When is a certification mark a certification mark?
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Marcel Pemsel
Sep 26, 2026, 6:44:57 AM (12 days ago) Sep 26
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When is a certification mark a certification mark?
Certification marks are a rare breed. But rare does not mean uncontroversial. Most issues surrounding them have not reached the courts (yet). One of these issues is whether a certification mark must indicate to consumers that it is a certification mark and not an individual mark. This has been the subject of a recent decision from the German Patent Court (“GPC”, case 26 W (pat) 579/20).
Background
The applicant filed for registration of German certification mark “GGN” for goods and services in classes 1, 5, 18, 29, 30, 31 and 32.
The regulations governing the use of the mark stated that the mark may only be used with an individual identification number and the words “certified farming”.
The examiner at the German Patent and Trade Mark Office rejected the application for lacking distinctiveness within the meaning of Sec. 106a(1) German Trade Mark Act (“GTMA”; implementing Art. 27(a) EU Trade Mark Directive, “EUTMD”). This provision requires a certification mark to be capable of distinguishing goods and services which are certified from goods and services which are not so certified. The examiner argued that consumers will not perceive it as certifying a particular characteristic of the goods.
The applicant appealed to the German Patent Court (“GPC”).
The German Patent Court's decision
The judges dismissed the appeal.
They confirmed that a certification mark may only be registered if the relevant public can discern from the sign itself that it is a certification mark. The Court reasoned as follows:
1. The wording of Sec. 106a(1) GTMA does not require that the sign indicates that it is a certification mark. However, this does not support the applicant’s position that a certification mark must not be recognisable as such.
a. Sec. 106a(1) GTMA has essentially the same wording as Sec. 3(1) GTMA (implementing Art. 3(a) EUTMD). The latter provides that trade marks may consist of any signs, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. This condition is considered by the German courts to require an “abstract distinctiveness”, meaning that the sign is, in principle and under all possible circumstances, able to function as a trade mark. This provision excludes signs from protection only in exceptional circumstances, e.g. in the case of very long sound sequences. Merely repeating the requirement of “abstract distinctiveness” from Sec. 3(1) GTMA in Sec. 106a(1) GTMA for certification marks would, according to the judges, not make sense. Therefore, Sec. 106a(1) GTMA must impose requirements beyond those of Sec. 3(1) GTMA and require a specific form of “certification mark distinctiveness”, namely that the sign itself indicates its function as a certification mark.
b. The judges referred to a decision from the Board of Appeal (“BoA”) of the European Union Intellectual Property Office (“EUIPO”), which refused registration of the certification mark “Bio-Mineralwasser” (meaning “organic mineral water”) for beverages because the sign did not contain any indication allowing consumers to conclude that the mark certifies properties of the goods.
c. The Court concluded that Sec. 106a(1) GTMA must be interpreted as a certification mark-specific ground for refusal, providing that a certification mark must be recognisable as such.
2. The judges held that the purpose of certification marks speaks in favour of the aforementioned interpretation. A certification mark can only be used in accordance with its intended function if the public recognises that the proprietor of the mark does not itself manufacture or offer the goods and services, but rather certifies one or more of their characteristics in its capacity as a certifying body. The differing functions of certification marks and individual marks require them to be clearly distinguishable.
The judges referred to W. F. Gözze Frottierweberei and Gözze (C-689/15), where the Court of Justice of the EU (“CJEU”) found that an individual mark cannot be genuinely used where its use is perceived as certifying a particular characteristic of the goods and not as an indication of their commercial origin. If an individual trade mark cannot be genuinely used as a certification mark, the reverse must also be true. As a consequence, the legislator intended, through the introduction of the certification mark, to create a legally certain and transparent form of trade mark.
3. The judges also relied on the perception of consumers. They are not used to certification marks. Only 600 certification marks have been filed with the German Patent and Trade Mark Office since their introduction in 2019. In the same period, between 70,000 and 90,000 German individual marks have been filed annually. The judges concluded that consumers will not perceive a certification mark as such if it looks like an individual mark. Use of the certification mark in accordance with its intended function would be precluded.
4. The Court furthermore considered the absolute ground for refusal under Sec. 106e(2) GTMA. It provides that a certification mark may not be registered if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. The German legislator explained in the legislative materials for this provision that it shall prevent certification marks that create the impression of being an individual mark.
5. Authors in legal literature argue that only positive deception may be misleading. The judges countered that a sign will be perceived by the relevant public as such without analysis. Consumers are used to perceiving “neutral” signs (i.e. without any indication that they are certification or individual marks) as individual marks and not as certification marks.
6. The applicant could not rely on the regulation of the certification mark, which stated that it may only be used together with the words “certified farming”. The fact that the regulation is accessible online was deemed irrelevant. It is a theoretical option for consumers to consult the trade mark register. Consumers are unlikely to access it. More importantly, if consumers do not perceive a “neutral” sign as a certification mark, they have no reason to consult the register. Further, the regulation does not have the purpose to influence the perception of consumers. Finally, only the sign and the goods and services may be taken into account when assessing absolute grounds for refusal.
Since the relevant public does not understand the sign “GGN” as a certification mark, it was rejected.
Background
The applicant filed for registration of German certification mark “GGN” for goods and services in classes 1, 5, 18, 29, 30, 31 and 32.
The regulations governing the use of the mark stated that the mark may only be used with an individual identification number and the words “certified farming”.
