Professional designations may be registered as certification marks

In Ontario Dental Assistants Association v Canadian Dental Association (2013 FC 266), the Federal Court of Canada has confirmed that, in the right circumstances, the name of a professional designation, or an acronym representing such a designation, could be the subject of a valid certification mark in Canada. The decision clarifies previous case law which had been relied upon to suggest that a professional designation can never serve as a valid certification mark. 

In Canada, certification marks are used “for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard”. This is in contrast to trademarks, which are used to distinguish the source of wares or services. The certification mark standards can range from compliance to a detailed and technical standard to a product simply being manufactured in a particular geographic area or by a particular group. The owner of the mark sets the relevant standard, but is not allowed to use the mark on wares or services for which it is registered. Rather, the owner is free to license the use of the mark to others, subject to the licensee complying with the defined standard.

Ontario Dental Assistants Association v Canadian Dental Association arose in the context of an appeal from a decision of the Canadian Trademark Opposition Board denying an application by the Ontario Dental Assistants Association (ODAA) to register the acronym 'CDA' as a certification mark. The proposed certification mark had been alleged to have been in use in Canada since at least as early as 1965. The defined standard for the certification mark was broadly based on people being members in good standing of the ODAA and having achieved a pass grade on certification examinations approved by the ODAA for dental assistants. The application was opposed by the Canadian Dental Association on numerous grounds, including that a professional designation cannot function as a certification mark. The Opposition Board held that a professional designation can never act as a certification mark. On appeal, the Federal Court disagreed with that conclusion.

The court reviewed the definition of 'certification mark' set out in the Trademarks Act, as well as previous case law. Specifically, the court reviewed a decision of the Federal Court from 1988 in Life Underwriters Assn of Canada v Provincial Assn of Quebec Life Underwriters, which has been followed numerous times by the Opposition Board. Underwriters was relied upon by the Canadian Dental Association to support the proposition that a professional designation can never serve to be a valid certification mark. 

In Underwriters, the court found that the name of a profession itself cannot be used as a standard, a definitive norm, a distinguishing mark that can be placed on wares or services. Part of the rationale was that to allow such registrations would usurp the powers conferred on the various provinces in Canada to regulate professions. The court in Underwriters was also considered with the practical reality that the registrar of trademarks would not be in a position to know who is entitled to their professional title or who was forbidden to do so, for example, by reason of expulsion from a provincial professional association or relinquishment of professional status. 

In the present case, the court reviewed Underwriters, as well as the definition of 'certification mark' in the Trademarks Act and reached a different conclusion. Specifically, the court noted that, in Canada, a certification mark means a mark that is used for the purposes of distinguishing or as to distinguish wares or services that are of a defined standard with respect to, among other things, the class of person by whom the services are performed. The court took a position that this definition must be viewed in the context of the act as a whole.  Specifically, in order to be a valid certification mark, any certification mark must:

1. not clearly describe, or deceptively misdescribe, the wares or services in association with which it is used;
2. be able to distinguish the wares and services of a defined standard from the wares and services of others -  that is to actually be distinctive;
3. not be used by the certification mark owner, but only by its authorised licensee(s);
4. not be confused with any registered, or previously applied for, trademark; and
5. be used in accordance Section 4 of the act, which governs the requirements for use in association with wares and service in Canada.

The court found that, in the right circumstances, the act does allow for the registration of a professional designation name or acronym, provided that the name or acronym meets the criteria of the relevant provisions of the act. The court specifically rejected Underwriters to the extent that it stood for the position that a professional designation can never serve to be a valid certification mark.

Despite the finding that a professional designation can act as a basis for a valid certification mark, the ODAA was still unsuccessful in securing the registration for CDA, because the court found the proposed certification mark was not distinctive given the use by the Canadian Dental Association of the trademark CDA in the dental field. 

Given the longstanding practice to not permit registrations of professional designations as certification marks, it is unlikely that many traditional profession designations will be in a position to establish distinctiveness in Canada of a designation to qualify as a certification mark. However, it may be that, as new professional designations are brought into use, they will be able to take advantage of this decision and register professional designations as certification marks.

Antonio Turco, Blake Cassels & Graydon LLP, Toronto