Trade marks legislation allows for certification marks in relation to goods and services. These may identify the material used, place of origin, mode of manufacture, quality, accuracy or other relevant characteristics.
The general requirements for a trademark apply. It need not, however, have the characteristics of being capable of distinguishing between goods and services which are certified and those that are not. The mark must be represented graphically.
A certification mark must not be held by an entity engaged in the production of the goods and services to which the mark relates.
It must be held collectively by another entity. Certification marks are generally registered to a trade association and other bodies, who license it in turn to their members, subject to compliance with conditions. Individuals may own certification marks, but this is less common.
Common examples of certification marks are those in relation to the geographic origin of agricultural products. Multiple traders in the area may be permitted by the relevant association etc., to use the mark. The producers collectively defend the integrity of the certification of origin of the goods or services.
The certification mark may not be registered if it may mislead the public as to the characteristics or significance of the mark. If it may be mistaken (e.g. as pointing to something else), it will not be registrable.
The procedure for registration of a mark is broadly in line with that in respect of a trademark. The application is made to the Controller of Intellectual Property.
The application must set out who is to be authorised to use the mark, the relevant characteristic certified by the certification body, fees payable in respect of the use of the mark and a dispute resolution procedure.
The authority/applicant must demonstrate that it has the ability to undertake the certification. The application and regulations must be open to inspection and must be advertised. After advertising, a period of two months applies in which observations or opposition notices may be filed.
The grounds for refusal provisions are broadly similar to those for a certification mark. Regulations must be filed that deal with issues equivalent to those in respective certification marks. It must define, for example, who may use marks, provisions for membership, dispute resolution et cetera.
Use of Mark
The right to use the mark must be granted on an objective basis. If producers and traders comply with the relevant characteristics, they cannot be refused the mark on arbitrary grounds. The procedure must allow for an independent review if registration is refused.
The regulations governing the use of the mark must be filed with the application for registration. It must provide for the above requirements. The regulations themselves must be approved. The regulations are approved by the Patents Office as opposed to the Minister.
The general procedures and remedies for infringement of a trademark apply to a certification mark. There is a defence for persons who use a geographical origin mark in accordance with honest practices in industrial and commercial matters.
Unless otherwise specified in the agreement, a licensed user of the mark may request the owner (the relevant association) to take infringement proceedings. If it refuses, then after  months of use, it may take proceedings itself.
The owner of the mark must be a party to the proceedings unless the High Court otherwise permit. It may be added in circumstances in which it does not participate, in which event it will not be liable for costs.
If the certification body itself enforces, the court takes account of loss to authorised users. The collective mark owner itself will not necessarily have any direct loss. The certification mark may not be assigned without the consent of the Department.
The procedures for revocation of a trademark apply in broad terms to the revocation of the certificate. The grounds for revocation, in addition to the general grounds in respect of trademarks as varied, include failure to comply with the regulation, misleading manner of use, and certified organisation is no longer competent.
The application for revocation is made to the Department.
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