35.5. Rights given by, and rules governing the use of, certification trade marks

Sections 171 to 173 detail the rights of persons registering and using certification trade marks and the rules governing the use of those trade marks. Before the rules can progress to the ACCC for assessment, IP Australia must be satisfied that the rules have met the requirements under S173.

5.1 A registered owner of a certification trade mark has the exclusive right to use, and to allow other persons to use, the certification trade mark. Use of a certification trade mark by the owner must be in accordance with the rules governing its use (section 171).

5.2 An approved user of a certification trade mark is a person who the registered owner has allowed to use the trade mark.  The certification trade mark must be used in accordance with the rules governing its use (section 172).

5.3 An applicant for the registration of a certification trade mark must, in accordance with the regulations, file a copy of the rules governing the use of the trade mark (section 173(1)).  In accordance with reg 16.1, the rules must be filed at the time of filing the application or as soon as practicable after filing.  The applicant must also file any other document as prescribed under section 27(2) however there are no documents prescribed under that subsection at this time.

5.4 Rules governing the use of a certification trade mark must specify (section 173(2)):

• the certification requirements that goods and or services must meet for the certification trade mark to be applied to them; and
• the process for determining whether goods and or services meet the certification requirements; and
• the attributes that a person must have to become an approved certifier, that is, a person approved to assess whether goods and or services meet the certification requirements; and
• the requirements that the owner of the certification trade mark, or an approved user, must meet to use the certification trade mark in relation to goods and or services; and
• other requirements about the use of the certification trade mark by the owner or an approved user; and
• the procedure for resolving a dispute about whether goods and or services meet the certification requirements; and
• the procedure for resolving a dispute about any other issue relating to the certification trade mark.

The rules must include any other matter the Commission requires to be included and may also include any other matter the Commission permits to be included.

Further information surrounding the requirements of Certification rules may be found on the ACCC website:

https://www.accc.gov.au/business/exemptions/certification-trade-marks

This information also contains a template for Certification rules requirements under S173.

5.5 Rules relating to certification trade marks filed on or after March 2007 must be published according to reg 16.12 and will appear on the IP Australia website as soon as practicable after they have been filed with the office. The rules will also be published once they have been certified by the ACCC.

5.6 Rules governing the use of registered certification trade marks filed before March 2007 must be available for inspection.  

5.7 If the application has been made in accordance with the Act and there are no grounds for rejecting it (or any grounds for rejecting the application have been addressed) the Registrar must send  a copy of the following documents to the Commission (reg 16.2):

• the trade mark application
• the rules governing use of the certification trade mark
• details of any amendments made to the application
• any other documents that are relevant to the application (e.g. assignment documents and exam responses).

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5.8 Acceptance of the trade mark application will be deferred whilst the Commission carries out their assessment of the rules (reg 4.13(3)).

• Part 17 Deferment of Acceptance