The recognition pathway

Formal recognition of a CAQA Certified mark means registering it as a certification trade mark under the Trade Marks Act 1995 (Cth). A certification trade mark is a distinct category that signifies goods or services meet a defined standard, and it is applied by multiple approved businesses rather than used exclusively by its owner. Registration gives each mark legal standing and enforceable protection, and it is the only basis on which the marks can accurately be described as certification marks.

6.1 The distinctive feature: ACCC approval of the rules

Unlike a standard trade mark, a certification trade mark cannot be registered until the rules that govern its use are approved by the ACCC. IP Australia examines the mark. The ACCC assesses the rules. Both must be satisfied before the mark can proceed to registration. This is why the rules in Sections 3 and 5 matter so much, because they are the document the ACCC assesses, and their quality largely determines how smoothly an application moves.

6.2 The pathway, step by step

1. Finalise each mark as an artwork or a defined wording. Each of the twelve marks is a separate certification trade mark, and each requires its own application and its own set of rules.
2. Prepare the certification rules for each mark under section 173. The rules must specify the certification requirements the goods or services must meet, the process for determining whether they are met, the attributes an approved certifier must have, the requirements the owner and approved users must meet, any other requirements for use, and the procedures for resolving disputes about whether the requirements are met and about any other issue relating to the mark. The ACCC publishes a certification trade mark rules checklist that must be completed and provided to IP Australia with the application. Sections 3, 4 and 5 of this document are structured to become those rules.
3. File the application with IP Australia and select certification trade mark. Nominate the classes of goods or services the mark will certify. A certification trade mark is registered in the classes of the goods or services being certified, not in a separate certifier class. For this program the relevant classes include class 41 for education and training services and class 35 for business and retail services, together with any further classes that match the sectors of the businesses that will hold each mark. The rules do not have to be filed at the same moment as the application, but the application cannot proceed to registration until the rules are filed and approved.
4. IP Australia examines the application against the general requirements that apply to all trade marks, including whether the mark is capable of distinguishing the certified goods or services and whether it conflicts with earlier marks. Where the application meets these requirements, the Registrar of Trade Marks refers the rules to the ACCC.
5. The ACCC assesses the rules. It considers whether the assessors have the skills to certify, whether the rules are detrimental to the public, and whether the rules raise concerns about competition, unconscionable conduct, unfair practices, product safety or product information. The ACCC then issues an initial assessment.
6. The Registrar gazettes the ACCC initial assessment in the Official Journal of Trade Marks. Interested parties can make submissions, and a conference can be held, before the ACCC proceeds to its final assessment.
7. The ACCC makes its final assessment. Where it is satisfied, it issues a certificate to the applicant and to the Registrar stating that the rules meet the requirements, and a certified copy of the rules is held on the record. Approval is not guaranteed. The ACCC can require changes to the rules, or decline to certify, so the program does not represent that registration is assured.
8. Once IP Australia and the ACCC are both satisfied, the mark is accepted and advertised for opposition. Where no opposition is filed, or an opposition is unsuccessful, the mark proceeds.
9. The mark is registered as a certification trade mark, and registration is maintained by renewal on the standard trade mark cycle.

6.3 Obligations that continue after registration

The rules of a registered certification trade mark can be varied only with ACCC approval, and an application to vary the rules must be made in writing to the ACCC, not to IP Australia. A registered certification trade mark can be assigned to a new owner only with ACCC approval. These controls mean that the rules and the licence terms in this document are best settled carefully before filing, because changing the registered rules later requires the ACCC to approve the change.

6.4 A practical filing strategy

Because each mark needs its own rules and its own ACCC assessment, a staged approach works well. The flagship Proudly Australian Held mark can be filed first, which establishes the pathway and a rules template, and the remaining marks can then follow in tranches. The common rules in Section 3 and the common licence terms in Section 4 carry across every mark, so the drafting load falls sharply after the first application. Filing a prioritised group together is also workable where speed to market across several marks matters more than sequencing the cost.

6.5 Timeframes and costs

Registration of a certification trade mark takes materially longer than a standard trade mark, because of the ACCC assessment and the gazettal and submission window that sit inside the process. Costs comprise IP Australia application fees, charged per class for each mark, together with the professional fees of a registered trade marks attorney to draft the rules and manage the ACCC assessment. Fee levels change over time, so the current figures must be confirmed with IP Australia and with a trade marks attorney at the time of filing.

6.6 The interim position before registration

Until the marks are registered as certification trade marks, the program can operate, and the licence agreement in Section 4 already binds holders, but the way the marks are described must be handled with care. Registering each mark as an ordinary trade mark in the interim protects the brand, and every representation the program and its holders make must remain accurate and substantiated under the Australian Consumer Law. The certification trade mark pathway is the destination that lets the marks be described, without qualification, as certification marks.