The examiner at the German Patent and Trade Mark Office rejected the application for lacking distinctiveness within the meaning of Sec. 106a(1) German Trade Mark Act (“GTMA”; implementing Art. 27(a) EU Trade Mark Directive, “EUTMD”). This provision requires a certification mark to be capable of distinguishing goods and services which are certified from goods and services which are not so certified. The examiner argued that consumers will not perceive it as certifying a particular characteristic of the goods.
The applicant appealed to the German Patent Court (“GPC”).
The German Patent Court's decision
The judges dismissed the appeal.
They confirmed that a certification mark may only be registered if the relevant public can discern from the sign itself that it is a certification mark. The Court reasoned as follows:
1. The wording of Sec. 106a(1) GTMA does not require that the sign indicates that it is a certification mark. However, this does not support the applicant’s position that a certification mark must not be recognisable as such.
a. Sec. 106a(1) GTMA has essentially the same wording as Sec. 3(1) GTMA (implementing Art. 3(a) EUTMD). The latter provides that trade marks may consist of any signs, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. This condition is considered by the German courts to require an “abstract distinctiveness”, meaning that the sign is, in principle and under all possible circumstances, able to function as a trade mark. This provision excludes signs from protection only in exceptional circumstances, e.g. in the case of very long sound sequences. Merely repeating the requirement of “abstract distinctiveness” from Sec. 3(1) GTMA in Sec. 106a(1) GTMA for certification marks would, according to the judges, not make sense. Therefore, Sec. 106a(1) GTMA must impose requirements beyond those of Sec. 3(1) GTMA and require a specific form of “certification mark distinctiveness”, namely that the sign itself indicates its function as a certification mark.
b. The judges referred to a decision from the Board of Appeal (“BoA”) of the European Union Intellectual Property Office (“EUIPO”), which refused registration of the certification mark “Bio-Mineralwasser” (meaning “organic mineral water”) for beverages because the sign did not contain any indication allowing consumers to conclude that the mark certifies properties of the goods.
c. The Court concluded that Sec. 106a(1) GTMA must be interpreted as a certification mark-specific ground for refusal, providing that a certification mark must be recognisable as such.
2. The judges held that the purpose of certification marks speaks in favour of the aforementioned interpretation. A certification mark can only be used in accordance with its intended function if the public recognises that the proprietor of the mark does not itself manufacture or offer the goods and services, but rather certifies one or more of their characteristics in its capacity as a certifying body. The differing functions of certification marks and individual marks require them to be clearly distinguishable.
The judges referred to W. F. Gözze Frottierweberei and Gözze (C-689/15), where the Court of Justice of the EU (“CJEU”) found that an individual mark cannot be genuinely used where its use is perceived as certifying a particular characteristic of the goods and not as an indication of their commercial origin. If an individual trade mark cannot be genuinely used as a certification mark, the reverse must also be true. As a consequence, the legislator intended, through the introduction of the certification mark, to create a legally certain and transparent form of trade mark.
3. The judges also relied on the perception of consumers. They are not used to certification marks. Only 600 certification marks have been filed with the German Patent and Trade Mark Office since their introduction in 2019. In the same period, between 70,000 and 90,000 German individual marks have been filed annually. The judges concluded that consumers will not perceive a certification mark as such if it looks like an individual mark. Use of the certification mark in accordance with its intended function would be precluded.
4. The Court furthermore considered the absolute ground for refusal under Sec. 106e(2) GTMA. It provides that a certification mark may not be registered if the public is liable to be misled as regards the character or the significance of the mark, in particular if it is likely to be taken to be something other than a certification mark. The German legislator explained in the legislative materials for this provision that it shall prevent certification marks that create the impression of being an individual mark.
5. Authors in legal literature argue that only positive deception may be misleading. The judges countered that a sign will be perceived by the relevant public as such without analysis. Consumers are used to perceiving “neutral” signs (i.e. without any indication that they are certification or individual marks) as individual marks and not as certification marks.
6. The applicant could not rely on the regulation of the certification mark, which stated that it may only be used together with the words “certified farming”. The fact that the regulation is accessible online was deemed irrelevant. It is a theoretical option for consumers to consult the trade mark register. Consumers are unlikely to access it. More importantly, if consumers do not perceive a “neutral” sign as a certification mark, they have no reason to consult the register. Further, the regulation does not have the purpose to influence the perception of consumers. Finally, only the sign and the goods and services may be taken into account when assessing absolute grounds for refusal.
Since the relevant public does not understand the sign “GGN” as a certification mark, it was rejected.
Comment
If the GPC’s opinion prevails, many certification marks that have been used for a long time and of which consumers are aware that they are certification marks would need to be changed. They would not possess “inherent certification mark distinctiveness” and the law does not allow “acquired certification mark distinctiveness”.
Arguably, certification marks must be discernible as such. However, there are different means to show that a certification mark is not an individual mark. Certifying organisations have always had an interest that their trade marks are not perceived as individual marks so they developed use conditions for their logos long before certification marks have been introduced into EU law. Certification marks are usually not placed where consumers expect individual marks, but rather on the bottom left or right of front labels or on side or back labels of the packaging. This seems to be sufficient for consumers to understand that the mark is not an individual mark.
As long as this question is not settled by the CJEU, applicants can opt to file an EU certification mark because the EUIPO (as the GPC acknowledged) does not require the certification mark to be recognizable as such.
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