35.3. Sections of the Act NOT applying to certification trade marks

3.1 The authorised user provisions in sections 8 and 26 do not apply to applications for certification trade marks. These sections are replaced by section 172 which defines the rights of persons allowed to use the certification trade mark (approved users).

3.2 Section 27(1)(b) which relates to intended use of a trade mark does not apply to certification trade marks because these do not have to be used by the registered owner. However, under the provisions of section 169, the trade mark may be used by the owner.

3.3 Sections 33 and 34 which relate to the acceptance or rejection of a trade mark application do not apply to certification trade mark applications.  The provisions for acceptance or rejection of an application for a certification trade mark are set out in sections 174 and 176 of the Act.

3.4 Section 41 which deals with the capacity of a trade mark to distinguish the applicant’s goods or services, does not apply to certification trade marks. This section is replaced by section 177 of the Act which  sets out the criteria for deciding whether or not a certification trade mark is capable of distinguishing the certified goods and or services.  

3.5 In the case of registered certification trade marks, section 181 deals with the rectification of the Register.

3.6 Section 121 deals with the infringement of a trade mark by the breach of certain restrictions.  This section does not apply to certification trade marks.

3.7 Section 127 states that the plaintiff in an action for infringement may not be entitled to damages if the trade mark has not been used within a particular period.  This does not apply to certification trade marks because the registered owner is not obliged to use the trade mark.

3.8 Part 9 of the Act relates to the removal of a trade mark from the Register for non-use.  It is not applicable to certification trade marks because they do not have to be used by the registered owner.  It is also not in the public interest to insist that a certification trade mark be used where the certification body may have decided that none of the goods or services for which certification was sought met the certification standard.

3.9 Part 17 of the Act, the subject of which is defensive trade marks, does not apply to certification trade marks.