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Trade marks are valuable assets for businesses. They can protect branding and certain unique characteristics. However, certification marks differ from a standard trade mark. For some guidance, this article will provide some background and explain what a certification mark is in New Zealand.

Trade Marks in New Zealand

Trade marks are a type of intellectual property right. They act as a ‘badge of origin’, linking goods or services to the businesses that provide them. Trade marks are important assets that businesses use to differentiate their goods or services from others and draw customers. 

For instance, a business may register trade mark rights protecting their logo. Then, they could use that logo on their product packaging. That way, customers know that their business is the source of a certain product. They associate that logo with that business.

Notably, trade marks in New Zealand can include various aspects, as long as you can represent them in your application. The following can be part of a trade mark:

  • words;
  • phrases;
  • symbols;
  • shapes;
  • colours;
  • smells;
  • sounds; or
  • a combination of these.

The owner of a trade mark gains various rights, which can benefit them in different ways. These include:

  • the exclusive right to use and commercialise their trade mark;
  • restrictions on identical or similar marks being registered; and
  • the ability to pursue third parties for trade mark infringement.

Trade Mark Essentials in New Zealand

Our free Trade Mark Essentials in New Zealand guide explains how to register and defend your trade mark registration.

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What Is a Certification Mark?

A certification mark is like a standard trade mark, but it has a different purpose. It still applies to the goods or services of a business. However, its existence indicates that this good or service has a specific characteristic. Some examples include the goods or services being of a particular:

  • material;
  • origin;
  • manufacturing method;
  • quality;
  • accuracy; or
  • performance.

Multiple parties can use a certification mark if their goods or services have the quality or characteristic that the mark certifies. On the other hand, standard trade marks only protect the goods or services of a singular party at the outset.

For example, the Rainbow Tick is a certification mark. Organisations or businesses that have gone through a Diversity and Inclusion assessment process can use this certification mark. This usage can indicate to potential employees and customers that they are an LGBTQIA+ friendly organisation.

Generally, a certification mark on goods or services indicates that they have been certified in some way to prove they have a particular characteristic. As a result, they will have to follow certain rules or undergo an assessment to use it. The certification mark then distinguishes them from other goods or services that do not have this characteristic. Examples of these can include:

  • goods coming from a particular location;
  • services meeting a particular practitioner standard;
  • goods complying with specific quality standards;
  • services being provided while following a particular method; or
  • goods being produced using a specific process.

How Can I Register a Certification Mark?

Like with a standard trade mark, you must submit an application to the Intellectual Property Office of New Zealand (IPONZ) if you wish to register a certification mark. They also follow similar eligibility criteria. However, there are some additional requirements you need to meet if you want to own a certification mark.

In particular, if you want to own a certification mark for particular goods or services, you cannot register a standard trade mark protecting those goods or services in your name as well. As a certifier in that particular area or industry, you must remain independent. Therefore, trading in those goods or services would undermine your impartiality.

You must make clear the nature of your certification mark. You could do this by including the words ‘certification mark’ or an abbreviation of these within it, or always use the certification mark with something else indicating its nature.

Additionally, you need to supply a copy of the draft regulations you would expect users of your certification mark to follow. You need to show that you have the ability to certify the goods or services of others competently. Therefore, IPONZ will evaluate whether your regulations meet a satisfactory standard. They will also assess whether registration of your certification mark would be in the public interest.

Key Takeaways

Trade marks link goods or services to a particular business or organisation. Certification marks are different in that they indicate a good or service has a certain characteristic, such as meeting a quality standard. The owner of a certification mark needs to have the capability to assess and certify those who use it. They also cannot register a standard trade mark protecting the goods or services their certification mark applies to.

If you need help with your certification mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is an intellectual property right to protect signs that distinguish your business from others. These usually form a part of your brand, such as your business name or logo.

What is a certification mark?

A certification mark is a kind of trade mark that certifies that goods or services meet a certain standard. These goods or services must have a specific characteristic to meet the requirements for that particular certification mark.

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