7 The Protection of Certification Marks under the Trademark
Act (*)In this research, I examined the certification and verification business practices of certification bodies, theuse of certification marks or verification marks that are affixed to goods, etc., certified or verified by certification
bodies (hereinafter referred to as the “certification marks”, and the protection of certification marks under thecurrent Trademark Act. I conducted a domestic questionnaire survey on certification bodies and organizations,member companies of the Japan Intellectual Property Association, and patent firms. I also conducted a domesticinterview survey on certification bodies and organizations, companies, and persons with relevant knowledge andexperience. Furthermore, I conducted a domestic and overseas literature study in order to collect information onother countries’ systems. At a committee consisting of certification bodies, companies, and persons with relevant
knowledge and experience, presentations were made on the following topics: the results of the questionnaire survey,
the interview survey, and the domestic and overseas literature study, the use of certification marks, thecertification methods, etc., and the certification and verification business practices. Based on the information
presented at the meeting, I identified legal issues pertaining to the protection of certification marks that wouldarise upon introduction of a certification trademark system.

IIntroduction

1

Background and purpose of this study

Certification marks mean such marks thatare used or intended to be used in order todifferentiate goods or services that are certified
in terms of the place of origin, raw materials,
production method, or the provision, quality,accuracy, or any other feature of services fromother goods or services that have not beencertified. Due to the nature of these marks, itwould be unreasonable to require each company
that obtains and uses a mark to register the markon an individual basis. Such registration should bemade by a certification or accreditation body.
In order to provide trademark protection tocertification marks, many countries and regions
have established a special system, called acertification trademark system, within theframework of their respective trademark systems.
Although other countries have a certification
trademark system, Japan does not have such a
special trademark system concerning certification
marks under the current Trademark Act. In Japan,such marks are treated as regular trademarks interms of the application and registration
procedures. Consequently, the nature ofcertification marks in Japan is different from thatin other countries. In other countries, such marks
are registered on the presumption that thosemarks will be used by the companies that haveobtained accreditation or certification. On theother hand, under the current JapaneseTrademark Act, in principle, such marks areregistrable as trademarks only if the trademark
registration is made by an organization that isengaged in the business of certifying goods orservices for the purpose of using the registered
mark for those goods or services.
Meanwhile, with the intensification ofinternational competition, the importance andsignificance of certification marks are expected togrow as a tool to inform consumers that thetechnological and qualitative superiority of themarked goods or services have been accredited orcertified by certain organizations.
Countries around the world have been
holding discussions and negotiations on Free
Trade Agreements (FTAs) and Economic
Partnership Agreements (EPAs). If the scope ofthe discussions expands to include IP systems,
the establishment of a certification trademark
system could become a topic of discussion.
Before examining the possibility ofestablishing a certification trademark system, theJPO should understand how certification marks
are utilized in Japan. The JPO needs to collectinformation on such details as what kinds ofcertification marks exist, how the quality of goods
or services are certified or verified, and how
these marks are used. Based on the information
gathered, it is necessary to grasp, analyze, andexamine such important matters as the protection(*) This is an English translation of the summary of the FY2011 JPO-commissioned research ｓtudy report on the issues
related to the industrial property rights system.

●IIP Bulletin 2012 Vol.21

1 ●currently provided to certification marks, theneeds for a certification trademark system, andthe legal issues that would arise if Japan
introduces a certification trademark system.
2Method of this research

In this research, in order to collectinformation on the certification and verification
business practices of certification bodies,
corporate use of certification marks, and theprotection of those marks under the Trademark
Act, the following surveys were conducted: adomestic questionnaire survey (certification
bodies and organizations, member companies of
the Japan Intellectual Property Association,patent firms), a domestic interview survey(certification bodies and organizations, companies,
persons with relevant knowledge and experience),
and a domestic and overseas literature study inorder to collect information on other countries’systems.

Ⅱ Protection of Certification marks
under the Trademark Act
1

Certification marks
assessmentsandconformity

While the international rules do not specify adefinition of verification marks, certification
marks are defined as marks that indicate theresults of assessments conducted by third parties.
Certification marks can be divided into two
categories: product certification marks ormanagement
systemcertification
marks.
Certification marks need to be examined inconsideration of the accreditation marks thatindicate the results of evaluations of certification
bodies. Certification marks indicate the results ofconformity assessments that provide a basis forthe marks. However, those marks vary in termsof reliability.
Under the international rules, the basis of
the reliability of management system certification
lies in the accreditation given by an accreditationbody to a management system certification body.
Meanwhile, the basis of the reliability of productcertification lies in the accreditation that a
product certification body obtains by passing anational registration examination or obtains froman accreditation body, or lies in mutual
recognition within a certification body group, or in
the self-evaluation of the certification body.
Registration by a nation or mutual recognition●within a certification body group may be regarded
to be the same as accreditation in terms of thelevel of reliability. The certification assessment
procedure and post-certification follow-up
assessment activities under the productcertification system are determined based on thecertification mark management regulations.
Therefore, all products are not necessarily
subject to the same surveillance, factoryassessments, manufacturing process assessments,and sample tests.
2Certification and verification businesspractices of certification bodies

