Certification Marks

A certification mark is a trademark which is used to distinguish goods or services which comply with a defined standard, in contrast to a regular trademark which is used to distinguish goods or services of the owner from goods or services of others.

Use of the certification mark is intended to assist in selling the goods or services sold or performed in association with it by taking advantage of the reputation associated with the certification mark. For example, when the U.S. Environmental Protection Agency’s (EPA) ENERGY STAR & Design certification mark below appears on a product it means the EPA certifies that the product has met certain energy efficiency standards.

The Trademarks Act provides that the term certification mark means 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 with respect to

1. the character or quality of the goods or services;

2. the working conditions under which the goods have been produced or the services performed;

3. the class of persons by whom the goods have been produced or the services performed; or

4. the area within which the goods have been produced or the services performed.

The certification mark must distinguish the goods or services it is used with from goods or services that are not of the defined standard. A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of goods or performance of services such as those in association with which the certification mark is used or proposed to be used.

The owner of the certification mark may license 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 or is a commercial association that has an office or representative in that area. 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 the same basis as an ordinary application.

John S. McKeown

Goldman Sloan Nash & Haber LLP

John S. McKeown
tel: (416) 597-3371
email:mckeown@gsnh.com

 

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