EU certification mark: It's coming your way on October 1st

Former Guest Kat Valentina Torelli has carefully followed developments in the lead-up to the introduction on October 1st of a certification mark at the EU level. She shares her thoughts below on this and related developments.

IP professionals and enthusiasts are likely well aware that further changes to Regulation No. 207/2009 on the EU trade mark (the 'EUTMR'), will take effect as of 1 October 2017. Included among these changes is the introduction of a certification mark at the EU level, pursuant to the provisions of Articles 74a to 74k of the EUTMR the amending regulation Regulation (EU) No 2015/2424 (the 'Amending Regulation').

The Amending Regulation already entered into force on 23 March 2016, but required secondary legislation to be implemented before changes, such as those concerning the introduction of certification marks at the EU level, could apply (see Implementing Regulation laying down detailed rules for implementing certain provisions of Council Regulation (EC) No 207/2009 on the European Union trade mark and the Delegated Regulation supplementing Council Regulation (EC) No 207/2009 on the European Union trade mark and repealing Commission Regulations (EC) No 2868/95 and (EC) No 216/96).

Against this background, as of 1 October 2017, any natural or legal person, including institutions, authorities and bodies governed by public law, may apply for a certification mark, which is defined by Article 83 of the Regulation No. 1001/2017 on the European Union trade mark (codification) as:

“an EU trade mark which is described as such when the mark is applied for and is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.

Through certification marks the trade mark proprietor guarantees certain specific characteristics of the goods and services applied for against the standards set out in the regulations of use and controlled under his responsibility. The certification mark holder is indeed the entity charged with the burden of certifying the goods and services protected by the certification mark; it cannot be a person carrying out a business involving the supply of the certified goods or services. Therefore, the holder of a certification mark cannot use the certification mark in respect of the relevant goods or services that are being certified.

At the time of the application, the applicant for a certification mark: (a) must state that he is applying for an EU certification mark and (b) inter alia must supply the regulations governing use of an EU collective mark no later than two months from the date of filing. In particular, the regulation governing use of the certification mark shall specify the following:

• The list of goods and services of an EU certification mark;

• The persons authorised to use the mark;

• The characteristics to be certified by the mark;

• How the certifying body is to test those characteristics and to supervise the use of the mark;

• The conditions of use of the mark, including sanctions.

Notably, a certification mark cannot protect goods or services certified in respect of a geographical origin, since the scope of certification may cover only the material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics thereof.

Against this background, this blogger has been thinking about the European Union's EU Trust Mark for Qualified Trust Services (EUTM No. 013713615). The mark was filed for registration in order to comply with Article 23 to the eIDAS Regulation (i.e. Regulation No 910/2014 on electronic identification and trust services for electronic transactions in the internal market and repealing Directive 1999/93/EC) and the Commission's Implementing Regulation No. 806/2015 in order to allow qualified trust service providers to voluntarily identify and distinguish their qualified trust services (e.g., the creation, verification, and validation of electronic signatures, electronic seals or electronic time stamps, electronic registered delivery services and certificates related to those services, website authentication, the preservation of electronic signatures, and seals or certificates related to those services). In this regard, the denomination “Trust Mark” is simply the specification of the trade mark to be used in the context of the provision of the aforementioned qualified trust services.

Under the eIDAS Regulation, a distinction between qualified trust services (and related providers) and non-qualified services (and related providers) has been introduced to ensure high-level security for users of a qualified trust service in accordance with the requirements established in the eIDAS Regulation. To this end, qualified trust service providers are subject to a conformity assessment and supervision of Member States' supervisory bodies for compliance with the eIDAS Regulation requirements.

The issue is raised because the Trust Mark for Qualified Trust Services (whose logo was selected in furtherance of the launch of the “e-Mark U Trust” competition to create its design), was applied for as a collective mark in 2015, when registration of a EU certification mark was not yet available. Since, as noted, the Trust Mark for Qualified Trust Services serves the purpose of distinguishing a qualified trust service from a non-qualified one, such mark might be viewed as “certifying” such qualified trust services.

However, the European Union chose to apply for registration of a collective mark when filing for the EU Trust Mark for Qualified Trust Services. It is possible to understand this action as having been dictated by differences between the function and use of a certification mark in comparison with those of collective marks.

By way of assistance, set out is a chart to explain the differences between EU certification and collective marks:

	EU Certification Marks	EU Collective Marks
Function	Distinguishes goods and services which are certified by proprietor from goods and services that are not so certified.	Distinguishes the goods or services of the members of the association which is the proprietor of the mark from those of other undertakings.
Use	Used by companies and individuals certified by the entity which holds the mark.	Used by members of the association which holds the mark.
Entitlement	Natural persons. Legal persons.	Certain associations. Legal persons of public law (natural persons excluded).

 

With respect to the eIDAS Regulation, this EU legislative act was adopted in 2014 to harmonize throughout the Internal Market the rules regulating the use of electronic identification means and the provision of trust services (e.g. electronic signatures, electronic seals, time stamping, registered electronic delivery and website authentication).

Under the eIDAS Regulation, Member States designate the supervisory body established in their territory, or in the territory of another Member State subject to an agreement with the latter. Thus, in order to supervise that the qualified trust service providers established in the designating Member State and their qualified trust services meet the requirements laid down in the Regulation, there might be 28 supervisory bodies providing guarantees for those providers and services. These bodies might also be responsible, such as is the case is for the Italian Agenzia per l’Italia Digitale (AgID), for establishing, maintaining and publishing national trusted lists that include information related to qualified trust service providers and related services.

Therefore, such allocation of responsibilities under the eIDAS Regulation might clash with the provision under the EUTM Regulation, whereby the holder of an EU certification mark is the one guaranteeing the certification of the goods or services protected by the mark. Given that in each EU Member State there may be a national body charged with the certification of the qualified trust services there may be 28 entities that might be the legitimate holders of a certification mark in each EU jurisdiction. Accordingly, an application for an EU (certification) Trust Mark for Qualified Trust Services might be regarded as an unsuitable option precisely because only one entity can be the holder of a certification mark, having certifying powers in respect of the goods and services protected by such mark.

IPKat readers—do you agree?