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

1. the character or quality of the goods or services,
2. the working conditions under which the goods are produced or the services performed,
3. the class of persons by whom the goods are produced or the services performed, or
4. 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:

1. the use of the certification mark in association with goods or services meet the defined standard; and
2. 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.

Another example of a well-known certification mark is the Woolmark design. The design, which you may have noticed on some of your wool clothes, is owned by Woolmark Americas Ltd., and it is for use on clothing and other goods to certify that the products are made with 100% pure new wool. Through Woolmark’s certification program, a variety of wool and wool care products become certified such that they can display 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:

1. the administrative authority of a country, state, province or municipality that includes or forms part of the area indicated by the certification mark; or
2. 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.

Is it Necessary to Register a Certification Mark?

A recent Trademark Opposition Board decision, SUGARWISE Inc. and Kellogg Company, 2022 TMOB 240, sheds some light on this question. This case involved an applicant, Kellogg Company, filing an application to register the trademark “SUGAR WISE.” The opponent, SUGARWISE Inc., opposing the mark on several grounds, including under s. 38(2)(f) of the Trademarks Act, wherein SUGARWISE Inc. argued that the applicant was not entitled to use the mark in Canada in association with the Goods in the application based on the opponent’s earlier rights to SUGAR WISE.

The above ground of opposition, based on s. 38(2)(f), was ultimately rejected because it was determined that an unregistered certification mark cannot form the basis for this ground of opposition. The tribunal determined that an unregistered certification mark cannot support a right of action, for example, to prevent its use by unlicensed persons. Therefore, if you plan on enforcing the rights to your certification mark, for example by way of using it to support a right of action, it is prudent to register your certification mark.

Conclusion

If you would like assistance with registering for a certification mark or have further questions as a licensee of a certification mark, contact us today for a complimentary and confidential initial telephone appointment with a member of our team.