Certification Mark

What is 'Certification Mark'?

'Certification Mark' or 'Certification Trademark' is a specific mark seen on a commercial product that helps indicate that the manufacturer of that product has tested and verified and has strictly complied with certain prescribed quality standards while manufacturing the product. It helps the public at large understand that the product meets a set quality or standard as provided by a certifying authority.

For example BIS Hallmark certification for gold jewelleries, ISI mark also issued by the Bureau of Indian Standards (BIS), which certifies that the concerned product strictly conforms to a well-devised set of standards laid by BIS. This helps people know the product is of a quality standard and can be trusted. Due to its characteristic of essentially instilling confidence among consumers, a certification mark is often referred to as a "mark of validity" or a "mark of assurance".[2]

Official Definition of 'Certification Mark'

Listing Mark is defined in Black's Law Dictionary as Certification mark given as a stamp of approval organizations that apply independent standards or testing on qualifying goods and materials. The ‘UL’ mark is such a mark given by Underwriters’ Laboratory, which is such an organization.

Certification trade marks are a form of trade mark used to identify goods or services that meet certain standards or specifications which can include quality, place of origin, raw materials, mode of producing the goods, or performance of services and other specified properties. The owner of a certification mark usually is an independent enterprise, institution, governmental entity, or certification body, which is competent to certify compliance with the concerned products.[3]

A certification mark may be said to constitute a sign which is used or intended to be used to distinguish goods or services dealt with or provided in the course of trade and certified by the proprietor of the certification mark in relation to origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from other goods or services dealt with or provided in the course of trade but no so certified.

A certification mark is used in commerce by a person other than its owner to identify goods or services as being of a particular type. When a certification mark is used on a product, it is to indicate the existence of an accepted product standard or regulation and a claim that the manufacturer has verified compliance with those standards or regulations. Certification marks can be names, symbols, or devices that are used by groups or people that show compliance to a set of standards.[4]

'Certification Trade Mark' as defined in legislation(s)

As per the Trade Marks Act, 1999 a 'Certification Trade Mark' is defined under Section 2(1) (e) as ―certification trade mark, means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person;[5]

Legal provision(s) relating to 'Certification Mark'

• CHAPTER IX of the Trade Marks Act, 1999, Sections 69 to 78 deals with Certification marks.
• Section 2(a) clearly states that any reference to the term “trademark” shall include reference to certification mark as well.
• Section 69 states that certain provisions of the Act would not apply to Certification Trademark, this is to ensure certification marks remain distinct from regular trademarks by exempting them from provisions related to registered users, licensing and assignment.
• Section 70 A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of the provision of services of the kind certified. As stated before the proprietor themselves cannot issue certification marks.
• Section 71, states that the applicant of a certification mark must file to register the trademarks in the required classes to the Registrar in a prescribed manner. This application must be submitted along with a statement containing the grounds for filing such application as well as a draft for the regulations provided under the act.
• Section 72 talks about the grounds for consideration of the application by the registrar who may accept or refuse the application based on the following considerations

(a) Competence to certify the goods

(b) Satisfactory draft regulations under section 74 is satisfactory;

(c) public advantage

They may also either refuse the application or accept and approve it as it is or with certain modifications and limitations.

• Section 73 also provides for the opportunity for opposition to such registration by any third party for 4 months in the prescribed manner.
• Section 74 provides for filing of regulations governing use of a certification trade mark. Anyone registering a certification trade mark must submit a set of rules (regulations) to the Trade Marks Registry. These rules must explain how and when the mark's owner will certify products or services and allow others to use the mark.
• These regulations will be publicly available for inspection. If the owner later wants to change the rules, they must apply to the Registrar, who has the power to approve or reject the changes. In some cases, the Registrar may advertise the proposed changes, allowing others to object. If objections are raised, the Registrar must hear both sides before making a decision. This ensures fair use of certification trade marks and prevents misuse.
• Section 75 states use of any mark deceptively similar to the certification trademark with respect to the class of goods and services it is registered in would lead to infringement of the mark.
• Sections 75 and 76 lay down what shall and shan’t be considered as infringement of the certification marks.
• A mark may be cancelled by the registrar in accordance to the provisions of section 77 on the following grounds:

1. Non-competence
2. Failure to observe any provision of the regulations
3. There is no more public benefit to such registration
4. Need to vary the regulations for public advantage if the mark remains registered.

