What is a certification trade mark?

8th Jul 2019

What do film classification logos, the ‘Red Tractor’ logo, ‘Parma Ham’ logo and ‘ATOL Protected’ logo all have in common? They are a different type of trade mark that tells you a product meets certain standards.

Red Tractor

A ‘certification trade mark’ does a different job to a regular trade mark. Unlike a regular trade mark, a certification trade mark is not there to indicate the commercial origin of a branded product, namely the “who”, but it indicates the “what” of characteristics of the branded products.  

In other words, with a certification trade mark, the goods or services are certified by the owner of the mark regarding place of origin, material, how they are manufactured, their performance, quality, accuracy or other characteristics.

What is an ordinary trade mark?

Logos

A trade mark is there to guarantee the trade source of the goods or services you are buying or receiving.  If you are happy with the product, you might become a repeat customer.  If you are not happy with the product, you know who to complain to.  That’s an ordinary trade mark.

An ordinary trade mark is a type of branding that indicates which trader a product originates from. An ordinary trade mark can be a name, a graphic logo, product or packaging shape, colours and even sounds.  

A really effective trade mark gets that message across at a glance. 

What is a certification mark?

A key characteristic of a certification trade mark is that the owner is there to certify the characteristics of the goods or services, not to sell the goods or services themselves. 

In fact, certification trade mark owners can lose the mark if they use it themselves.

Use it and lose it

IPO

Historically, the familiar Kite Mark logo was registered by The British Standards Institution (BSI) as a certification trade mark, certifying product quality standards (the “what” characteristic of the mark).  Businesses meeting the quality standards could use the mark.  

When BSI later gave up their Kite Mark logo certification trade mark and registered the Kite Mark logo as an ordinary trade mark, the UK Intellectual Property Office (UK IPO) held that most of the ordinary trade mark registration was invalid and was to be removed from the register as it was misleading to the public if the trade mark characteristics no longer guaranteed the “what” of quality standards as they had in the past and only the “who” that goods or services bearing the trade mark originated from BSI without certifying quality.   

Requirements

On meeting the standards for trade mark registration, the owner of a certification trade mark must additionally submit a list of regulations to the UK IPO for approval. These regulations set out the requirements to be met in order for businesses to be able to use the certification trade mark.

Can I own and use a certification trade mark? 

Maybe, yes. Maybe, no.

Who can own a certification trade mark? There are no limitations (except the proprietor must have legal personality) but they are often registered by trade associations or bodies with an interest in upholding standards in their field.  

The owner of the certification trade mark must be competent to certify the goods and services and monitor compliance with the regulations.

Who can use a certification trade mark?

Often certification trade marks are available to be used by any person or entity that meets the criteria set out in the regulations.  There may be exceptions, such as a certification trade mark for a legal service which may certify a characteristic only available if you hold certain legal qualifications. A fee may be charged by the certification trade mark holder for use of the certification trade mark. 

Where will you see certification trade marks? 

Certification trade marks

There are many everyday examples: in the supermarket, different types of UK products may show the Red Tractor logo.  

The ‘Red Tractor' logo does not show that all of the products originate from one owner (“who”), instead the purpose of the mark is for the certification trade mark owner, Assured Food Standards, to certify that the food bearing the logo is assured under their scheme.  

In this case, the “what” characteristic concerns food traceability and production standards.  

As another example in the supermarket, you may have spotted the Parma Ham logo, certifying that the ham comes from a certain area of Italy and has been prepared in a particular way.

Going on holiday? You may have seen the 'ATOL Protected' logo when booking your trip, certifying that there is a financial protection scheme with the holiday you are buying, certified by the Civil Aviation Authority.   

Film certificates

A trip to the movies? You may be familiar with the certification trade marks for U, PG or even 18.

These are owned by the British Board of Film Classification and certify the type of content of the movie.  

These certification trade marks don’t indicate who made the movies but what is the style of content of the movie. 

Good news for the consumer, good news for traders

So, certification trade marks are there as a tool to help trade bodies, organisations and traders champion standards in their field.  

They help consumers by being another marker to guide consumer choice.  

Certification trade marks can be used alongside other ways of protecting product qualities such as geographical indications.  

Next steps? Certification trade marks both in the UK and the EU might be used more as a tool to aid campaigning for topical social concerns such as certifying safe internet sites, ethically manufactured goods, plastic free packaging and carbon neutral products.

Lucy Pope is a Chartered Trade Mark Attorney at HGF Limited