In Commissioner’s Decision [2015] NZIPOTM 1 UL LLC was denied registration of its certification mark (819001) which contains as a prominent element essentially the same mark that UL has registered in relation to the same or similar services (181136).
Section 14(b) of the Trade Marks Act 2002 prohibits the owner of a certification trade mark from trading in goods or services of the kind certified. IPONZ argued that registration 181136 is evidence that UL trades in the same kind of services. IPONZ stated that it could only register the certification mark in UL’s name if UL first cancelled registration 181136.
The Commissioner considered that the determination of whether the same kind of services are being covered boiled down to whether ‘testing and inspection services’ are of the same kind as ‘quality control services’.
In making that determination, the Commissioner considered that the public interest provision in section 14(b) that certifying authorities are independent meant that the phrase “services of the kind certified” therein should be given a wide interpretation. Consequently, the impression of independence requires that any distinctions between the services certified and the services provided by the certifier should be clear and not rely on subtle differences. The Commissioner held that, subtle differences aside, ‘testing and inspection services’ are sufficiently similar to ‘quality control services’ to be of the same kind.
The next issue was whether UL carries on a trade in “testing and inspection” services. Here the Commissioner relied on the publically notified intention to use that registration 181136 was filed on the basis of. Given the 20+ years between that application and application 819001 it was held to be fair for consumers to assume that by now UL is in fact using the mark for its “testing and inspection” services. UL had provided IPONZ with a statutory declaration specifying that it does not trade in the services covered by the certification mark and are content to have a memorandum to that effect entered against its 181136 registration. However, the Commissioner held that the respective services were nonetheless too similar and that the declaration would not override the public perception that there is a lack of independence and impartiality, since the certifier would be using a very similar trade mark on services of the kind certified.