• Section 78 grants the owner the exclusive right to use the registered trademark. The term of registration of certification marks under the Indian Law is 10 years.

• Further, Section 43 states that a Certification trademark may not be assignable or transmissible without the consent of the registrar.
• Rule 137(1) of the Trade Marks Rules, 2017 (‘TM Rules’) : Mandates that a certification trade mark application is to be accompanied by regulations governing the certification trade mark’s use.
• Rule 137(4) of the TM Rules : Lays down the criteria for regulations (name, nature of business, particulars of infrastructure, competence, financial arrangement, characteristic of the certification, manner of monitoring, etc.).
• Rule 138 of the TM Rules : Mandates a statement of case to be submitted along with the regulation.

'Certification Mark' as defined in international instrument(s)

The trademark definition contained in article 15 of The TRIPS Agreement did not expressly embrace the possibility of registering certification and collective marks. In TRIPS, the registration of collective marks is provided for in article 7bis of the Paris Convention (which integrates the TRIPS Agreement in accordance with the first paragraph of its Article 2). Nevertheless, the TRIPS Agreement,should not be construed as excluding the protection of certification marks. The broad definition given to collective marks in these agreements can actually embrace the certification marks.

'Certification Mark' as defined in case law(s)

• In the case of M/S. Kutch Brine Chem Industries v. State Of M.P & Another the Madhya Pradesh HC clearly stated that the government's requirement for iodized salt suppliers to have ISI certification for at least two years is a reasonable policy decision. This condition ensures quality control, facilitates testing and inspection under the Bureau of Indian Standards Act, 1986, and serves the public interest. The court highlighted the following definitions.
• "Section 2(g) of the Act of 1986 defines “Indian Standard” to mean the standard established and published by the Bureau of Indian Standard, in relation to any article or process indicative of certain quality and specification of such an article or process. Thereafter, Section 2(j) defines what is a “license” which is granted under Section 15 of the Act to use the Indian Standards Certification Mark and also give particulars of Indian Standard Certification Mark which can be used in a product. The specification with regard to quantity, weight, grade etc. of a product which is defined in Section 2(s) and the “Standard Mark” is defined in section 2(t) to mean the Bureau of Indian Standards Certification mark or the Indian Standards Institution Certification Mark specified by the Indian Standards Institution. Section 10 of the Act of 1986 contemplates the functions of the Bureau and the Bureau is empowered to specify standard marks and control its use and misuse. Section 11 prohibits improper use of the standard mark and Section 15 contemplates a provision for licensing. Similarly, the Rules of 1987 and the Regulations of 1988 are framed and a complete reading of these statutory provisions goes to show that a particular standard is fixed for each product or item and the standard has to be met in accordance to the requirement of statutory rules and regulations".
• In the case of Tea Board, India V. ITC Limited the Calcutta HC held that Certification trade marks apply to both goods and services as would be evident from its definition and from Sections 70 and 75 of the Act. “Apart from the plaintiff's claim on the basis of its geographical indication, “Darjeeling”, the plaintiff also asserts its rights as the owner of the certification marks that confer special rights under Chapter IX of the Trade Marks Act. Such stand-alone chapter of the Trade Marks Act has 10 Sections. Section 69 precludes the applicability of certain statutory provisions relating to general trade marks to certification trade marks. The next five sections deal with the registribility of certification trade marks, applications for such purpose, the considerations relevant for registration, the procedure for opposition to an application for registration and the filing of regulations governing the use of a certification trade mark. It is such regulations relating to the use of certification trade marks that set certification trade marks apart from regular trade marks. “Certification trade mark” is defined in Section 2(1)(e) of the Act and contemplates the proprietor authorising the use of the certification trade mark by others in accordance with the regulations governing the use thereof which have to be statutorily filed with the trade marks registry. Certification trade marks apply to both goods and services as would be evident from its definition and from Sections 70 and 75 of the Act. Sections 2(1)(e), 70 and 75 of the Trade Marks Act are relevant in the context.
• The Gujarat High court in the case of Hem Plast Health Care Pvt. Ltd., Baroda v. State Of Gujarat held that the standards prescribed under the Bureau of Indian Standards (BIS) Act, 1986 operate independently of those under the Drugs and Cosmetics Act, 1940. Section 40 of the BIS Act clarifies that it does not override other laws concerning standardization or quality control. While ISI certification is mandatory only if the Central Government, under Section 14, notifies an article requiring compulsory adherence to Indian Standards, goods not covered under such notification can still be legally manufactured and sold without an ISI mark. However, compliance with other statutory standards, such as those under the Drugs and Cosmetics Act, remains necessary where applicable.
• Before the Trademarks Act was amended, the Punjab and Haryana High Court K.D.Chem, Ahmedabad v. Tas Med (L) Ltd., Chandigarh in 2002 interpreted trade mark to include certification mark, which is still applicable under section 2 (1)(zb) of The Trade Marks Act, 1999 "(v) "trade mark" means :- (1) in relation to Chapter X (other than section 81), a registered trademark of a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark; and (ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII."
• 8. The above definition would indicate that it includes "certification trade mark" for the purpose of registration and comprise registered and unregistered trade mark which is in use for the purpose of Chapter-X which deals with the penal provisions. Therefore, the meaning of certified trade mark has also to be taken notice of which has been defined in sub-clause (c) of Section 2(1) of the Act in the following terms: "(c) "certification trade mark" 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 of Chapter VIII in respect of those goods in the name as proprietor of the certification trade mark, of that person."

