Steps to Apply For A Certified Trade Mark in Australia
When it comes to registering a certified trade mark (‘CTM’) as opposed to a standard trade mark in Australia, there are additional administrative and regulatory requirements you must comply with. To help guide you through these requirements, this article outlines the basics of a CTM and the steps you will need to take to apply for a CTM.
What Is A Certified Trade Mark?
It might be helpful to understand a CTM in its relation to a standard trade mark. A trade mark owner uses a standard trade mark to distinguish goods or services from others in the market. On the other hand, a range of authorised users can use a CTM to guarantee that their goods or services meet a particular standard. These standards can include the:
- quality of the product;
- region in which the product is manufactured;
- materials used in the product; and
- suitability of the product.
For example, the Australian Government owns the ‘Australian Made’ CTM rights. A business whose goods or services comply with the specific rules of the ‘Australian Made’ CTM can then use the CTM in the course of selling their goods or services.
One of the key benefits of a CTM is that it promotes the perception of objectivity amongst consumers. Not only must the Australian Competition and Consumer Commission (ACCC) approve the rules governing the CTM, but businesses who wish to use a particular CTM must also satisfy those rules. These rules are also made available for public viewing and can be determinative in which products consumers choose to buy. This results in greater public confidence in your product that it meets the prescribed standards.
However, there are some instances where the benefits of a standard trade mark are more suited. Given the additional administrative requirements involved in the CTM application process, you should carefully consider whether you need a CTM. As always, you can seek legal advice from an expert trade mark lawyer.
Step #1: Complete Your CTM Checklist
Before you submit your CTM application to IP Australia, along with your CTM rules, you must consider and complete the CTM checklist. This checklist ensures the rules you have selected, and for your CTM, comply with the requirements set out in the Trade Marks Act. Some of these requirements include:
- a description of certification requirements that goods or services must meet before they carry the CTM;
- the process for determining whether goods or services meet those requirements; and
- procedures for resolving disputes about whether goods or services meet the requirements.
You must include this checklist with the document containing your certification rules and your CTM application in your formal application. You will then submit your application to IP Australia.
Step #2: Initial Assessment
IP Australia will first examine your CTM application. As with standard trade mark applications, they will assess the distinctiveness of your chosen CTM. They will then examine whether any identical or potentially similar trade marks are already in existence. IP Australia will also ensure that the accompanying certification rules that you have submitted are fit for assessment by the ACCC.
Once IP Australia completes their initial assessment, they will send your certification rules document, your CTM application, and your checklist documents to ACCC. IP Australia will also advertise the outcome of your initial assessment on the Register. This means your application is also open to opposition from other third parties.
Step #3: ACCC Assessment
The ACCC will then assess whether your chosen certification rules:
- will not detriment the public;
- comply with Competition and Consumer law.
The ACCC will also assess the standards you have prescribed for goods or services to meet to be eligible for your CTM and whether the procedures you have prescribed to assess if goods or services meet the CTM standards are sufficient.
Ultimately, the ACCC will then make a final assessment by considering the contents of your initial assessment, any submissions that you have made in response to your advertised application, and any other relevant matters.
Step #4: Outcome
If the ACCC approves your CTM application, a:
- certificate reflecting the approval will be sent to you as the CTM holder;
- copy of the certificate will be sent to IP Australia; and
- IP Australia will publish a copy of your certification rules.
If your application is not approved, you will nevertheless be notified of the outcome. Whilst the ACCC’s decision is reviewable by the Administrative Appeals Tribunal you will also have the option to revert your CTM application to a standard trade mark application.
A certified trade mark can be used on goods or services that meet a particular standard set out by the specific certification rules in Australia. A CTM guarantees to consumers that your good or service meets an objective set of standards particular to that CTM. You must compile a set of certification rules that comply with the Trade Marks Act and submit this in your application to IP Australia. Both IP Australia and the Australian Competition and Consumer Commission will assess your application.
Frequently Asked Questions
This depends on what kind of protection you seek. For example, a certified trade mark in Australia protects a wide range of goods or services that all meet specific certified standards. On the other hand, a standard trade mark protects the uniqueness of your individual brand from being misappropriated by others.
Given the added administrative processes involved in a certified trade mark application, it is worthwhile seeking the advice of an experienced trade mark lawyer at the early stages of applying for a CTM.