Protection and use of Certification Trademarks in Africa

Inês Tavares outlines how various African jurisdictions define and implement Certification Trademarks.

Certification trademarks have a specific purpose aside from protecting the mark. Certification trademarks are trademarks that have the capability of distinguishing goods or services certified by the proprietor of the mark in what concerns the mode or the material of the manufacture of said goods or execution of said services, the quality, and reliability of those goods and/or services. In most countries, certification trademarks are not a guarantee of geographical origin, unlike geographical indications and, sometimes, collective trademarks; nevertheless, there are jurisdictions in which Certification Trademarks are capable of designating geographical origin. In essence, a certification trademark gives a guarantee for specific characteristic of certain goods or/and services.

It is rather easy to confuse Certification Trademarks with Collective ones. The big difference between Certification and Collective Trademarks is that the latter are limited to use by a certain group of enterprises. The owner of a collective trademark is often an association, public institution, or a cooperative that allows its members to use the trademark to identify and distinguish origin, material, and mode of manufacturer or other common characteristics. The owner of the collective trademark is also responsible for ensuring that certain standards and regulations are met by their members and users of the trademark. Given that Collective Trademarks promote the strict cooperation of a certain group of people, they have become very relevant to local development of businesses. In Ghana for instance, Collective Trademarks are especially essential for they can be used to protect cultural expressions. In Kenya, Collective and Certification Trademarks are used to protect and indicate geographical indications. In 2006, a trademark application for “ECHUCHUKA” was filed in the Kenyan Industrial Property Institute as a collective trademark for an aloe-vera based product that grows and is manufactured in and by the community of Lake Turkana.

On the consumer’s point a view, the existence of a certification trademark or a collective trademark on a specific product or service assures that said product or service complies with a previously existing and accepted standard or regulation, ensuring, to the consumer, a guarantee of quality or other relevant characteristic of the product or service.

The main benefit of certification and collective trademarks is to encourage objectivity in the use of a trademark and to ensure to consumers, as previously mentioned, certain requirements: quality of the materials, methods and manner of production, or performance of services, quality of accuracy, were properly met. Of course, there are downsides as well. An applicant that intends to use a Certification Trademark must comply with these standard and fixed specifications rigorously. An applicant who wishes to protect a Certification, or a Collective Trademark must have a method for determining if whether the requirements are being met by trademark users and that method has to satisfy competent authorities in order for the applicant to become an approved certifier. Furthermore, overall the administrative and regulatory burden on certification marks is significant as compared to standard trademarks.

There are several famous Certification Trademarks originating from different countries, such as WOOLMARK, which assures products are made from 100% wool; LABEL ROUGE, a French certification mark to ensure the quality of food and non-food items as well as unprocessed agricultural products, which certifies that those products are on a superior level when compared to similar ones on the market that do not have the Label Rouge (Red Label); ENERGY STAR, that sets the benchmark for energy efficient products; NTA, which stands for National Testing Agency, an Indian Certification Trademark which enables entities to carry out qualified college submission examinations; Fairtrade, that certifies a product or service as being obtained or provided through better prices, fair working conditions and in a sustainable matter on an ecological and ethical point of view; UTZ, a certification to ensure sustainability on the production of coffee, tea and cocoa and Rainforest Alliance, which ensures that users of the alliance respect a list of sustainable agricultural principals that includes conservation of wildlife, water resources and minimizing soil erosion, among other regulations. Recently, the UTZ and Rainforest Alliance have emerged and will be one certification seal only.

In principle, Certification Trademarks can be used by any person or entity as long as they comply with the standards and regulations that were previously defined by the owner of the certification trademark.

It is possible to obtain a certification trademark in the African continent; however, not every country in Africa has the legal provisions for certification and collective trademarks in their Intellectual Property laws. The Certification trademark registration is possible in jurisdictions such as Djibouti, Kenya, Libya, Morocco, Mozambique, Namibia, Nigeria, Rwanda, Seychelles, South Africa, Uganda, Zambia, and Zimbabwe. Not long ago, in August 2019, Mauritius published a new Industrial Property Bill and the same is expected to enter into force in the upcoming months as soon as the effective date is proclaimed. This new Bill recognizes certification trademarks.

Collective trademarks, on another hand, are a possibility in a wider range of jurisdictions across Africa, namely OAPI, ARIPO, Algeria, Botswana, Burundi, Cape Verde, D.R. Congo, Djibouti, Egypt, Ethiopia, Gambia, Ghana, Kenya, Lesotho, Liberia, Libya, Madagascar, Malawi, Mauritius, Morocco, Mozambique, Rwanda, S. Tome and Principe, Seychelles, Sierra Leone, South Africa, Tanzania, Tunisia, and Zimbabwe.

Regulations on Certification Trademarks are somewhat harmonized worldwide and across the African countries.

The application for the registration of a Certification trademark must designate the mark as such and shall always be accompanied by the terms and conditions governing its use. In jurisdictions such as Uganda, Zimbabwe and Kenya, the Registrar will examine the regulations as to substance and can decide to refuse to accept the same, or to accept these, subject to conditions, limitations, amendments, or modifications. In general, when examining the Certification Trademark same standards as for standard trademarks will apply, namely disclaimers, descriptiveness, likelihood of confusion, generic nature, amongst others. The Registrar will notify the applicant in writing and, if required, promote a formal hearing.

Throughout each legal framework the owner of a certification mark must ensure neutrality and therefore cannot use the Certification Trademark to either identify or certify its own goods and/or services. Any interested person can make a request to remove the registration of a Certification Trademark on different grounds: 1) that the owner of said trademark uses it to its own benefit to certify, and then sell, products or services; 2) that the owner allows for its use in contravention with the terms and conditions previously accepted by the registry; or 3) the owner allows the trademark to be used in a manner that deceives the public as to the quality or other certified common characteristics.

In every jurisdiction, standard trademark regulations will apply, with the necessary adaptations, to the Certification Trademarks.

In general, it is mandatory that at any given time, the owner of a Certification Trademark communicates to the Registry if any changes are made to the regulations governing the Certification Mark and those changes have to be entered into the Trademark Institute.

If any person or entity proves compliance with the standards or regulations of the terms and conditions referred to in the Certification Trademark, the application may not be refused.

In Kenya, for instance, Certification trademarks cannot be assigned and are not transmissible unless such action has the consent of the Courts. The same applies in Zambia and Zimbabwe, but authorization is given by the Registrar. In Morocco it is also not permissible to assign collective and certification trademarks. However, the collective and certification trademark transference may be authorized by the competent administration if the transferee undertakes effective control of the use of the mark.

The Morocco Trademark Law has specific provisions for Collective Marks and Certification Marks, in which collective marks may be used by any person who complies with regulations previously issued by the owner of the registration and certification marks are affixed to goods and/or services that display, in particular, with regard to the nature, properties or the qualities and overall characteristics that are detailed in the respective regulations. It slightly differs in qualification from other African jurisdictions. Both types of trademark applications must include copy of the regulations governing its use, duly certified by their applicants.

According to the Industrial Property Acts of Rwanda, South Africa, and Zambia, Certification trademarks are capable of designating geographical origin, as well as other common characteristics.

All in all, there are downsides and upsides when deciding to obtain protection of a Certification Trademark in Africa, the most relevant downside being the process, as it its more demanding. The upside is certainly the assurance of quality and integrity such certification provides to a product or performance of a service, which benefits all, but mostly consumers.

In my personal opinion, there is a clear beneficial side to Certification (and Collective) Trademarks and their provision in other African countries should be encouraged in the future.

This article was originally published in The Trademark Lawyer Magazine (Issue 4, 2020).