Canadian Intellectual Property Office
THE REGISTRAR OF TRADEMARKS
Citation: 2026 TMOB 20
Date of Decision: 2026-01-30
Requesting Party: Registrar of Trademarks
Registered Owner: Canadian Automobile Association
The Proceeding
[1] This is a decision involving a summary expungement proceeding under section 45 of the with respect to registration No. TMA303024 for the certification mark CAA (the Mark), in the name of Canadian Automobile Association (the Owner).
[2] As part of the pilot project on Registrar-initiated section 45 expungement proceedings, the Registrar of Trademarks issued a notice (the Notice) to the Owner under section 45 of the Trademarks Act, RSC 1985, c T 13 (the Act) on January 20, 2025. The Notice required the Owner of the certification mark to show whether the Mark was used in Canada in association with each of the services below (the Registered Services) at any time within the three year period before the Notice’s date (Relevant Period):
(1) Hotel, motel and restaurant services.
(2) Emergency road and towing services; traffic advisory services; and providing advice relating to car purchasing and disposal, test results on automobiles and local and foreign highway regulations; driver education services; bail and arrest bond services; insurance services; provision of travelers’ cheques and currency exchange, and travel agency services.
(3) Automobile repair, diagnostic and maintenance services.
[3] The standards set out in the registration are as follows:
For services of type (1) above, the class of persons by whom the services are performed are establishments that have met all the basic requirements set by the certification mark owner regarding the exterior; the interior; maintenance; management and policies; food; menu; kitchen, restrooms and service. For services of type (2) above, the class of persons by whom the services has been performed, namely automobile club which are members in good standing of the Canadian Automobile Association. For services of type (3) above, the class of persons by whom the services are performed are those establishments which have contracted with the certification mark owner or one of its member clubs to provide automobile repair, diagnostic, maintenance and emergency road services in accordance with minimum standards set by the certification mark owner.
[4] In response to the Notice, the Owner furnished the affidavit of Ms. Ingrid Lafontaine, Manager of Finance and Corporate Affairs of the National Office of the Owner.
[5] The Owner submitted written representations on August 18, 2025 and was represented at a hearing.
[6] For the reasons that follow, the registration will be maintained.
Evidence
[7] In her affidavit, Ms. Lafontaine explains that the Owner is a Canadian not-for-profit automobile association formed in 1913. It serves over 7 million members, through eight CAA Member Clubs maintaining over 100 offices in Canada. For seven consecutive years between 2017 and 2023, the Registrant was named a top trusted brand in Canada, by the annual Gustavson Brand Trust Index [Lafontaine, Exh. 1].
[8] The Registered Services are delivered by CAA Member Clubs (which operate auto-clubs in various regions of Canada), or third-party licensees.
[9] The role of the Owner is purely to support the member clubs, including to manage the CAA portfolio of trademarks, and ensure that the certification standards are met by the member clubs and the third-party licensees [Lafontaine, paras. 8-11].
[10] Ms. Lafontaine confirms that all the Registered Services are extensively advertised to CAA members through various channels and are in fact provided to CAA members. While the Owner and CAA Member Clubs are not for profit, the total revenue paid to the various CAA Member Clubs to deliver the services is several billion dollars annually. This includes the membership fees paid by the over 7 million CAA members, as well as other fees charged for services [Lafontaine, para. 33].
[11] Ms. Lafontaine provides examples of how the Owner’s CAA Member Clubs and third-party licensees have used the Mark during the Relevant Period in association with the registered services. Provided as exhibits are screen captures of representative examples showing that the CAA Mark is clearly displayed in the advertising of the Registered Services [Lafontaine, Exh 1 – Sections B- U].
Reasons for decision
[12] The purpose and scope of section 45 of the Act is to provide a simple, summary, and expeditious procedure for removing “deadwood” from the register [Black & Decker Corp v Method Law Professional Corp, 2016 FC 1109 at para 12]. The evidence in a section 45 proceeding need not be perfect; a registered owner need only establish a prima facie case of use within the meaning of sections 4 and 45 of the Act.
[13] With respect to certification marks in particular, section 23 of the Act does not permit the owner of a certification mark to use the mark. Rather, it deems use of the mark by its licensees to be use by the owner. In Ontario Dental Assistants Association v Canadian Dental Association, 2013 FC 266 at para 21 aff’d 2013 FCA 279 (Ontario Dental), Manson J set outs that to be valid a certification mark must:
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not be used by the certification mark owner, but only by authorized licensees, in association with the performance of services, the production of wares or advertising the wares or services of those licensees, at the date of first use; and
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such use must be in accordance with section 4 of the Act.
[14] The definition of “use” in association with services is set out in section 4(2) of the Act:
A trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services.
[15] In this case, the evidence establishes that the Registered Services are provided by the eight non-profit member clubs, or by third party licensees. The Owner does not provide any services itself, but merely verifies that the services offered by its member clubs and licensees comply with the required standards. I am therefore satisfied that the requirements of a certification mark are met.
[16] With respect to use of the Mark pursuant to section 4(2) of the Act, Ms. Lafontaine clearly attests to use of the Mark in association with each of the Registered Services during the Relevant Period by the Owner’s member clubs. At paragraphs 12 to 32 of her affidavit, she carefully documents examples of use during the Relevant Period for each of the 14 different registered services and provides a supporting exhibit for each. For example, during the Relevant Period, the CAA Member Clubs advertised as a benefit to CAA members the availability of hotel and motel booking services, including the ability to book stays directly from the CAA Member Club website. Attached as Section B of Exhibit 1 to Ms. Lafontaine’s affidavit is a screen capture from the CAA North and East Ontario club website dated February 19, 2025, showing that the CAA Member Club offers hotel and motel booking services and discounts.
[17] The Mark clearly appears at the top left side of the page. As noted by the Owner, the Mark as a word mark can be used in any form (e.g. in word form or as part of a logo as can be seen in the example above). I am therefore satisfied that all of the examples provided show use of the Mark as registered.
[18] In view of the foregoing, I find that the Owner has met the prima facie burden on it to show use of the Mark as a certification mark in association with each of the Registered Services, during the Relevant Period, pursuant to sections 4(2), 23 and 45 of the Act.
Disposition
[19] Pursuant to the authority delegated to me under section 63(3) of the Act, and in compliance with the provisions of section 45 of the Act, the registration will be maintained.
Cindy R. Folz
Member
Trademarks Opposition Board
Canadian Intellectual Property Office
Appearances and Agents of Record
HEARING DATE: January 27, 2026
APPEARANCES
For the Registered Owner: Daniel Anthony
AGENTS OF RECORD
For the Registered Owner: Smart & Biggar LP