Types of 'Certification Marks'

Certification marks are categorized based on the product type and have different standard requirements associated with each product. India has both Statutory and Non-statutory certification marks. Statutory marks are mandatory marks that certify a particular type of good, like the green dot on vegetarian food, the brown dot on non-vegetarian food, toxicity label on pesticides, etc. Non-statutory marks are the marks which are encouraged by the government to certify certain goods. Example, Silk mark, the Ayush mark on herbal products, etc.

The presence of certification marks like ISI, Agmark, woolmark, etc., on a product signifies that the product has been manufactured in compliance with specific standards. Standards serve as authoritative guidelines outlining the necessary criteria to ensure that the material, product, or procedure is suitable for its intended use. Product standards typically specify the optimal levels of quality, safety, and performance, as well as sampling and practical evaluation methods. These standards guarantee:

• Protection of safety and health

• Fitness for purpose (performance)

• Environmental protection

• Ease of use

• Quality and reliability etc.

Businesses and consumers need the kind of credible communication which can only be provided by an independent, multi-stakeholder, third-party certification. Therefore, credible, and trustworthy certifications are a gift to the businesses and consumers who decide to walk the extra mile for sustainable change. Third party certification scheme that helps common consumers to identify products conforming to certain standards. Presence of certification mark on a product implies that the product has been produced according to a specific standard and that its production has been carried out under a well-defined system. It also indicates that it has been appropriately inspected and tested according to the agreed standard. Hence, products certified by well-defined certification schemes assure product quality and thereby enable consumers to identify products of daily use that conform to standards. In India, the Bureau of Indian Standards operates a Certification Marks Scheme for the use of the Mark, under the provisions of the BIS Act, 1986.

