 2015/2424; see also, ‘Study on the Overall Functioning of the European Trade Mark System by the Max Planck Institute for Intellectual Property and Competition Law’ (2011), p. 212. 4 Austria only recently transposed parts of the Trade Mark Directive into national law. Section 63a et seq. of the Austrian Trade Mark Act as amended on 1 August 2017, which entered into force on 1 September 2017, provides separate protection for certification marks, see Federal Law Gazette I No. 124/2017. 5 M. Holah and P. Collis, The European Union Trade Mark – A Practical Guide (Globe Law and Business, London, 2016), p. 317. 6 Sec. 97(1) of the German Trade Mark Act (MarkenG); see, however, secs. 106a–106h of the Proposal for a Law Modernising the German Trade Mark Act, published on 3 February 2017 (Referentenentwurf des Bundesministeriums der Justiz und für Verbraucherschutz Entwurf eines Gesetzes zur Umsetzung der Richtlinie (EU) 2015/2436 des Europäischen Parlaments und des Rates vom 16. Dezember 2015 zur Angleichung der Rechtsvorschriften der Mitgliedstaaten über die Marken – Markenrechtsmodernisierungsgesetz) which introduces a new category of certification mark. 7 See Article 28(1) and (2) of the Trade Mark Directive 2015/2436. For reasons of competition, it is very likely that Member States will introduce a certification mark system. Some have planned to do so already, e.g. the German legislator (see above, n 6). 8 Compare US law, where certification marks were protected as a form of collective mark before in 1946 certification marks received standalone protection, J. C. Fromer, ‘The Unregulated Certification Mark(et)’, 69 Stan. L. Rev. 121 (2017), p. 125, n 4. 9 D. Schennen in G. Eisenführ, D. Schennen, GMV4 (2014), Art 66, para. 11; Decision of the Second Board of Appeal of EUIPO (hereafter BoA), 10/5/2012, R 1007/2011-2 – FLAG WITH STARS, para. 13, advocate the registration of certification mark under the rules of the CTMR; see, also the Guidelines concerning proceedings before the Office, Part B, Version April 2008, p. 58; cf D. Slopek/ A. Leister, ‘Bio-Siegel & Co. – die markenrechtliche Einordnung von Güterzeichen’, GRUR 2013, p. 359. By contrast, BoA 20/02/2017, R 1357/2015-5 – EIN KREIS MIT ZWEI PFEILEN (fig.), para. 22; BoA 12/12/2014, R 1360/2014-5 – DOWNMARK, para. 36; Republic of Cyprus v OHIM, T292/14 and T-293/14 – Halloumi/ XAΛΛOYMI, EU:T:2015:752 and BoA 15/2/2011, R 675/2010-2 – BIODYNAMIC, para. 21, suggest otherwise. 10 This reflects in Article 74(3) and 83(3) EUTMR which state that special regime for collective and certification marks. 11 Arsenal Football Club plc v Matthew Reed, C-206/01, EU:C:2002:651, para. 48. 12 BoA, 23/11/2011, R 1497/2010-2 – Y (FIG. MARK) / Y (FIG. MARK), para. 34. 13 BoA, 20/02/2017, R 1357/2015-5 – EIN KREIS MIT ZWEI PFEILEN (fig.), para. 21. 14 Article 5 EUTMR. 15 Article 83(1) EUTMR. 16 Compare, e.g., Article 21 of the Swiss Federal Law on the protection of trade marks and indications of origin (Bundesgesetz über den Schutz von Marken und Herkunftsangaben vom 28.8.1992 idF vom 1.7.2011(hereafter Swiss Trade Mark Act)), which uses the term ‘marque de garantie’, ‘Garantiemarke’. 17 J. Belson, Certification and Collective Marks – Law and Practice (Edward Elgar, Cheltenham, 2017), p. 31, para. 3.08. 18 Article 83(2) EUTMR; in this regard compare Article 21(2) of the Swiss Trade Mark Act. 19 This expression is coined by the doyen of US trademark law, J. Thomas McCarthy, see: 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th edn), § 19:94. 20 Cf J. Belson, ‘Ecolabels: Ownership, Use, and the Public Interest’, JIPLP 7(2), 103 (2012). 21 Article 74b(3) of the Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 22 See para 7(1)(b) of Schedule 2 of the UK Trade Marks Act 1994. 23 The Commission Implementing Regulation (EU) 2017/1431 of 18 May 2017 laying down detailed rules for implementing provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark. 24 See Article 74b(2)(b) of the Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 25 Cf D. Slopek, BeckOK MarkenR, 9. Ed. 1 March 2017, VO (EG) 207/2009 Article 74a, para. 18. 26 Max Planck Study, above n 3, p. 212. 27 Article 83(2) EUTMR. By comparison, in some national guarantee mark systems only legal persons may apply for such marks, see, e.g., Art L715-2 (1) of the French Intellectual Property Code. 28 Article 5 EUTMR. 29 Compare EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 1 October 2017, p. 5. 30 Cf M. Thomann, ‘Zur Garantiemarke nach schweizerischem Recht’, SJW 92/1996, p. 327; S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 632. Similarly, A. Thünken, ‘Die Unionsgewährleistungsmarke: Sinnvolle Ergänzung eines Markenportfolios?’, GRUR-Prax 2016, p. 494. 