The Strauss Blog

Protect Who You Are!

Professional associations spend a lot of time strategizing about who they are, where they are going in the future, and creating mission and vision statements for the profession that defines the members that they serve.

As a professional association; are you doing all that you can do to protect who your members are and what they do?

Professional associations must always be aware of the external pressures that are placed upon them from other groups that are similar but different to their members. Protecting your members from these pressures is paramount to protecting the public and your membership as a whole.

In respect to protection from external pressures, what you do and how you do it needs to be a part of the board’s strategy and agenda regularly. It is part of what you do as board members to determine what the organization and the profession will look like in the future.

Many professional associations use a certification mark (similar to a trade-mark) to identify services that define a standard (character, quality and the class of the person performing a service) by which a person works. The association establishes the defined standard indicated by the mark and would register the mark with the Canadian Intellectual Property Office (www.cipo.ic.gc.ca).

The association then determines who is allowed to use the mark and prevents people from using it if they do not meet the standard(s) set out by the association. This is a very important step in protecting your association and its members.

As an example, I had a client that needed to go to federal court to protect a designation that defines who they are as professionals. Our client owns a certification mark federally and allows members to utilize it if they meet the criteria and standard for membership.

A competing organization claimed to do exactly what our client does and what its members do and used a certification mark that was confusingly similar to our client’s. Their claim was that the people were equally trained as members of our client’s association and that their organization was the voice for the profession in one of the provinces. Even the name of the organization was confusingly similar to our client’s, which created lots of confusion in the marketplace.

Our client took the matter to federal court to protect their certification mark and to prevent the organization from using the confusingly similar certification. The court sided with our client and found that the use of a confusingly similar mark infringed our client’s exclusive right to use their certification mark.

The court ruled that the organization directed public attention to their services and business in such a way as to cause confusion between their organization and our client’s organization. In short, the court ordered them to stop what they were doing.

Not every association will require the certification mark or trade-mark registration, but board members should always be aware of the tools available that help protect who you are and what you do. Your board may want to consult the services of a intellectual property lawyer to confirm what you may need. If you don’t protect it, then you can lose the value it brings to the public and your profession as a whole.