Part 17CERTIFICATION TRADE MARKS

PART 17—CERTIFICATION TRADE MARKS 176. This Part: (a) defines a certification trade mark; and (b) provides to what extent, and subject to what modifications or additions, the provisions of this Act relating to trade marks apply to certification trade marks; and (c) outlines the role of the Commission in the regulation of certification trade marks. What Is a certification trade mark? 177. A certification trade mark is a sign used, or intended to be used, to distinguish goods or services: (a) dealt with or provided in the course of trade; and (b) certified by a person (“owner of the certification trade mark”), or by another person approved by that person, in relation to quality, accuracy or some other characteristic including (in the case of goods) origin, material or mode of manufacture; from other goods and services dealt with or provided in the course of trade but not so. certified. Note: The goods certified may be those of any person including the owner of the certification trade mark or any person approved by the owner for the purpose of certifying goods or services. 178. Subject to this Part, the provisions of this Act relating to trade marks (other than sections 7, 32, 33, 40 and 130, Part 9—Removal of trade mark from Register for non-use and Part 11—Registered Users) apply to certification trade marks and so apply as if a reference to a trade mark included a reference to a certification trade mark. Rights given by registration of a certification trade mark 179. Section 1.9 applies in relation to a certification trade mark as if subsection (1) were omitted and the following subsection were substituted: “(1) If a certification trade mark is registered, the registered owner has, subject to this Part, the exclusive rights to use, and to allow other persons to use, the certification trade mark, in relation to the goods and services in respect of which the certification trade mark is registered.”. Rights of persons allowed to use certification trade mark 180. When the registered owner of a certification trade mark allows another person (“approved user”) to use the certification trade mark in relation to goods or services in respect of which it Is registered, the approved user has a right to use the certification trade mark in relation to those goods or services in accordance with the rules governing the use of the certification trade mark. 181. An application for the registration of a certification trade mark is not to contain a statement referred to in subsection 25(4). Rules governing the use of certification trade marks 182.(1) In addition to any document prescribed under subsection 25(2), a copy of the rules governing the use of the certification trade mark whose registration Is sought must also be filed in accordance with the regulations. (2) The rules are to include provisions regarding: (a) the persons (“approved certifiers”) who may be approved for the purpose of certifying goods and services; and (b) the cases in which goods or services are to be certified; and (c) the conditions under which an approved user is to be allowed to use the certification trade mark in relation to goods or services; and (d) the use of the certification trade mark by the owner (if he or she intends to use it) and any approved user; and (e) the settlement of any dispute arising from a refusal: (i) to certify goods or services; or (ii) to allow the use of the certification trade mark; and any other provision that me Commission requires or permits to be inserted. Note: For “approved user” see section ISO. Ground for rejecting an application—certification trade mark not distinguishing certified goods or services 183.(1) In addition to any other ground on which it may be rejected, an application for the registration of a certification trade mark must be rejected if the trade mark is not capable of distinguishing goods or services certified by the applicant or an approved certifier from goods or services not so certified. Note 1: For “approved certifier” see paragraph 182(2)(a). Note 2: Division 2 of Part 4 sets out the grounds for rejecting an application, but section 40 does not apply to certification trade marks (see section 178). (2) In deciding whether or not the certification trade mark is capable of so distinguishing goods or services certified by the applicant or an approved certifier, the Registrar must take into account: (a) the extent to which the certification trade mark is inherently adapted so to distinguish those goods or services; or (b) the extent to which, because of its use or of any other circumstances, the certification trade mark has become adapted so to distinguish. Registrar to reject application or send it to Commission 184.(1) If the Registrar is satisfied that: (a) the application has been made in accordance with this Act; and (b) there are no grounds for rejecting it; the Registrar must, in accordance with the regulations, send to the Commission a copy of the application and of any prescribed document. (2) If the Registrar is not satisfied as set out in subsection (1), he or she must reject the application. Certificate by Commission 185.(1) The Commission must consider the application and any documents received under section 184 in accordance with the regulations. (2) If the Commission is satisfied that: (a) the applicant and the approved certifiers are competent to certify the goods and services in respect of which the certification trade mark is to be registered; and (b) the rules referred to in section 182 are satisfactory having regard to the criteria prescribed for the purposes of this paragraph; and (c) the registration would not be to the detriment of the public; the Commission must give a certificate to that effect and send a copy to the Registrar. The Commission must also send a certified copy of the rules to the Registrar. (3) The Commission may require the applicant to make amendments or modifications to the rules as the Commission considers necessary. (4) If the Commission is not satisfied as set out in subsection (2): (a) the Commission must notify the Registrar in writing; and (b) the Registrar must advertise the matter in the Official Journal in accordance with the regulations. (5) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Commission: (a) refusing to give a certificate; or (b) requiring amendments or modifications to the rules governing the use of the certification trade mark. Acceptance of application 186.(1) If the Commission has given a certificate under subsection 185(2), the Registrar must accept the application. Otherwise, the Registrar must reject the application. (2) The Registrar may accept the application subject to conditions or limitations. (3) The Registrar must: (a) give to the applicant notice in writing of his or her decision; and (b) advertise the decision in the Official Journal. Variation of rules 187.(1) Subject to subsection (2), the rules governing the use of a registered certification trade mark may be varied in accordance with the regulations. (2) The rules may not be varied without the approval of the Commission. (3) In deciding whether or not to approve a variation, the Commission is to have regard to the criteria prescribed for the purposes of paragraph 185(2)(b). (4) The Commission must notify the Registrar in writing of any variation to the rules and the Registrar must cause a notice of the variation to be advertised in the Official Journal in accordance with the regulations. (5) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Commission to approve or not to approve a variation of the rules. Rules to be available for inspection 188. Rules governing the use of a registered certification trade mark must be available for inspection at the same time and in the same manner as the Register. Infringement 189. The relief that a court may grant in an action for an infringement of a registered certification trade mark does not include damages or an account of profits. Assignment of registered certification trade mark 190.(1) A registered certification trade mark may be assigned only with the consent of the Commission. (2) In deciding whether or not to give its consent, the Commission must have regard to the matters provided for under the regulations. (3) An application may be made to the Administrative Appeals Tribunal for the review of a decision of the Commission refusing to give its consent. Rectification of the Register etc. 191.(1) In addition to its powers under Division 2 of Part 8 in relation to certification trade marks, a prescribed court may, on the application of a person aggrieved, order that the Register be rectified by cancelling the registration of a certification trade mark, or removing or amending an entry in the Register relating to the certification trade mark, on the ground that: (a) the registered owner or an approved certifier is no longer competent to certify any of the goods or services in respect of which the mark is registered; or (b) it would be to the detriment of the public if the certification trade mark were to remain registered; or (c) the registered owner or an approved user has failed to comply with a provision of the rules governing the use of the certification trade mark. Note 1: For “approved certifier” see section 182. Note 2: For “approved user” see section 180. (2) A prescribed court may, on the application of a person aggrieved, make such order as it thinks fit for varying the rules governing the use of a certification trade mark. (3) Notice of an application to the prescribed court must be given to the Registrar. (4) Except for cases in which the court directs the Registrar to appear, the Registrar may appear and be heard at his or her discretion. (5) A copy of any order made by the court under this section must be given to the Registrar and the Registrar must comply with the order.