In the case of S marks, which are thetechnical standards specified in the Electrical
Appliances and Material Safety Act, when acompany requests product certification, a producttest is conducted in order to verify the conformity
with the certification standards for S marks. Inaddition, a first-stage factory assessment isconducted in order to check whether it has aproduction system that can ensure the same levelof quality for all of the certified products. If theexistence of such a system is confirmed, thoseproducts will be “certified.” The company will belicensed to use the certification mark. The
certification body will publicize a list of certified
products. The company is authorized to ship thecertified products with a certification mark affixedthereto.
A test will be conducted on the first lot tocheck whether the products that the company has
just started producing satisfy the specifications
that were submitted at the time of certification in
any of the following three cases: (1) in a casewhere this is the first time that the company
requested such test for that particular productcategory, (2) in a case where the company
requested such test, and (3) in a case where acertification body finds such test necessary.
Market monitoring will be conducted if
necessary. Furthermore, an annual factoryassessment is conducted as follow-up activities inorder to determine whether the certification
should be kept effective.
3

Certification and verification businesspractices of accreditation bodies

Any organization that conducts a conformity
assessment to “certify that the specified
requirements concerning products, processes,systems, individuals, or organizations are
2 ●IIP Bulletin 2012 Vol.21

satisfied” is called a “conformity assessment
body,” which includes certification bodies. On theother hand, “accreditation” means “officialcertification by a third party that a conformity
assessment body is capable of conducting acertain conformity assessment.” Any organizationthat accredits conformity assessment bodies iscalled an accreditation body. In sum, accreditation
bodies accredit certification bodies, which certify
organizations such as companies in the case ofmanagement system certification and certify
goods or services in the case of productcertification. The role of certification bodies is tocheck the quality, etc., of goods or services onbehalf of the consumers of those goods orservices. The role of accreditation bodies is tocheck and guarantee the assessment capability ofcertification
bodies.
Furthermore,theInternational Accreditation Forum (IAF), which
consists of accreditation bodies from all over theworld, guarantees the capability of accreditation
bodies through mutual assessment. Accreditation
capability that has been guaranteed by suchmutual assessment will become world-classaccreditation.
4

Domestic surveys and analysis

According to the results of a domestic
questionnaire survey, there are four types of markassignment; (1) marks will be affixed to products
in accordance with the statutory standards, (2)marks will be affixed to products that have passed
a test conducted by an industry group inaccordance with the standards established by theindustry group and, (3) marks will be affixed toproducts that have passed a company’s own testin accordance with the standards established byan industry group, and (4) marks will be affixed to
websites, etc., after management system
certification is conducted in accordance with thestandards established by an industry group. The
reasons why a company uses marks may becategorized into four types: (1) to earn
consumers’ trust, (2) to comply with laws andregulations, (3) to differentiate itself from othercompanies, (4) to comply with the rules
established by the industry group, and (5) tomake its environmental contribution andregulatory conformity visible to the public.
Regarding the issue of certification renewal(checking of quality maintenance), a domestic
interview survey has revealed that, as far as
product certification is concerned, there are three
types of renewal: (1) certification that may not be●IIP Bulletin 2012 Vol.21

renewed, (2) certification that needs to be
renewed before the expiration of the effective
period, (3) certification that is checked on aregular basis (checking of the qualitymanagement). As far as management system
certification is concerned, a regular examination
and a renewal examination (re-certification) areconducted. In the meantime, there are three
types of wrongful use of marks: (1) use of a markwithout due authorization (unauthorized use), (2)use of a mark by the authorized company for any
product other than the certified products (abusiveuse), (3) use of a mark in an inappropriate manner(misuse). Cases involving abusive use and misuseof marks have been solved through remedial
arrangements or negotiations. Cases involving
unauthorized use have been settled throughnegotiations or warnings. So far, none of thosecases have been brought before a court.
The needs for protection of certification
marks are explained below: the certification
bodies that have registered their certification
marks as regular trademarks account for 76%, ofwhich 35% have seen their marks wrongfully
used (unauthorized use, abusive use, or misuse).
The reasons why companies are using
certification marks are as follows: (1) to earn
consumers’ trust, (71%), (2) to comply with laws
and regulations (48%), (3) to differentiatethemselves from other companies (26%), and (4)to comply with the rules established by theindustry group (22%). To the question on theintroduction of a certification trademark system,
60% of the respondents showed their support for
the introduction for various reasons including: (1)the system would increase the reliability ofcertification marks, (2) the system would have apositive effect on standardization and on quality
maintenance and improvement, (3) the system
would prevent products to which certification
marks or verification marks are wrongfully affixedfrom being distributed in the market, (4) thesystem could satisfy a need for protection thatcannot be provided under the current law, (5)since certification marks are different from
regular trademarks in terms of usage andfunctions, a special protection system would bedesirable. Since the unauthorized use of acertification mark or verification mark would beoutsidetheframeworkof
thecertification/verification
marksystem,unauthorized use may not be restricted bycertification bodies, etc., except for theunauthorized use of a certain certification mark orverification mark that can be restricted by a law
3 ●or regulation. In many cases, a product to which acertification mark or verification mark is affixed
without authorization has poor quality. Aconsumer who happens to purchase thelow-quality product will suffer damage. This will
reduce consumer trust in the mark. Consequently,
the certification body, etc., will suffer damage aswell.
5Certification trademark systems in othercountries

