In a decision rendered earlier this year, Ontario Dental Assistants Association v. Canadian Dental Association, the Federal Court of Canada held that a professional designation could function as a certification mark, although not in the case at hand.
The case was an appeal from a decision of the Trademarks Opposition Board (TMOB) allowing the Canadian Dental Association’s opposition to the registration of the certification mark “CDA”. The Ontario Dental Assistants Association (ODAA) had applied to register the certification mark “CDA” in association with dental assisting services, and more particularly to denote a dental assistant that possessed specific qualifications as approved by the ODAA. The ODAA alleged use in Canada since at least as early as 1965.
The TMOB denied the registration of “CDA” as a certification mark on the basis that a professional designation could not function as a certification mark and consequently the acronym “CDA” could not be said to have been used as a certification mark from the time claimed by ODAA in its application. The TMOB also held that the certification mark “CDA” was not distinctive enough to be registered, given its use by the Canadian Dental Association as an acronym to refer to itself.
On appeal, the Federal Court focused on paragraph (c) of the definition of “certification mark” in section 2 of the Trade-Marks Act: “means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to… (c) the class of persons by whom the wares have been produced or the services are performed… from wares or services that are not of that defined standard.”
The Court held that the definition must be viewed in the context of the Act as a whole and listed the criteria a certification mark must meet, namely: not be clearly descriptive or deceptively misdescriptive of the wares or services; be distinctive; not be used by the owner, but only by authorized licensees; not be confusing with a registered or previously applied for trademark or trade name; and be used in accordance with section 4 of the Act which includes, with respect to services, use or display in the advertising of the services. The Court disagreed with a 1988 Opposition Board decision, Life Underwriters Association of Canada v. Provincial Association of Quebec Life Underwriters, which suggested that a professional designation could never serve as a valid certification mark, and found that there is nothing in the Act to preclude a valid certification mark from being registered for a professional designation, so long as the mark satisfies the listed criteria.
Despite this finding, the Court dismissed the ODAA’s appeal on the grounds that the ODAA had not established use of the acronym “CDA” as a certification mark since as early as 1965. Documents issued by the ODAA to dental assistants did not constitute use by licensees or certified users and name tags evidenced use by dental assistants to show their membership in the association, but not to distinguish the services performed. Moreover, the mark was not distinctive given its use by the Canadian Dental Association.
Thus, while the ODAA was not successful, it is now clear that a professional designation could constitute a certification mark, if the criteria are met.