31 Cf EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 01/10/2017, p. 6. 32 Cf UKIPO Guidance on collective and certification trade marks (2011), p. 14. 33 EU collective marks, see, Art 67(1) EUTMR; EU certification marks, see, Article 84(1) EUTMR. 34 Article 88(1) EUTMR. 35 Article 84(2) EUTMR. 36 Ibid. 37 See Article 84(3) EUTMR in combination with Article 17 EUTMIR. 38 Article 21(3) of the Swiss Trade Mark Act; Schedule 2, para 6(2) of the UK Trade Marks Act 1994. 39 Cf EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 01/10/2017, p. 8. 40 Cf UKIPO Guidance on collective and certification trade marks (2011), p. 11. 41 S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 635. 42 Article 86 and 88(3) EUTMR in combination with Article 45(2) EUTMR. 43 Article 17 EUTMIR. 44 Article 85(1) and (3) EUTMR. 45 Article 92 EUTMR. 46 Article 84 EUTMR and Article 17 EUTMIR. 47 WIPO SCT/9/4, p. 9. 48 McCarthy, McCarthy on Trademarks, § 19:92. 49 Ibid. 50 Regarding US trademark law, see the comprehensive article by J.C. Fromer, ‘The Unregulated Certification Mark(et)’. 51 S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 633. 52 UKIPO Guidance on collective and certification trade marks (2011), p. 15. 53 Cf S. Holzer, in G. Bühler, M. Noth, F. Thouvenin, Markenschutzgesetz (2009), p. 633; M. Thomann, ‘Zur Garantiemarke nach schweizerischem Recht’, SJW 92/1996, p. 327. 54 Article 87 EUTMR. 55 In accordance with Article 10(3) of the Delegated Regulation (EU) 2017/1430 supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96, the proof of use shall consist of indications concerning the place, time, extent and nature of said use. 56 Article 91 EUTMR. 57 Cf Ansul BV v Ajax Brandbeveiliging BV, C-40/01, EU:C:2003:145 (also known as Minimax case), para. 43. 58 W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434, para. 50. 59 Similarly, A. Leister/L. Romeike GRUR Int 2016, 122 (126). 60 EUIPO Guidelines for Examination in the Office, Part B, Examination, Version 1.0, 1 October 2017, p. 9. 61 European Commission, Proposal for a Regulation of the European Parliament and of the Council Amending Council Regulation (EC) No. 207/2009 on the Community Trade Mark (March 2013) COM(2013) 161 final, 2013/0088 (COD). 62 Regarding the USA, see McCarthy, McCarthy on Trademarks, § 19:95; regarding Switzerland see, however, the decision Felsenkeller, BGE 131 III 495, where the Swiss Supreme Court held that certification marks as opposed to individual marks would have to satisfy reduced requirements. According to Jeffrey Belson, also in the UK, the standard of distinctiveness has been judicially regarded as lower, see J Belson, Certification and Collective Marks – Law and Practice (Edward Elgar, Cheltenham, 2017) p. 60, para. 3.77. 63 Article 68(2) EUTMR. 64 Cf UKIPO Guidance on collective and certification trade marks (2011), p.10. 65 See, with regard to EU collective marks, BoA, 15/02/2011, R 675/2010-2 – BIODYNAMIC, para. 19. 66 W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434, paras 54–56. 67 Compare US law, where the same likelihood of confusion analysis applies to certification marks, McCarthy, McCarthy on Trademarks, § 19:92.50. 68 Opinion of Advocate General Wathelet in W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2016:916, para. 57. 69 BoA, 19/09/2013 – R 1274/2013-1 – F.F.R. (FIG. MARK) / CONSORZIO VINO CHIANTI CLASSICO (FIG. MARK) et al., para. 50. 70 Compare McCarthy, McCarthy on Trademarks, § 19:92.50. 71 Article 194 EUTMR. 72 Pursuant to Section 24g of the German Act on the Protection of trade signs as promulgated on 7 December 1923 (Gesetz zum Schutze der Warenbezeichnungen in der Fassung der Bekanntmachung vom 7. Dezember 1923, RGBl 1923 II S. 437) and Section 7 of the Austrian Act on the Protection of Collective marks as promulgated on 4 April 1930 (Bundesgesetz vom 4. April 1930 über den Schutz von Verbandsmarken, BGBl 109/1930) within one year of entering into force of the law protecting collective marks individual marks belonging to associations upon request could be converted into collective marks while keeping the priority of the underlying individual mark. 73 Cf W. F. Gözze Frottierweberei GmbH, Wolfgang Gözze v Verein Bremer Baumwollbörse, C-689/15, EU:C:2017:434. 74 Articles 83(1) and 84(1) EUTMR. 75 EUTMR, Annex I, A. 76 Regarding EU collective marks see EUIPO Guidelines, Part B, Formalities, 1 August 2016, p. 51. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)

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Journal of Intellectual Property Law & PracticeOxford University Press

Published: Feb 1, 2018

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