Standardization Marks

What do the words Alice, Cinderella, Donald Duck, Dopey, Dumbo, Mickey Mouse, Minnie Mouse, Pluto, Seven Dwarfs and Snow White have in common, besides the fact that they are Disney characters?  Those words are all standardization marks originally protected pursuant to the Unfair Competition Act (1932) 22-23 George V c. 38; RSC 1952 c. 274.  They all remain on the current Canadian trademark register—in the standardization mark category—which may be unfamiliar to some practitioners.

You can’t investigate standardization marks via CIPO’s online trademark database because the standardization mark category is not exposed for public search purposes via the database.  For search purposes, CIPO puts standardization marks in the “trademark” category along with certification marks, distinguishing guises, etc. as explained in the Select category of trademark section of the online database’s Help file.  In order to investigate standardization marks one must work with CIPO’s trademark .xml data.

Standardization marks, which first appeared in the Unfair Competition Act, were reconstituted as certification marks when the Trade Marks Act (1953) 1-2 Eliz II, c. 49 replaced the Unfair Competition Act effective 1 July 1954.  The Unfair Competition Act did not define “standardization mark” or otherwise use that term.  The term’s only appearance is in the legislative draftsman’s marginal note “Additional information in application for standardization mark” adjacent section 30(3) of the Unfair Competition Act, which provided:

30(3)  If the mark is intended to indicate that the wares in association with which it is used are of a defined standard, or have been produced under defined working conditions, by a defined class of persons or in a defined area, the mark shall so indicate and shall contain

    (a) a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of wares similar to any wares in association with which the mark is used; and

    (b) an exact definition of what the use of the mark in association with wares is intended to indicate in respect of the standard which such wares have attained, or of the working conditions under which or the class of persons by whom they have been produced or of the area in which they have originated.

CIPO’s online trademark database displays “Standardization mark text” reflecting the defined standard for each standardization mark.  That text is usually somewhat generic, e.g. for the aforementioned Disney standardization marks: “That the wares shall be high standard and of such style, appearance and quality as shall be reasonably adequate and suited to the sale, exploitation and/or distribution of such wares to the best advantage; (For complete list of standards see file)”.

However more specific text can be found in a few cases, e.g. UCA22588 "HARRIS" covering “tweed” provides this standardization mark text: “Wares ordinarily and commercially described by the applicant as Tweed for the purpose of indicating only the origin and method of manufacture of a Tweed made from pure virgin wool produced in Scotland, spun, dyed and finished in the outer Hebrides and hand woven by the Islanders at their own homes in the Islands of Lewis, Harris, Uist, Barra at their several purtenances, and all known as the Outer Hebrides.”

The current statute (Trademarks Act, R.S.C., 1985, c. T-13) grandfathered preexisting standardization marks by carrying the register established pursuant to the Unfair Competition Act over onto the current trademarks register¹.

As highlighted in the 2 online database extracts below, CIPO continues to maintain the standardization mark category, although it cannot be directly accessed via the online database (click to enlarge the image).

As of 7 June 2021 there are 80 standardization marks in CIPO’s online trademark database and .xml data.  Just 29 of those 80 marks remain active; the other 51 have been expunged.  All but 2 of the 29 active standardization marks—including all of the aforementioned Disney character marks—are word marks, the other 2 being designs as shown above.

Ownership of the 29 active standardization marks breaks down as follows:

Owner	# Standardization Marks
Disney Enterprises, Inc. (Burbank, California)	13
IGA Canada Limited (Stellarton, Nova Scotia)	8
Canadian Standards Association (Toronto, Ontario)	2
Sealy Canada Ltd./Ltee. (Scarborough, Ontario)	2
Harris Tweed Authority (Scotland, UK)	1
Canadian Gas Association (Don Mills, Ontario)	1
Cargill Limited (Winnipeg, Manitoba)	1
GTB Holding, LLC (New York, New York)	1

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1 See Trademarks Act, R.S.C., 1985, c. T-13, section 27(1)^↩