When filing trademark applications in multiple jurisdictions, owners may encounter a range of different issues and objections in the respective countries. One issue that commonly arises in Canada is an objection that the goods and/or services have not been described in “specific” and/or “ordinary commercial terms”.
This objection is grounded in paragraph 30(2)(a) of Canada’s Trademarks Act and section 29 of the Trademarks Regulations, which together provide that an application shall contain a “statement in ordinary commercial terms of the goods and services in association with which the trademark is used or proposed to be used” and that such statement must “describe each of those goods or services in a manner that identifies a specific good or service".
In practice, this requirement has set a high bar for specificity. The Canadian Intellectual Property Office (“CIPO”) generally requires applicants to describe goods and services in greater detail than most other jurisdictions.
In June 2019 Canada implemented significant changes to its trademark system and joined certain key IP treaties including the Nice Agreement and the Madrid Protocol. However, these changes did not relax the specificity requirements for describing goods and services. Under the new system Canadian applications must both: (i) categorize the goods and services according to the Nice Classification system; and (ii) define the goods and services in specific and ordinary commercial terms. The latter requirement typically mandates a far greater level of specificity than what is acceptable under the Nice Classification system. As such, foreign applicants designating Canada through the Madrid Protocol may commonly find that the descriptions which have been accepted in other jurisdictions require further specificity in Canada.
So what is a “specific” and “ordinary commercial term”? Starting with the second part of the question, the jurisprudence and CIPO provide the following guidance:
- A statement of goods or services is considered to be in ordinary commercial terms where research discloses that similar language and scope has been used by others in the same industry to describe the applicant's goods or services (see Dubiner v. Heede International Ltd. (1975), 23 C.P.R. (2d) 128 and Mövenpick-Holding AG v. Sobeys Capital Incorporated 2010 TMOB 41);
- 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 (see Decra-Loc Canada Ltd. v. Pave Tech Inc. (1995), 61 C.P.R. (3d) 553);
- Examiners will conduct research to determine whether there are commercial uses of the description of goods and services in question that would demonstrate that they are described as they normally would be in the trade (see CIPO Examination Manual, section 18.104.22.168); and
- Where ordinary commercial terms cannot be found, the statement of goods or services must be clear and concise; technical, lengthy or ambiguous descriptions of the characteristics of the goods or services are not acceptable (see CIPO Examination Manual, section 22.214.171.124).
With respect to the requirement to describe a “specific” good or service, CIPO will apply a thee-part test to assess whether the description: (i) allows for an assessment of whether the mark is clearly descriptive or deceptively misdescriptive; (ii) identifies each specific good and service to ensure that the applicant will not have an unreasonably wide ambit of protection; and (iii) is sufficiently specific that it is possible to assess confusion.
In light of these criteria, it may be necessary to include details such as the function, area of use, field of use, etc. of the goods/services, depending on the context. On this point, examples are instructive. CIPO has indicated that while “clothing” is an ordinary commercial term, it does not identify a specific good and would therefore not be acceptable. In contrast, the term “exercise clothing” is considered to be specific since the functional type of clothing has been provided. Similarly, the term “consulting services” may be an ordinary commercial term but it lacks the requisite specificity as the field of use has not been indicated. The term “consulting in the field of workplace safety” is considered to be a specific service stated in ordinary commercial terms.
In practical terms, the answer to what constitutes specific and ordinary commercial terms is highly contextual. This system does allow for flexibility in that applicants are not constrained to any particular terminology in how they choose to describe their goods or services. However, it can also lead to uncertainty when evaluating whether a given description is likely to be acceptable. This can, in some cases, result in longer examination.
CIPO endeavours to provide guidance on ordinary commercial terms through the Goods and Services Manual (the “Manual”). The Manual is a searchable database which lists representative terms, categorized under the Nice Classification system, which have been pre-approved by CIPO. This means that the inclusion in an application of any terms as listed in the Manual should be accepted without the need for any further specification. While the Manual serves as a useful reference, it is not intended to be exhaustive. In light of all the foregoing, Canadian trademark practitioners rely on a range of tools and strategies when providing recommendations on describing goods and services, including the following:
Extrapolating from the Manual in cases where applicable terminology is not included therein;
Conducting searches in the CIPO database to identify relevant wording in relatively recent third-party registrations or approved applications;
Avoiding or amending certain terminology which CIPO has found to be objectionable or insufficient, such as:
- CIPO takes the position that certain indefinite terms cannot be used to specify goods or services which would otherwise require further specification (e.g. “and the like”, “such as”, “and similar goods”, “including”, “related to”, “and related services”, “etc.” and “featuring”);
- As a general rule, goods described by the terms “accessories”, “equipment”, “apparatus”, “systems”, or “products” are not considered acceptable without further specification; and
CIPO has likewise provided specific guidance for the terms “parts”, “fittings” and “devices” (among others);
Specifying certain categories of goods and services for which CIPO has set out particular requirements including (among others):
- Computer software and computer programs;
- Pharmaceutical, veterinary, botanical, nutraceutical, homeopathic, medicinal and medicated preparations, remedies, supplements, extracts, functional foods and enhanced water;
- Services related to the electronic transmission of data; and
Telecommunication-related services; and
Drawing on experience, expertise and judgment developed through past dealings with Examiners.
While the Canadian system may seem complicated, particularly to foreign applicants, experienced practitioners effectively utilize these and other creative strategies to address objections.