Until our Trademark Act changes (early 2019?), Canada is still not officially using a classification system to define goods and services in trademark applications. The good and services must simply be defined in "ordinary commercial terms." When the Law will change, that requirement will remain, but we will have the additional pleasure to discuss the choice of a class with Canadian examiners.
The Law
Paragraph 30(a) of the Trade-marks Act states that an application for a trademark must contain "a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used".
Ordinary commercial terms
There is nothing ordinary about this task which can lead to multiple examination reports. We do have a Manual offering a listing of acceptable goods and services considered to be ordinary commercial terms. It is neither extensive or exhaustive.
A statement of goods or services is in ordinary commercial terms when the goods and services are set out as they are customarily referred to in the trade. They must be drafted in a language commonly used by others in the same industry to describe the same goods or services.
However, simply because a statement of goods or services can be understood does not mean that it is a description that is customarily used in the trade. Examiners will conduct their own research.
Ordinary and specific
Goods or services in ordinary commercial terms must also be "specific". The most commonly used example to illustrate this is the word "clothing". While it is an ordinary commercial term, it is not specific, whereas "exercise clothing" will be accepted as specific enough.
The test
The following three-part test is used by the Examiner in determining whether the statement is "specific" within the meaning of the Law:
- Are the goods or services sufficiently specific so that it is possible to assess the descriptiveness of the mark ( 12(1)(b) of the Act). A mark that clearly describes a character or quality of the goods or services is not registrable.
- Are the goods or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, goods described as "computer software", without further specification, would give the applicant an unreasonably wide scope of protection. The functionality and area of use will be requested.
- Are the goods or services sufficiently specific so that it is possible to assess confusion with pending and registered marks? The similarity between the goods and services is one of the criteria looked at.
Unacceptable words
The following expressions would require further specification: "and the like", "and similar goods", "including", "related to", "related services", "etc." and "featuring" unless they follow specific goods or services.
Prefer: "namely", "consisting of" or "specifically".
Terms like "accessories", "equipment", "apparatus", "systems", “instruments”, or "products" are not acceptable without further specification. They are considered to include different types of goods.
Here are other common but unacceptable goods and services:
- Computer software
- Telecommunication services
- Pharmaceutical preparation
- Pre recorded discs
- Data
Practice notices are issued from time to time to advise us of newly refused terms.
Since an Examiner’s report may come more than 9 months after filing, if you are in a rush to obtain your registration, have your statement reviewed before filing!
