The ACCC has moved to allow an Australian-based charity to register certification trademarks that show that financial institutions’ and fund managers’ investments are tobacco-free.
The ACCC recently accepted Tobacco Free Portfolios’ application for three certification trademarks (CTM) at the initial assessment stage.
If approved, the tobacco-free CTMs will certify that funds or investment products don’t invest in companies that manufacture or produce tobacco products. They will also certify if an entity has committed to divesting from such investments.
The ACCC said that certification requirements were sufficiently specified in the certification rules (which CTM applicants are required to submit), and that consumers wouldn’t be misled or deceived about the certification process.
Whether Tobacco Free Portfolios can use the CTMs now depends on the ACCC’s final assessment, which will take place after a submission period.
What is a certification trademark?
In this case, the ACCC is involved because Tobacco Free Portfolios Limited applied to register certification trademarks, rather than standard trademarks. Generally, trademark applications are assessed by IP Australia alone. However, CTMs are also assessed by the ACCC.
A CTM guarantees that goods or services meet a certain standard. A CTM can only be used if the owner of the CTM (or another person approved by the owner) authorises the trader to use it. Certification often relates to quality, accuracy, origin, or mode of manufacture and therefore helps provide certainty to consumers.
By contrast, a standard trademark simply shows that one trader’s goods or services are different to another trader’s goods or services. The goods or services don’t have to meet a particular standard.
What standards apply to a certification trademark?
A CTM firstly has to meet certain standard trademark requirements. It must be distinctive and not be deceptive, confusing or include scandalous material or prohibited signs. A CTM must be able to distinguish the certified goods or services from others.
On application, IP Australia will consider the extent to which:
How do you apply for a certification trademark?
The application process for registering a certification trademark is lengthy. Tobacco Free Portfolios Limited, for instance, first lodged its CTM application in May 2017.
The CTM application process involves the following steps:
In Tobacco Free Portfolios’ case, the ACCC found that the CTMs and rules were not detrimental to the public and were unlikely to be misleading or anti-competitive. The ACCC noted that the certification requirements and process would ensure that institutions or financial products bearing the marks would meet the standard shown. The ACCC accepted that each of the CTMs including a tagline of “verified tobacco-free”, “verified tobacco-free product”, or “verified tobacco-free commitment”, would help clarify the standard met.
The ACCC’s findings in relation to Tobacco Free Portfolios’ application at the initial assessment stage shows the importance of submitting marks that precisely and accurately reflect the certification requirements.
Authors: Dan Pearce & Louise Almeida
Dan Pearce, Partner
T: +61 3 9321 9840
Lyn Nicholson, General Counsel
T: +61 2 8083 0463
Andrew Hynd, Partner
T: +61 7 3135 0642
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Published by Dan Pearce, Louise Almeida