The various types of certification marks include:

1. ISI MARK: In India, the Bureau of Indian Standards operates a Certification Marks Scheme for the use of the ISI Mark, under the provisions of the BIS Act, 1986. ISI Mark is a standardization mark issued by the Bureau of Indian Standards (BIS) to certify that the products conform to the minimum quality standards. The Product Certification Scheme of BIS aims at providing Third Party Guarantee of quality, safety and reliability of products to the customer. Presence of ISI certification mark, known as Standard Mark, on a product is an assurance of conformity to the specifications. The conformity is ensured by regular surveillance of the licensee’s performance by surprise inspections and testing of samples, drawn both from the market and factory. The manufacturer is permitted to self-certify the licensed products after ascertaining its conformity to the Standard. Consumer products under Compulsory Certification are infant foods, food colours, cement, lamps, electric iron, electric immersion water heater, some steel tubes, packaged bottle water etc. All 93 products are covered under Compulsory Certification. The complete list of these products is available on BIS website www.bis.org.in. Some of the products under Voluntary Certification include biscuits, coffee powder, pressure cookers, L.P. gas stoves, detergents, fountain pen ink, carbon papers, dry distemper, paints, PVC pipes, ceiling fans, water heaters etc.
2. HALLMARK: Hallmarking is the accurate determination and official recording of the proportionate content of precious metal in precious metal articles. Hallmarks are thus official marks used in many countries as a guarantee of purity or fineness of precious metal articles. In India, at present two precious metals namely gold and silver have been brought under the purview of Hallmarking.
   
   The principal objective of Hallmarking Scheme is to protect consumers against victimization due to irregular gold or silver quality, and to develop India as a leading gold market centre in the World and to develop export competitiveness. Hallmarking of Gold Jewellery is a purity certification scheme of BIS launched in the year 2000. Hallmarked jewellery goes through stringent norms of manufacture and quality control. Hallmarked jewellery is assayed and marked by BIS recognized Assaying and Hallmarking Centres.
3. AGMARK: AGMARK is a certification mark on agricultural products in India, assuring that they conform to a set of standards approved by the Directorate of Marketing and Inspection, an agency of the Government of India. The AGMARK is legally enforced in India by the Agricultural Produce (Grading and Marking) Act, 1937. The present AGMARK standards cover quality guidelines for 205 different commodities spanning a variety of Pulses, Cereals, Essential Oils, Vegetable Oils, Fruits and Vegetables, and semi-processed products. Packaged food products sold in India are required to be labelled with a mandatory mark in order to be distinguished between vegetarian and non-vegetarian. Declaration by way of red dot /brown dot marking on the package for non-vegetarian/ eggetarian contents and green dot for vegetarian content in soaps, shampoos, tooth pastes and other cosmetics and toiletries has been made mandatory through the Legal Metrology (Packaged Commodities) (Amendment) Rules, 2014.
4. ISO MARK: ISO stands for International Organization for Standardization. The objective of ISO is to make common standards of products and services at international level, which ultimately facilitate foreign trade. Some of the areas where ISO standards can be applicable are hospital, insurance etc.
5. SILK MARK: Silk Mark is a quality assurance label for pure silk. It helps consumers to identify Pure Silk. The consumer has long been having a difficulty of identifying pure silk from host of other fibers. Silk Mark was launched in 2004. By purchasing silk mark labelled products from the authorised users, consumers get an assurance that they are indeed purchasing 100 percent natural silk products. The Silk Mark protects the interests of both the consumers and genuine traders and manufacturers of silk. It also helps in Generic Promotion of Natural Silk.
6. WOOLMARK: Woolmark is a certification mark used on textile products as an assurance that the product is made of 100% pure new wool. Woolmark is recognized throughout the world as a symbol of quality and reliability. This quality standard for woollen products is prescribed by the International Wool Secretariat.
7. HOLOGRAM: Hologram is a small square size plastic sticker generally of silver colour, with some text written on it, pasted on the package of some products or on the cover page of some books. This is called Hologram. The purpose of sticking it on the package of the product is to establish the authenticity of the product.
8. HANDLOOM MARK: Handloom Textiles constitute a timeless facet of the rich cultural heritage of our country. It occupies a place second only to agriculture in providing livelihood to the people. Handloom Mark is given under the Handloom Mark Scheme launched in 2006. Handloom Mark is the Government of India’s initiative to provide a collective identity to the handloom products in India and can be used not only for popularizing the hand-woven products but can also serve as a guarantee for the buyer that the product being purchased is genuinely hand woven from India. The ‘Handloom Mark’ is a symbol of rich legacy and tradition of Indian Handloom textiles.
9. ECOMARK:
   
