Tobacco Free Portfolios Limited - Certification Trade Mark application

Overview

The Australian Competition and Consumer Commission (ACCC) has issued an initial assessment of a certification trade mark (CTM) application lodged by Tobacco Free Portfolios Limited (CTM 1845132). There are three variations of the mark, illustrated below.

The ACCC’s initial assessment is that it proposes to approve the CTM application. A copy of the ACCC’s initial assessment statement of reasons is attached below.

A CTM is a sign used, or intended to be used to distinguish specific goods or services from other goods or services.

This CTM certifies that an organisation or specific financial products are free from direct or indirect investment in any company that is involved in the manufacture and/or production of tobacco products or that an organisation has demonstrated a clear and unequivocal commitment to divesting such investments within 24 months from the date of making a written commitment.

Organisations responsible for the investment and management of funds, such as superannuation funds, can apply to use the Tobacco-Free CTM, subject to initial and on-going audit, to publicly declare their tobacco-free position so fund members and consumers can be assured that money is not being invested in companies manufacturing tobacco products.

Tobacco Free Portfolios Limited application

Tobacco Free Portfolios Limited applied to IP Australia for the CTM. ACCC approval is needed before the CTM can be registered by IP Australia.

With its application, Tobacco Free Portfolios Limited provided a copy of its proposed CTM Rules, which set out the process it will use to assess an organisation’s eligibility to use the CTM. The Rules also set out how the CTM can be used as well as dispute resolution processes.

Tobacco Free Portfolios Limited made several changes to the Rules after lodging its application. The amended Rules are attached below.

ACCC Role

Under Part 16 of the Trade Marks Act 1995 (TMA), before a CTM can be registered by IP Australia the ACCC must be satisfied that certain criteria are met. In general terms, the ACCC must be satisfied that the CTM application and corresponding rules meet the technical requirements set by the TMA and do not raise consumer protection, competition or associated concerns. More information is available in Part 16 of the TMA.

Next steps

The ACCC’s initial assessment will be published by the Registrar of Trade Marks in the Official Journal of Trade Marks. As provided for under the Trade Marks Regulations 1995, interested parties may:

1. make a submission in response to the initial assessment, and/or
2. request that the ACCC hold a conference in relation to the initial assessment.

Once the period to make submissions has ended, the ACCC will consider all submissions before making its final assessment on the CTM.

Making a submission

Submissions should be emailed to CTMs@accc.gov.au with the subject “CTM 1845132 – Tobacco Free Portfolios Limited - Submission”. Submissions are due one month after the initial assessment is published in the Official Journal of Trade Marks (publication in the Journal is likely in early January 2019).

Confidentiality

All submissions will be treated as public documents and published on the ACCC website unless otherwise requested. Submissions requesting exclusion from being published should be clearly marked and include reasons for the exclusion.