Australia: ACCC moves to approve tobacco-free certification trade marks (CTMs)

Last Updated: 8 February 2019
Article by Dan Pearce and Louise Almeida
Most Read Contributor in Australia, January 2019

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:

  • the CTM is inherently adapted to distinguish those goods or services
  • because of its use or the circumstances, the CTM has become adapted to distinguish those goods or services. Intended use is not relevant to this consideration. Applicants will need to show substantial evidence of use.

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:

  • the applicant sends a trademark application and the rules for using the CTM to IP Australia
  • an IP Australia trademark examiner reviews the application. If the application complies with the general requirements under the Trade Mark Act 1995, the deadline for accepting the application will be put on hold until the ACCC makes a decision
  • IP Australia sends the CTM application, a notification of any amendment to the application, the rules for using the CTM, and any other relevant documents to the ACCC. In Tobacco Free Portfolios' case, this step occurred about one year after lodgement with IP Australia
  • the ACCC makes an initial assessment. To pass the initial assessment, the ACCC must find that:
    • the CTM rules won't be detrimental to the public
    • the CTM rules comply with competition and consumer laws (including laws relating to restrictive trade practices, unconscionable conduct, unfair practices, product safety and product information requirements)
    • the attributes required of a trader to obtain approval for the CTM allow a person to assess competently whether that trader's goods or services meet the certification requirements.

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 notifies the applicant and IP Australia of the outcome of the ACCC initial assessment. Tobacco Free Portfolios' application is currently at this stage. IP Australia will also publish the outcome in the Official Journal of Trade Marks. Within one month of advertisement, the applicant or any other person can respond in writing to the ACCC, and request the ACCC to hold a conference in relation to the initial assessment
  • the ACCC makes a final assessment. It will consider the initial assessment, the submissions in response and any other relevant matters
  • the ACCC notifies the applicant and IP Australia of the outcome of the final assessment

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.

This publication does not deal with every important topic or change in law and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to the reader's specific circumstances. If you have found this publication of interest and would like to know more or wish to obtain legal advice relevant to your circumstances please contact one of the named individuals listed.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Dan Pearce
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions