Guarantee mark and certification mark

A guarantee mark is a trade mark designated as such when filed and capable of distinguishing goods or services in respect of which the material, the mode of manufacture of the goods or performance of the services, the quality, the accuracy or other characteristics are guaranteed. It is governed by Articles L. 715-1 et seq. of the French Intellectual Property Code, which transpose Directive (EU) 2015/2436, and its Union equivalent is the EU certification mark, provided for in Articles 83 et seq. of Regulation (EU) 2017/1001. In French law it replaced the former collective certification mark.

The owner and the neutrality requirement

Any natural or legal person, including a public law body, may file a guarantee mark, provided it does not carry on a business involving the supply of goods or services of the kind certified. This neutrality requirement lies at the heart of the regime, because the public must be able to rely on a certification issued by a body independent of the operators it supervises. The application must be accompanied by regulations governing use, which specify the characteristics guaranteed, the testing and supervision arrangements, the conditions of use of the mark and the persons authorised to use it, and which are published. The owner must authorise use of the mark by any person whose goods or services meet the conditions of the regulations, which makes the guarantee mark an open sign and not a sign of membership.

Specific conditions of validity

The guarantee mark is subject to the ordinary absolute grounds for refusal. The application is also rejected if the applicant does not meet the neutrality requirement, if the regulations governing use are contrary to public policy or if the mark is liable to mislead the public as to its character or significance, in particular where it is likely to be taken to be something other than a guarantee mark. Under EU law, a certification mark may not certify the geographical origin of goods or services, which reserves that function to geographical indications. The collective mark follows separate rules, since it signals membership of a group and not compliance with supervised characteristics.

Exercise and loss of the right

The owner brings the infringement action against unauthorised use of the sign, and authorised users may in principle sue only with its consent. Beyond the ordinary grounds for revocation, the owner is liable to revocation if it ceases to meet the neutrality requirement, if it fails to take reasonable steps to prevent use incompatible with the regulations, if use of the mark has made it misleading, or if an amendment to the regulations has been entered in breach of the rules. Certification disputes are often coupled with claims for misleading commercial practices, where the sign is affixed to goods that do not meet the advertised characteristics.

Key points

The guarantee mark certifies characteristics of goods or services, for the benefit of any operator complying with published regulations governing use, under the supervision of an owner that must remain unconnected with the supply of those goods or services. The owner’s neutrality, the precision of the regulations and the effectiveness of the checks determine the validity and maintenance of the title. Verify these three points before filing and whenever the owner’s business changes.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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