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Singapore – IPOS Releases New Guidelines On Registration Of Certification Marks.

3 July, 2014

 

Legal News & Analysis – Asia Pacific – Singapore – Intellectual Property

A certification mark serves as a badge of quality, and unlike ordinary trade marks, is not used by the proprietor as a badge of origin, but by entities authorised by the proprietor as a guarantee to consumers that their goods/services possess a particular characteristic. Further, certification marks are registered in respect of goods/services of persons authorised to use the certification mark, instead of the Applicant’s goods/services.

 

Competence Of The Applicant

 

The Applicant must satisfy the Registrar that it is competent to certify and operate the certification scheme. It usually suffices that the Applicant is an established trade body or government department.

Section 7 – Absolute Grounds Of Refusal

 

Like ordinary trade marks, certification marks are also examined for distinctiveness. Given its different functions from ordinary trade marks, a certification mark will be considered distinctive even if it is incapable of identifying a single trade source, so long as it can identify goods which are certified from those which are not. The Chapter includes a helpful example of a certification mark “100% ORGANIC” which would be objected to on the following grounds:

 

  • Section 7(1)(b) of the Trade Marks Act (TMA) – incapable of distinguishing goods certified by the application organisation from those that are not certified 
  • Section 7(1)(c) – it is a descriptive indication which should be free for use by all traders 
  • Section 7(1)(d)- it is already used customarily in trade and therefore no monopoly over such signs should be given to any one entity.

 

On the other hand, a mark consisting of the words “100% ORGANIC” together with a design would be acceptable as a certification mark. Like trade marks, objections of non-distinctiveness may be overcome by submitting evidence of use which establishes that consumers have been educated as to the function of the mark and the certifying organisation.


Geographical Names 


The Registrar has discretion in deciding whether or not to accept a geographical name as a certification mark, and will consider market practices when assessing whether a geographical name is capable of distinguishing goods/services which are certified from those which are not. 


Geographical Indications (GIs) 


Although GIs are not registrable as ordinary trade marks, they may be registered as certification marks as GIs are capable of indicating that the goods are certified as being the produce of the particular location. 


Section 8 – Relative Grounds Of Refusal 


Like ordinary trade marks, certification marks may be refused registration if there are prior marks which conflict with the application. We set out some relative grounds of refusal which are peculiar to certification marks:

 

  • The presence of an identical collective or ordinary trade mark for identical or similar goods/services will be taken as prima facie evidence that the mark cannot serve to distinguish goods/services which are certified from those which are not and/or that its registration will lead to confusion or deception of consumers as to the nature of the mark. These objections cannot be overcome even with consent or where both marks are in the same name.

 

  • A mark will not be registered as a certification mark if the Applicant trades in the goods/services to be certified. This rule exists to ensure that the Applicant, who regulates the standards which the goods/services bearing the mark must meet, remains independent in order to ensure the effective and consistent regulation of standards.

 

There are also requirements for Regulations which are required in support of applications for Certification Marks.

 

ATMD Bird & Bird

 

For further information, please contact:

 

Lim Siew Lin, ATMD Bird & Bird

[email protected]

 

ATMD Bird & Bird Intellectual Property Practice Profile in Singapore

 

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