Canada: More Than A Rubber Stamp: Certification Marks In Canada

Section 2 of the Canadian Trade-marks Act ("Act") defines a certification mark as a trade-mark that is used for the purpose of identifying wares or services that are of a defined standard with respect to:

1. the character or quality of the wares or services;
2. the conditions under which the wares have been produced or the services performed;
3. the class of persons by whom the wares have been produced or the services performed; or
4. the area within which the wares have been produced or the services performed.

So-called certification marks are not unique to Canada. Indeed, many countries recognize certification marks as registrable marks that may be used to identify wares and services that are of certain defined standard, rather than of a certain source. However, Canadian trade-mark law contains a number of important peculiarities regarding certification marks of which applicants and registrants alike should be aware.

The certification mark owner cannot "use" the mark themselves

First, the Act dictates that a certification mark may be adopted and registered only by a person who does not manufacture, sell, lease or hire the wares or perform the services in association with which the mark is used. However, the owner of a certification mark may license others to use the mark in association with wares or services that meet the defined standard, and such use of the mark shall be deemed to be use thereof by the owner.

Furthermore, the law recognizes that the owner of a certification mark may be engaged in activities other than certification, such as the manufacture of wares or the performance of services other than those covered by the certification mark. While the owner may register the same mark as an ordinary trade-mark for wares and as a certification mark for services to be performed by others in respect of those wares (or vice versa), it cannot use the same trade-mark to indicate both the defined standard of wares or services and the source of those same wares or services.

The defined standard must be particularized in a "meaningful" way

Second, the Act requires an application for the registration of a certification mark to contain particulars of the defined standard that the use of the mark is intended to indicate. According to a practice notice published by the Canadian Trade-marks Office in July 1998, the Office will not accept an application for the registration of a certification mark unless the application sets out "meaningful" particulars that allow a member of the public to ascertain the precise nature of the defined standard that the use of the mark is intended to indicate. Furthermore, if the defined standard is very lengthy or certain details of the standard may change from time to time, then an applicant may summarize the standard in the trade-mark application and refer therein to another document for further details of the standard, so long as all relevant portions of that other document are easily accessible by the public.

An acceptable defined standard may include details of the qualifications required from the persons producing the wares or performing the services, or the norms of quality or performance or production of the wares and services.

For example, the Trade-marks Office has deemed the following defined standard acceptable:

The certification mark must be "used" before its owner files an application therefor

Third, the Act currently precludes an applicant from applying to register a certification mark on the basis of proposed use in Canada. While the Canadian government has proposed legislation to eliminate this requirement so that applicants for the registration of a certification mark may apply on an "intent to use" or "proposed use" basis, for the time being, a certification mark must be used, either in Canada or abroad, before an application to register that certification mark is accepted by the Trade-marks Office. If the application is based on use in Canada, then the certification mark must be used in Canada by licensees of the applicant. If the application is based on use abroad, then the foreign applicant must file with its application a certified copy of the foreign registration. Interestingly, the corresponding registration need not cover a certification mark. That is to say, the foreign applicant may have used the trade-mark abroad as an ordinary mark even though it now wishes to register it as a certification mark in Canada. Conversely, a trade-mark registered and used as a certification mark abroad may be offered for registration as an ordinary trade-mark in Canada.

Some things cannot be certification marks

Fourth, both the Act and the Canadian common law delineate what can and cannot be registered as a certification mark. A distinguishing guise, like the shape and dark amber colour of a beer bottle, cannot be registered as a certification mark, as the applicant in Registrar of Trade Marks v Brewers Association of Canada (1982), 62 CPR (2d) 145 learned when the Federal Court of Appeal held that the statutory definitions of "trade-mark" and "certification mark," read together, preclude the registration of a distinguishing guise as a certification mark. And while the Federal Court in Ontario Dental Assistants Assn v Canadian Dental Assn (2013), 213 FC 266 recently ruled that there is nothing in the Act that precludes a professional designation or acronym from being registered as a certification mark if that mark meets the relevant criteria set out in the Act, words that are the name of, or commonly used in a profession, such as "lawyer" or "notary," cannot distinguish a certain organization or be used as certification marks.

Conclusion

In summary, Canadian certification marks are peculiar in a number of ways. The Act precludes a certification mark owner from "using" the mark themselves, but permits the owner to license other persons to use the mark on their behalf. Those other persons that are licensed to use the mark must do so before the owner files an application for the mark with the Trade-marks Office, and such application must set out, in a "meaningful" way, the particulars of the defined standard indicated by the mark. While some things, such as a distinguishing guise or the name of an occupation or profession, cannot be registered as a certification mark, a professional designation or acronym may be used and registered as a certification mark provided that certain conditions are met.

Because certification marks allow traders to identify wares or services that are of a certain character or quality, or have been produced or performed under certain conditions, by a certain class of persons or within a certain area, they are useful for traders who have a commercial interest in producing consistent, quality goods, or performing dependable and repeatable services. Indeed, certification marks are an efficient way to distinguish the superior craftsmanship or quality of traders' wares and services from those of competitors, and are often applied for by industry associations and trade groups, who then license the mark to their members, for this very purpose.

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