Certification Marks and Licensing

Author: Marsha Simone Cadogan

Certification marks are trademarks that indicate that specific standards are used in the manufacturing of a product or the performance of a service. Through standard setting, these marks are intended to enhance product or service distinctiveness in Canada. This note provides general information on how certification marks are protected in Canada and the role of licensing in certification marks.

Certification mark’s use:

If the owner of the mark will be involved in producing, selling, leasing, or hiring the product, or in performing the business’s services, then a certification mark is not an option. [1] Another consideration is whether aspects of the business align with the activities for which a certification mark can be used.

Certification marks may be suitable when:

• A product is made or a service is performed under specific working conditions. The mark may therefore be associated with the working conditions under which the product is manufactured or the service is performed.

• A certain class of persons perform the service or make the product (for example, the Igloo tag issued by the Inuit Art Foundation certifies that an Inuit Artist makes an artform) or;

• The product is made, or the service is performed within a specified area (for example, Ontario Craft Brewers’ certification mark indicates that the sign applies to specific breweries in Ontario).

A few examples of certification marks include: the UL certification mark; Wi-Fi Alliance sign (for Wi-Fi technology); the Woolsafe mark, which conveys to consumers that specific chemical preparations are used in cleaning and maintaining carpets; and the CAN-Best sign, which indicates that defined standards are used in producing specified building and safety products.

The role of licensing

Licensing is central to certification trademark’s business model. The licensor develops the standards that specific products or services use in relation to the mark. Licensees do not own certification marks. They pay a fee under a legal agreement to use the mark, provided they conform to the licensor’s specified standards. Their use of the mark is deemed to be that of the licensor.[2] The licensee is tasked with the other dimensions of bringing the product or service to market. These activities may include product manufacturing, distribution, sales, or performance of a service. While licensors are not involved in product commercialization or service performance, they are usually responsible for monitoring the use of the certification mark.  

Product labels, Advertising and certification marks: Licensee’s use of mark

Trademarks help distinguish goods and services from others, build brands, and provide legal safeguards for owners. Product labels and advertising help to promote and distinguish goods from others. Licensees can use certification marks along with their own marks on specified product labels and in advertising. Both marks serve similar and different purposes. A certification mark affixed to a label indicates that the product complies with specific standards set by the certification body. It also provides source information about the standard-setting provider. The licensee’s trademark identifies its source or origin and distinguishes it from other goods.

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Read more: Certification Marks and Licensing

Licensing plays a central role in the use of certification marks. Although the trademark owner is not involved in the production of the product, its sale or performance of the service, there is still a responsibility to control the mark.

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[1] Trademarks Act, RSC 1985, c T-13 s.23(1).

[2] Ibid, s 50(1).

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This article is for general information purposes only and is not meant to be legal advise.