Certification of trademark – Trademark

Registration in Coimbatore

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Certification of trademark means a mark adapted in relation to any goods to
distinguish, in the course of trade, goods certified by any person in respect of
origin, material, mode of manufacture, quality, accuracy or other characteristic,
from goods not so certified and registrable as such under the provisions in
respect of these goods in the name, as proprietor of certification trademark, of
that person.

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 Certification of trademark:

• The certification trademark owner cannot

carry on a trade in goods of the kind which is
certified,

• Section 69 makes certain provisions in the act

inapplicable to a certification trademark. It
follows that the other provisions apply.

• Certification is different from selection. In the former case the certificate serves as a
warranty that the goods bear the character and quality which is certified to by an
independent expert or authority.

• But selection is different. A trader may have a reputation for skill in selecting goods and
he may use a mark which will indicate to buyers that the goods have been selected by
him. This is different.
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 Registration of certification trademarks:

A mark would not be registrable as a certification trademark in the name of the person
who carries on a trade in goods of the kind which is certified or a trade of the provisions of
service of the kind certified.

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Applications for registration of certification trademarks:

• An application for in the registration of a mark as a certification trademark shall be

made to the registrar in the prescribed manner by the person proposed to be registered
as the proprietor thereof, and accompanied by a draft of the regulations to be
deposited under section 74.

• As per the section 70, the provisions of section 18, 19 and 22 can apply in relation to an
application under this section as they apply in relation to an application under section
18 which is subject to the modification that references therein in order to accept the
application shall be construed as reference to the authorization to proceed with the
particular application.

• While dealing under the said provision with an application, the tribunal may have
regard to the like considerations, as far as relevant to application which is under the
section includes the desirability of securing that a certification trademark will
comprise some indication that it is a certification trademark.

• This section corresponds to section 62 of the trade and merchandise marks act, 1958.

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 Prescribed manner:

• Rule 134 of the rules prescribed the procedure for making the application. Along with
his application the applicant shall send to the registrar a case setting out the ground on
which he relies in support of his application. Such case shall be furnished in triplicate
(rule 136).

• Rule 138 provides for opposition to registration of certified trademark.

• Rule 139 relates to rectification of certification trademark entries.

• Rule 140 relates to alterations of regulation relating to certification trademarks.

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 Consideration of application for registration by the registrar:

• The registrar shall consider the application made under section 71 with regard to the following
matters, namely:-

• Whether the applicant is competent to certify the goods in respect of which the mark is to be
registered;

• Whether the draft of the regulations to be filed under section 74 is satisfactory;

• Whether in all the circumstances the registration applied for would be to the public advantage,
and may either

• Refuse the application; or

• Application has to be approved and the said draft of the regulations either without
medication and unconditionally or subject to any limitations or conditions or to any
amendments or modifications of the application or of any regulations which he thinks
requisite having regard to any of the said matters.
• Except in case of approval and acceptance without modification and unconditionally, the
registrar could not decide any matter under sub-section (1) without giving the applicant an
opportunity of being heard.
• This section corresponds to section 63 of the trade and merchandise marks act, 1958.
 Opposition to registration of certification trademarks:

• When an application has been accepted, the registrar shall, as soon as may be thereafter,
cause the application as accepted to be advertised in the prescribed manner, and the
provisions of section 21 shall apply in relation to the registration of the mark as they apply
in relation to an application under section 18.

• This section corresponds to section 64 of the trade and merchandise marks act, 1958.
Rule 138 prescribes the procedure in respect of an opposition of certification trademarks.

• It provides that an acceptance of the application the registrar shall cause the application
to be advertised in the journal and the provisions of rules 47 to 57 shall apply mutatis
mutandis as they apply in relation to an application for registration of trademark.

• In any case of doubt with regard to the application of the provisions of relates to the
opposition to the registration of certification trademark any party may apply to the
registrar for directions.

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 Filing of regulations governs the use of a certification trademark:

• In respect of every mark which are registered as a certification mark shall be filed at
the trademark registry for governing the use and it may include the provisions as to
the cases in which the proprietor is to certify the goods or services and to authorize
the use of a certification trademark and it may contain other provisions which the
registrar may be general or special order.

• That is required to be inserted therein including provisions conferring a right which

appeal to the registrar against any refusal of the proprietor to certify the goods or to
authorize the use of a certification trademark in accordance with the regulations and
the regulation which are filed need to be open for inspection in a manner provided in
the section 48.

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• The regulations which are filed on the application of the registered proprietor have
to be altered by the registrar.

• The registrar may advertise such application in case it appears to him expedient so
to do, and after he does so, if within the time period of the advertisement, any
person can give the notice of opposition to the application, the registrar would not
decide the matter without giving the parties an opportunity of being heard.

• This section refers to section 65 of the trade and merchandise act, 1958.

• An application under sub-section (2) shall be made on form TM-42 and where the
registrar decides to advertise such application, under sub-section (3) the
advertisement shall be made in the journal (rule 132).

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 Infringement of certification trademarks:

As per section 78 the rights which are conferred is infringed by any person who is not
being the registered proprietor of the certification trademark or a person who is authorized
by him in that behalf under a regulations filed under the section 74 using in accordance
therewith and uses in the course of trade, a mark which is deceptively similar or identical
with to the certification trademark which in relation to any goods or services respect with
registered and in such manner as to render the use of the mark that is likely to be taken as
being a use of a trademark.

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