35.4. The registrability of certification trade marks

The criteria for determining the registrability of a certification trade mark are similar to those for other trade marks.  The main difference is that when dealing with certification trade marks section 177 replaces section 41.

Certification trade marks have a very different function to standard trade marks. Their function is to show that the goods or services they are used in connection with are certified by a particular person in relation to quality, accuracy or some other characteristic, including (in the case of goods) origin, material or mode of manufacture. They do not have the function of distinguishing trade origin like standard trade marks do, and will appear on the goods or in relation to the service to indicate to consumers they have met the qualities or attributes required

4.1 Certification trade mark not distinguishing certified goods or services

Section 177(2) sets out the criteria to be applied in deciding whether or not a certification trade mark is capable of distinguishing the goods or services certified by the applicant, or an approved certifier, from goods or services which are not so certified.  

In deciding this question, the following must be taken into account:

• the extent to which the certification trade mark is inherently adapted to distinguish the certified goods and or services in Australia and other relevant markets (section 177(2)(a)); or

• the extent to which the certification trade mark has become adapted to distinguish the certified goods and or services because of use or any other circumstances (section 177(2)(b)).

If the certification trade mark is not prima facie capable of distinguishing the certified goods and or services, substantial evidence of use may be required to satisfy the Registrar that the certification trade mark has become adapted to distinguish. Importantly, intended use is not a relevant consideration for the purposes of section 177.

Other circumstances might include, for example, the proposals for implementation of the certification scheme and the extent to which it has been advertised and made known in the relevant market.  

If a certification trade mark is accepted on the basis of evidence of use or other circumstances, the following endorsement is entered on the Register:

Provisions of paragraph 177(2)(b) applied.