Stamped with excellence: The power of certification marks

A group of hands holding thumbs up around a star medallion.

 

Have you ever noticed an "Energy Star" symbol on your washing machine or refrigerator? Or, perhaps you've purchased produce marked with an 'organic' stamp? These symbols help consumers identify products that meet certain standards. They can confer a degree of reliability and endorse a product by denoting a certain level of safety or energy efficiency, for example. If you have ever wondered what those exact standards are and who decides which products qualify, this blog post explores important questions about certification marks.

What is a certification mark?

A certification mark is a type of trademark that can be licensed to individuals or companies for the purpose of showing that certain goods or services meet a defined standard. A certification mark serves a different purpose than an ordinary trademark. A trademark is a sign or combination of signs used or proposed to be used by a person to distinguish their goods or services from those of others.

Conversely, a certification mark distinguishes goods or services which adhere to a specified standard from those that do not meet that standard. Take, for instance, the Woolmark design owned by Woolmark Americas, Ltd. Companies who license this mark are promoting the quality wool used in their clothing and other goods, and denoting that they meet a certain standard of quality.

Woolmark Americas design
SWIRL DESIGN — 0310359 (Woolmark Americas, Ltd.)

Certification marks are extremely important to consider for inventors. If your field is regulated, it is a good idea to research how your invention will comply with recognized standards for legal or competitive reasons. It can be a powerful tool to stand out in the marketplace, adding credibility and value to the reputation of your product.

Examples of certification marks:

  • "Made with natural, renewable and biodegradable wool" (identifies character or quality of the goods or services)
  • "Fair trade" (speaks to the conditions under which the goods have been produced)
  • "Produced in the Chianti Classico region of Italy" (the area within which the goods are produced or services are performed)
  • "Professional Engineers Ontario" (certifies that the services have been performed by professional engineers licensed by the province of Ontario - the accreditation of persons by whom the goods have been produced or services provided)

In the last example, Professional Engineers Ontario is the owner of the certification mark and is responsible for the quality of services performed. The professional engineer who performs the services is not the owner of the certification mark but is authorized by the owner to use the mark in association with any services rendered.

Who owns the certification mark?

The owner of a certification mark is the person who has established the defined standard.

The Trademarks Act states that a certification mark may only be adopted and registered by one who is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services, specifically if these activities are in association with what is proposed by the certification mark. A statement to this effect is required in the application to obtain a certification mark. So, the person or company recognized as establishing the standard cannot also participate in commercial activities as licensees do.

Overall, it is the owner's responsibility to monitor the use of their certification mark. This means ensuring that those using the mark have been authorized to do so under a licensing agreement and adhere to the relevant requirements, before using the mark.

What details are important for the application process?

When reviewing your trademark application, a trademark examiner will review:

  • a statement from the owner indicating that they will not be engaged in the manufacture, sale, leasing or hiring of goods or the performance of services, such as those in association with which the certification mark is used or proposed to be used
  • particulars of the defined standard, which may include details related to:
    • character or quality of the goods or services
    • conditions under which the goods have been produced
    • the area within which the goods are produced or services are performed
    • accreditation of persons by whom the goods have been produced or services are produced or provided

The particulars should be meaningful and specific to allow a member of the public to understand the nature of the defined standard. If this description is lengthy, the applicant can include a brief summary or refer to another application for details. These files should be readily available to the public for review.

The same registration requirements as an application for an ordinary trademark apply. You cannot register trademarks that are:

  • names or surnames
  • clearly descriptive (i.e. adjectives)
  • misdescriptive (i.e. intentionally misleads consumers about the services or goods offered)
  • geographical places of origin
  • similar to a registered or a pending trademark
  • identical or similar to prohibited marks
  • borrowing words from other languages (e.g. using "lit", the French word for "bed" in association with mattresses)

However, contrary to an ordinary trademark, a certification mark can describe the place of origin of the goods or services, if the applicant is the administrative authority of the country, state, province or municipality of the area indicated by the mark or is a commercial association that has an office or representative in that area.

How can a certification mark application be filed?

A registered mark is entered in the Canadian Register of Trademarks. The owner is responsible for renewing the mark every 10 years to ensure it can be used by licensees.

The application process for certification marks uses the same form as trademarks, as outlined in the IP roadmap - Your path to trademark registration.

For a more detailed discussion of certification marks from the perspective of standards, check out the Maximizing the value from IP rights and standards (PDF Version, 2 page, 4.1 MB) factsheet.

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