Certification Marks in Canada
What Is A Certification Mark?
A certification mark is defined in section 2 of the Trademarks Act (“Act”) to mean: a sign or combination of signs that is used or proposed to be used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard from those that are not of that defined standard, with respect to
- the character or quality of the goods or services,
- the working conditions under which the goods are produced or the services performed,
- the class of persons by whom the goods are produced or the services performed, or
- the area within which the goods are produced or the services performed
How Is A Certification Mark Distinct From An Ordinary Trademark?
Certification marks and ordinary trademarks have a different purpose. An ordinary trademark is used to distinguish the goods and/or services of the owner of the mark from that of another party. In contrast, a certification mark distinguishes the goods and/or services of a defined standard from those goods and/or services that do not meet that standard.
According to paragraph 30(2)(b) of the Act, the standard associated with the certification mark must be defined by the owner. Specifically, the particulars of the defined standard need to be set out in a meaningful way in a certification mark application. Meaningful means that members of the public must be able to determine the “precise nature” of the defined standard by looking at the particulars. Where the particulars of a standard are lengthy, the applicant must make a copy available to the public and include a summary of the relevant portions of the standard in their application.
Who May Own A Certification Mark?
Under section 23(1) of the Act, the owner of a certification mark, that is, the person who adopts and registers the certification mark, cannot manufacture, sell, lease or hire goods; or perform services such as those in association with which the certification mark is used or proposed to be used. However, section 23(2) of the Act provides that the owner may license the certification mark to others if:
- the use of the certification mark in association with goods or services meet the defined standard; and
- the use of the certification mark accordingly is deemed to be use by the owner
The latter criteria ensures that the licensee’s use of the certification mark is attributable to the owner such that the mark cannot be attacked for non-use. Despite section 23(1) of the Act, according to the Trademarks Examination Manual, an owner may still engage in activities, for example, the sale of goods or performance of services that are not covered by the certification mark.
IntPE is one example of a certification mark owned by Engineers Canada. An individual engineer who is a member of an International Professional Engineering Agreement (IPEA) member economy and meets the particulars of the defined standard, for example, who has been assessed in his/her own jurisdiction as a professional engineer eligible for independent practice, may use the certification mark in association with providing professional engineering services. Accordingly, while an individual engineer is not the owner of the certification mark, IntPE, they may use the mark in association with providing professional engineering services if they meet the above standards set out by the owner of the certification mark.
What Are The Requirements In Order To Register For A Certification Mark?
Similar to applying for an ordinary trademark, in order to register for a certification mark, an applicant must satisfy section 12 of the Act. Distinct from an ordinary trademark, a certification mark can be registered even if it is descriptive of the place of origin of goods or services, as long as it is not confusing with any registered trademark, provided that the applicant is:
- the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark; or
- a commercial association that has an office or representative in that area.
Section 24 of the Act provides that a licensee can register and use a trademark that is confusingly with owner’s certification mark if there is (i) consent of the owner and (ii) and the trademark exhibits an “appropriate difference” from the certification mark. While appropriate difference is not defined in the Act, suffice to say, the licensee’s trademark must not be identical to the certification mark. However, one caveat is that the registration of the licensee’s trademark can be expunged by the Registrar if the owner withdraws consent or the registration of the certification mark is cancelled.