   An earthern pot symbol categorizes the product as environment friendly. The logo for the Ecomark Scheme, signifies that the product which carries it does the least damage to the environment. It is a government operated seal of approval program for environmentally preferable consumer products. To increase consumer awareness, the Government of India launched the eco-labelling scheme known as `Ecomark’ in 1991 for easy identification of environment-friendly products. The criteria follows a cradle-to grave approach, i.e. from raw material extraction, to manufacturing, and to disposal. The Ecomark label is awarded to consumer goods that meet the specified environmental criteria and the quality requirements of Indian Standards.
10. BEE LABEL:
    
    The Bureau of Energy Efficiency (BEE) is an agency of the Government of India, under the Ministry of Power created in March 2002. The mission of Bureau of Energy Efficiency is to reduce energy intensity in the economy. Under this programme, the manufacturers are required to place a label showing how much electricity the appliance will consume under certain conditions. The programme is currently running for refrigerators, air conditioners, televisions, geysers, tube lights and fans among the household appliances. The scheme is mandatory for some of the appliances while voluntary for others. The labels contain a number of items. The highlight though is the ‘STARS’. More the stars more efficient is the appliance.

Difference between a trademark and a certification mark

A Trademark identifies and distinguishes the goods/services of a particular business and signifies their origin. The Trade Mark is owned and possessed by an individual as a proprietor thereof. Whereas a Certification Mark is not used by its owner but rather granted to businesses whose goods/services meet specific criteria set by the certifying authority. It ensures quality, standards, or other characteristics.

The owner of Trade Mark is entitled to deal with his Trade Mark in any manner of his choice including the right to license, assign or mortgage the same for his individual benefit.  Unlike in the case of a certification mark.

Rather than indicating a unique commercial source, like trademarks, certification marks inform consumers that the goods or ser vices they are purchasing “possess certain characteristics or meet certain qualifications or standards.”9 The utility of certification marks is not only to prevent public confusion like trademarks, but also to promote healthy competition within the marketplace of a certified product.

Difference between a collective mark and a certification mark

The purpose and nature of collective marks is to distinguish the goods or services of the members of an association of persons as against an individual juristic personality as in the case of trade mark. It is used by members of a specific association or group to indicate membership and common origin or standards and is controlled by the association itself.

The association of persons generally adopt some device, name, or symbol and such devices, names or symbols are used by the members to indicate their membership of such association to the members of the trade, general public or all others connected with such goods or services offered by the association.

A certification mark certifies that goods, services, or the providers of goods or services meet certain standards set by the certifying organization. Use of a certification mark does not require membership—the providers of the certified goods or services or the certified providers themselves are “authorized users” of the certification mark.

International Experience

CERTIFICATION MARK IN THE US

Although both certification marks and trademarks are protected under the United States Trademark Act (“Lanham Act”), certification marks are fundamentally different. Some examples of certification marks include Underwriters Laboratories Inc.’s “UL” symbol, used for electrical equipment that meets its safety standards, the Florida Department of Citrus’s “Fresh From Florida” seal, which is used for citrus products grown in Florida that meet certain quality standards, and the “Woolmark” logo on certain knit goods meeting specified percentages of new wool.

In the United States a certification mark is defined as:

[A]ny word, name, symbol, or device, or any combination thereof—(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use in commerce and files an application to register on the principal register established by this chapter, to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristics of such person’s goods or services or that the work or labor on the goods or services was performed by mem bers of a union or other organization.

