Feb 11, 2020

Does a certifying organization require more than a trademark? | Infusion Lawyers




Dear IP ABC

I am Mfon Udofia, owner of Emperocrest Hotel in Nigeria. Recently, my fellow hoteliers and I decided to form Hospitality Gate, a body that will have the self-regulatory responsibility of certifying standards in the hospitality industry in Nigeria. Hotels that meet the body's standards would be certified by us and be required to pay certification fees. Only certified hotels would be entitled to use our mark of quality in their locations. We registered Hospitality Gate’s mark of quality as a trademark in Nigeria. 

Six months into operations, a hotelier has threatened to report our activities to relevant authorities. According to the hotelier, Hospitality Gate has no right to use its logo as a mark of quality in the hospitality industry in the country. As a certifying organization, do we require more than a trademark?
Image Source: Remarkable.be

Answer

Dear Mr Udofia
If you registered Hospitality Gate's mark-of-quality logo as a trademark and not a certification mark, the answer is TRUE--merely registering the mark of quality as a trademark is inadequate. A trademark is not the same as a certification mark. They perform different functions.

For Hospitality Gate to be legally entitled to use its logo as a mark of quality that certifies hotels as meeting the requirements for standards and quality in Nigeria, the logo must have been registered under Part A of the Trademarks Act as a certification mark.

So what is a certification mark?
As the name implies, a certification mark is a type of mark that is used to certify goods or services as meeting certain minimum standards set by the certifying body. Certification marks show consumers of goods or services that particular goods or services (products) or their providers (product owner) have met certain standards. Having met these standards, product owners are permitted to use the certification mark approved by the certifying body for this self-regulatory purpose and nothing more.

Under section 43 of Nigeria's Trademarks Act, a certification mark or ‘certification trade mark’
as it is called under the Actis described as a “mark adapted in relation to any goods [or services] to distinguish in the course of trade goods certified by any person in respect of origin, material, method of manufacture, quality, accuracy or other characteristics, from goods not so certified”.

Therefore, a certification mark is neither a trade mark nor a service mark. It is not used by the owner in connection with any of the owner's goods or services.

Certification marks serve 3 major purposes.
  1. Geographical Origin: that the goods or services come from a particular geographic region. For example, that a particular cow milk is from Holland;
  2. Standard of Quality: that the  goods or services meet certain standards of quality. This may involve the materials used to manufacture the goods or the compliance-control processes a service has passed through. For example, Standards Organization of Nigeria's (SON) Mandatory Conformity Assessment Program (MANCAP) for locally manufactured products, and the Offshore Conformity Assessment Program (SONCAP) for imported products and the Electronic Product Registration scheme for traceability and quality verification; and
  3. Accredited or Verified Members, Agents, or Experts: that the work on the goods or services was performed by an accredited member of an organization. For example, an organization with the qualification “ISO 9001 Certified”. This means that the the organization has met the International Organization for Standadization’s (UlISO) requirements in ISO 9000 Quality Management System (QMS).
Hospitality Gate's mark of quality concerns standards. You are therefore required to register it as a certification mark, not a trademark.

There are 2 major differences between a certification mark and a trademark.
First, while a certification mark indicates that goods, services, or providers of those goods or services have met certain standards, a trademark indicates the source of goods or services in connection to trade and commerce.
Second, while a certification mark is owned and controlled by the certifying body, the body does not use the certification mark with its own goods or services, a trademark is owned and used by the proprietor to distinguish its brands from those of others. This is why under section 43 of the Trademarks Act,  a certification mark is prohibited from being registered in the name of a person who carries on a trade in goods of the kind certified. In other words, a regulator cannot also be a player.
Therefore, for Hospitality Gate's purpose, its trademark registration should have been a certification-mark registration. You are not trading any goods or services.

For Hospitality Gate to register a certification mark, it must meet two statutory requirements.
First, under section 43(5) of the Trademarks Act, conditions or limitations regulating the use of a certification mark must be registered at the Trademarks, Designs, and Patents Registry.
Second, under section 43(6) of the Act, the rules governing the use of the certification mark must be deposited at the office of the Registrar and get ministerial approval. This is because certification marks generally serve a consumer-protection function in trade and commerce. Of course, since a certification mark is usually for compliance with a defined standard, the Minister has to be satisfied that Hospital Gate as a self-regulatory body for hoteliers is ‘competent to certify’ hospitality-services providers in the country.
Therefore, apart from corporate registration as an organization or association, Hospital Gate must have a document containing the conditions or limitations that regulate the use of the certification mark. It is these requirements that the Minister of Industry, Trade and Investments is required to review and approve accordingly.
For professional guidance or assistance with registering certification marks, consult your IP lawyer or law firm.

IP ABC

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