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DRAFT EXAMINATION GUIDE-LINES ON CERTIFICATION MARKS, COLLECTIVE TRADE-MARKS AND COLLECTIVE MEM-BERSHIP MARKS
The Intellectual Property Office (IPO) recently announced a draft of new Guidelines on the Examination of Certification Marks, Collective Trademarks and Collective Membership Marks. The main content is as follows:
．Certification marks
Certification marks are different in nature from other categories of trademark. In addi-tion to the usual application procedures such as paying the prescribed fees and submitting the prints of the mark, not only must the ap-plication document disclose the name of the applicant, the goods or services to be certified, and the content of the certification, in order to clearly identify the applicant and the intended object of certification, but the following documents must also be submitted, to show that the applicant is eligible to file the appli-cation and has the capability to certify other persons' or entities' goods or services and to control the use of the certification mark:
1.Documents evidencing the applicant's eli-gibility.
2.A declaration that the applicant does not itself engage in the manufacture or mar-keting of goods to be certified or the pro-vision of services to be certified.
3.Rules for the use of the certification mark.
An individual may not apply for registration of a certification mark. If the applicant itself does not have the requisite inspection and testing capabilities, it may appoint a third party that is capable of conducting inspection and testing appropriate to the content of the certification, to perform such inspection and testing on the applicant's behalf and under the applicant's supervision and control. An ap-plicant that appoints another organization in this way should submit a statement of how it will supervise the inspection and testing or-ganization, and a photocopy of the relevant appointment document or contract. If a for-eign enterprise, group, or organization apply-ing for registration of a geographical certifi-cation mark submits documents evidencing that the same geographical certification mark is protected by law in the applicant's name in the applicant's own country, it may be deter-mined to be an eligible applicant.
Certification marks include ordinary certifi-cation marks and geographical certification marks. The manufacture of goods whose geographical origin is certified under a geo-graphical certification mark need not neces-sarily be performed entirely within the geo-graphical region concerned. It is sufficient if those processes that are essential for achieving the quality, reputation, or typical characteris-tics of the products be performed within the region.
．Collective trademarks
When application is filed to register a collec-tive trademark, in addition to the usual pro-cedures of paying the prescribed fees and submitting the prints of the mark, not only should the application document disclose the name of the applicant and the classes and names of the designated products or services, to clearly identify the applicant and the scope of the rights that it wishes to acquire, but the following documents should also be submitted, to demonstrate that the applicant is eligible to file the application and has the capability to control the use of the collective trademark:
1.Documents evidencing the applicant's eli-gibility.
2.Rules for the use of the collective trade-mark.
An incorporated foundation, individual, or company may not apply for registration of a collective trademark. If a foreign group or organization applying for registration of a geographical collective trademark submits documents evidencing that the collective trademark is protected by law in the appli-cant's name in the applicant's own country, it may be determined to be an eligible applicant.
The manufacture of goods that are to bear a geographical collective trademark need not necessarily be performed entirely within the geographical region concerned. It is sufficient if those processes that are essential for achieving the quality, reputation, or typical characteristics of the products be performed within the region.
．Collective membership marks
When application is make for registration of a collective membership mark, in addition to the usual procedures of paying the prescribed fees and submitting the prints of the mark, not only should the application document state the name of the applicant, but the following documents should also be submitted, in order to demonstrate that the applicant is eligible to file the application and has the capability to control the use of the collective membership mark:
1.Documents evidencing the applicant's eli-gibility.
2.Rules for the use of the collective mem-bership mark.
An incorporated foundation, individual, or company may not apply for registration of a collective membership mark.
The mark of a certification mark, collective trademark, or collective membership mark must be examined not only for distinctiveness but also for similarity. If the similarity ex-amination shows that the certification mark, collective trademark, or collective member-ship mark for which registration is sought is identical or similar to a trademark, certifica-tion mark, collective trademark, or collective membership mark for which an application for registration was filed earlier by another person or entity, and the certified goods or services, designated goods or services, or nature of the group identified, of the later-filed mark are identical or similar to the designated or certi-fied goods or services, or nature of the group identified, of the earlier-filed mark, such that there is a likelihood of confusion among by consumers, then registration should not be granted.
After registration has been granted for a certi-fication mark, collective trademark, or collec-tive membership mark, the rights holder may apply to amend the content of the rules for the mark's use, within the scope of the rules originally submitted. If the amended content is not injurious to another person or entity or the public interest, does not exceed the scope of the original certification, and is not other-wise unlawful or improper, then the IPO will allow the amended rules to be appended to the case files.
The IPO has already held public hearings on the draft Guidelines. We will continue to keep readers informed of further developments.