Three different kinds of certification marks exist and are distinguished by what they indicate. A certification mark may indicate the following: “1) regional or other origin; 2) material, mode of manufacture, quality, accuracy or other characteristics of the goods/services; or 3) that the work or labor on the goods/services was performed by a member of a union or other organization.”

Although consumer trust is one of the driving factors behind control of certification marks in the US, the reliability of the certification mark is largely left up to the mark owner. The mark owner creates the standards, the mark owner decides what products will bear the mark, and the mark owner convinces consumers that the certification mark reliably ensures the quality standards it represents. Unless the mark owner independently decides to publish information regarding its efforts in preventing unauthorized use of the certification mark, the consumer would probably not be able to get access to that information in order to determine the reliability of a particular mark. Where the mark owner chooses not to publish information about the certification standards, the only check on the certification mark would be the market place itself.

CERTIFICATION MARK IN THE UK

The United Kingdom adopted the approach according to which members of associations could use an “association mark”, provided that their goods met the proprietor-association’s standards for certification. Registration of association marks, or certification marks as they became known, was first introduced under the Trade Marks Act 1905. The Act initiated the practice of integrating the registration of certification marks into the statutory framework for registration of ordinary trademarks, subject to special provisions.

A certification mark is defined in Section 50(1) of the Act as:

“A certification mark is a mark indicating that the goods and services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.”[6]

As with other countries, such as the United Kingdom and the United States of America, Indian law does not allow the proprietor of a certification trademark to use the mark in association with its own goods or services. The proprietor can only authorize others to use it. Further, the proprietor of the certification trademark must oversee others' use of the certification trademark to ensure that the mark is being properly used.

Research that engages with Certification Mark

Michelle B. Smit, (Un)Common Law Protection of Certification Marks, 93 Notre Dame L. Rev. 123 (2017).[7]

certification marks are essentially different from trademarks and, as such, ought not to be eligible for protection under common law. She contends that the special purpose of a certification mark, to signal collective origin and ensure that goods or services comply with particular, objective standards—is inconsistent with a regime of common law, which will heighten the risk of anticompetitive abuses.

Smit argues that permitting common-law rights would exacerbate current issues like manipulation of standards to shut out competitors, inadequate enforcement by mark owners, and overall unavailability of certification requirements to the public. Rather, she suggests that the only effective and sustainable form of protection is a strictly registration-based system under the Lanham Act. But Smit concludes that existing registration is in itself inadequate and needs to be dramatically enhanced with procedural changes. Her solution is to require more specificity in the standards submitted to the USPTO, public disclosure of all such standards and their later revisions, and periodic audits and mandatory record-keeping of certification rulings to verify these marks are performing procompetitive and consumer-protection roles.

Challenges

A look at the certification marks at the Indian Trade Marks Registry reveals the Registry lacks any standards for examination. The Registry has (advertised) and accepted numerous certification mark applications filed without the statement of case or regulation being filed. Without the regulations or statement of case, the Registry will not be able to determine whether the applicant is capable of certifying the purposed characteristics of goods / services and whether it has the financial ability to do so.

Certification mark is a sign of gurantee for the customers to rely on while purchasing a product. If the certification mark itself cannot be trusted as they are registered without following the provided regulations then the purpose of certification mark in itself is negated.

Another challenge faced was finding data reports and official government documents related to Certification marks.

Way Ahead

The Registry must take measures to make sure that Examiners are properly educated and sensitised about collective and certification marks to avoid such errors. The Registry has the power to initiate a suo motu rectification action under Section 57(4) of the TM Act. The right course of action is for the Registry to issue notice to the applicants / proprietors of certification marks that have been filed / registered without submitting the required regulations and statement of case. Failing which, the Registry may remove wrongly granted certification and collective marks.

There also needs to be transparency and easy access to data and government reports on certification marks.