Trademark Protection – Certification Marks

Below is an excerpt from John McKeown’s May 2018 Monthly IP Blog.

Certification Marks

A certification mark is a specialized type of trademark used to distinguish goods or services which comply with a defined standard, in contrast to a trademark used to distinguish goods or services of the owner from goods or services of others. Use of the certification mark should assist in selling the goods or services sold or performed in association with it by taking advantage of the reputation acquired by the certification mark. A well-known example, the WI-FI design mark, owned by Wi-Fi Alliance,

is used to indicate that the specific goods in association with which it is used are inter-operable.

The Trademarks Act provides that the defined standard must relate to:

(a) the character or quality of the goods or services;

(b) the working conditions under which the goods have been produced or the services performed;

(c) the class of persons by whom the goods have been produced or the services performed; or

(d) the area within which the goods have been produced or the services performed.

A certification mark may be adopted and registered only by a person not engaged in the manufacture, sale, leasing or hiring of goods or performance of services similar to those that the certification mark is used in association with. The owner of the certification mark licenses others to use the mark in association with goods or services that meet the defined standard. Such licensed use is deemed to be use by the owner.

The owner of a registered certification mark may prevent its use by unlicensed persons or by licensed persons who use the mark in association with goods or services in respect to which the mark is registered but to which their licence does not extend.

A geographical certification mark descriptive of the place of origin of goods or services, may be registered by an administrative authority or commercial association for a country, state, province or municipality including or forming part of the area indicated by the mark. However, the owner of such a mark must permit the use of the mark in association with any goods or services produced or performed in the area of which the mark is descriptive.

An application for registration of a certification mark must satisfy essentially the same registrability requirements as a regular trademark and is subject to opposition on a similar basis as an ordinary application.

Under the amended Act the definition of a “certification mark” has been updated and it will be possible to apply for a certification mark before it is in use since the definition now refers to such a mark as being “proposed to be used”.