This post is the second of the two-part series on certification marks in India. The previous post talked about the registration of certification marks in India. This post sheds light on the rights conferred on a proprietor of a certification mark, and the enforceability of such marks in India.
A proprietor of a certification mark cannot use the mark on and in relation to her own goods or services. Rather registration of a certification mark confers on its proprietor the exclusive right to authorize others to use the certification mark on and in relation to their goods/services provided they meet the standards set out by the proprietor.
The use of a certification mark by the authorized user inures to the benefit of the owner such that the owner may be said to be using the mark. This is precisely the reason why registration of a certification mark cannot be challenged for non-use.
Under Indian law, the exclusive right to the use of a certification mark, which is conferred on its registered proprietor, is infringed by any person who, not being the registered proprietor of the certification mark or a person authorised by her in that behalf, uses in the course of trade, a mark, which is identical with, or deceptively similar to, the certification mark in relation to any goods or services in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken as being use as a trademark.
The principles of ‘deceptive similarity’ applicable to trademarks, in the absence of any indication to the contrary, apply fully to certification marks.
Clearly, infringement of certification marks, just like trademark and design infringement, is a statutory remedy available only after registration.
An obvious question is whether the proprietor of an unregistered certification mark has any remedy in common law. In other words, how can she enforce her rights in an unregistered certification mark against its misuse by third parties? This question appears to remain largely unaddressed by the courts of law not just in India, but also in other jurisdictions.
Certification marks may be perceived as a subset of trademarks. Since there appears to be nothing in our jurisprudence that suggests that certification mark holders cannot enjoy common law rights, it may be assumed that, just like trademarks, proprietors of certification marks are entitled to the common law remedy of passing-off. Thus, since there is no determinative segregation of certification marks from trademarks, it can be argued that rights in an unregistered certification mark can be acquired through use.
Since the phrase “passing-off” itself suggests that its object is to restrain third parties from passing-off their goods or services to the public as those of the proprietor of a mark, this remedy will be available to the proprietor of an unregistered certification mark. However, the remedy is available only if the use falsely signifies that the unauthorized user has the authority to grant such certification (as opposed to source identification). Thus, if it was never the intention of the defaulting party to pass-off the right of certification conferred in favour of the proprietor of the certification mark as its own right, then the remedy of passing-off won’t be available.
Other remedies available to proprietors of certification marks may include misrepresentation, fraud and others under the criminal law in India. Thus, if an entity seeks to mislead the public at large by illegally misrepresenting a connection/ affiliation with the proprietor of a certification mark or by misrepresenting to the general public at large that its products have been certified by the proprietor, then it may be prosecuted under criminal law.
Proprietors of certification marks may also choose to register their certification marks as trademarks for certification services. This is, however, possible if the mark also functions as a source identifier, say, if the proprietor’s name itself is the certification mark. Although such an approach comes with the risk of an attack by third parties, it could provide the proprietor the additional remedies of dilution in trademarks and passing-off.
To conclude, the owner of a certification mark maintains control over the use of the mark by third parties. Thus, operation of certification marks in a common law regime may result in (increased) anticompetitive abuses, as compared to a statutorily-regulated registration-based regime. Without the fear of cancellation of the mark on account of flawed policing or failure to observe any provisions of the regulations, certification mark owners will have little incentive to strictly abide by the regulations in a common-law regime. Accordingly, registration of certification marks in India is advisable to meet one of the larger purposes they purport to serve…public health and safety!