In the U.S., the U.K., Australia, China, andSouth Korea, certification marks are protected ascertification trademarks. I studied thosecountries’ systems in detail such as the definitionof “certification trademark,” the requirements forbecoming a certification trademark holder,application documents, the items that arerequired to be specified in the Regulations on theManagementofUse,
assessment,
theexamination of the Regulations on theManagement of Use, the publication of theRegulations on the Management of Use,
reference to relevant authorities, the effect of theright, the exercise of the right, wrongful use by athird party, use by the trademark holder,punishment on trademark holders who violated
their management obligations, cancellation of a
trademark registration on the grounds of non-use,
and the application fee and the renewal fee. The
study has revealed that those countries havealmost the same certification trademark systems
with slight differences from one country toanother.
6

Legal issues pertaining to the introductionof a certification trademark system(Regular) trademarks that are practicallyused as certification trademarks are not used by
the trademark holders. Since such trademarks do
not fall under the definition “trademark to be
used in connection with goods or services
pertaining to the business of an applicant”(Article 3, paragraph (1) of the Trademark Act),
they do not satisfy the registration requirements
under the current Act. Therefore, a certification
trademark system should be introduced in orderto make certification trademarks registrable. Ifsuch a system is introduced, certain measures
should be taken to ensure smooth transition from
regular trademarks to certification trademarks.
As was the case with the introduction of thecollective trademark system, it would be●reasonable to set a transition period during whichchanges may be made in registrations andapplications. Trademark holders should bepermitted to leave their trademarks as regulartrademarks as far as their certification services(Class 42) are concerned and to register theirtrademarks as certification trademarks as far as
the goods or services the trademark holders
provide for use by other parties are concerned.
Necessary measures should be taken to allow
such dual registration of a trademark as both aregular trademark and a certification trademark.
The
requirementsforbecomingacertification trademark holder should beestablished in such a way that a wide range ofentities including companies, the nationalgovernment, and local governments can become
certification trademark holders as long as they
have juridical personality. The requirements thatwill be imposed on individuals should beestablished in light of the actual use of marks andthe needs for trademark protection.
Each applicant for a certification trademark
should be required to submit the Regulations on
the Management of Use. The JPO should examine
whether the rules specify all of the necessary
matters, do not offend public order and morals,
and meet other criteria. The reasonableness of
the rules should be determined by means ofrevocation trials or legislation. These Regulations
on the Management of Use should be madepublic.
Regarding the registration requirements
specified in Article 3, in light of the protection
system for trademarks consisting of geographicalnames and the wording of Article 3, paragraph (2)of the current Act, a provision independent from
Article 3, paragraph (2) should be establishedspecifically for certification trademarks so that acertification trademark that does not have thesource-indicating function in the original sense
could be registered as long as the trademark has
the function of distinguishing certified goods fromother goods. It would not be necessary to alter
Article 4. However, when a judgment is madeabout the similarity or dissimilarity between adisputed trademark and a prior trademark, a
judgment of dissimilarity may be made on thegrounds that the disputed trademark is acertification trademark.
The grounds for invalidation and the grounds
for revocation of a certification trademark should
be applied more strictly than those of regulartrademarks. The grounds for invalidation and thegrounds for revocation should be specified in such
4 ●IIP Bulletin 2012 Vol.21

a way that they cover such cases as where a
trademark has never satisfied the registration
requirements from the beginning, where a
trademark failed to satisfy such requirements
subsequently after its registration, and where thetrademark holder failed to manage the trademark
in accordance with the Regulations on theManagement of Use.
Certification trademarks should be regarded
as the same as regular trademarks in terms of thescope of effect.

Ⅲ Conclusion and Consideration
In this research on certification marks, I
conducted surveys and studies on the Japanesesituation of those marks and also on thecertification
trademarksystems
andimplementation practices of major foreigncountries. Based on the results of the surveysand studies, I examined what legal issues would
arise and determined what systems andimplementation rules would become necessary if
Japan protects those marks under a certification
trademark system. The findings of theexamination are included in this report.
The system to protect those marks under
the Trademark Act needs to be determined basedon a deep understanding of the current state ofthose marks and also on the results of careful
discussions on such points as the requirements
for becoming a certification trademark holder, theusers of certification trademarks, interpretationof the “source-indicating function,” theregistration requirements, and the effect of aright, etc. I hope that this research paper
contributes to the government’s effort to devise acertification
trademarksystem
andimplementation rules that will best suit Japan.
(Senior Researcher: Katsutoshi TAKAHASHI)●IIP Bulletin 2012 Vol.21

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