The Canadian Trade-marks Act provides that an application for a trade mark must contain: "…a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been used or is proposed to be used."
What is considered to be "ordinary commercial terms" can often have intriguing and problematic answers. The following are some examples of acceptable and unacceptable terms for wares and services descriptions in Canada.
- Registered trade marks cannot be used in statements of wares/services. For example, "Carry-on" is a registered trade mark for "luggage, traveling bags, suitcases and trunks" and accordingly will be objected to if it is listed in the description of wares and services. "Thermos" and "Aspirin" are still registered trade marks in Canada, despite having been declared "genericized" in the United States many years ago. Other well-known examples including "Yo-Yo", and "Windbreaker."
- The phrase "food products" requires further particularization. The category of "food product" and, where required, the specific type of food should be indicated. For example, "prepared food products, namely pre-cooked meatballs", "prepared and processed meats, namely chicken, turkey, beef"; "fresh and frozen soups"; "snack foods, namely chips and popcorn" would be acceptable.
- "Cosmetics" is a commonly used description, and will trigger an objection without further particulars. The specific type of cosmetic should be indicated, for example, deodorants, hair care preparations, makeup, nail polish, perfumery, skin care preparations, toothpaste and so on.
- "Pharmaceutical preparations" must be specified by: (a) naming the disease (for example, "pharmaceutical preparations for the treatment of cancer") or (b) specifying the disease group or type of disease, disorder or condition to be treated (for example "Pharmaceutical preparations for the treatment of infectious diseases, namely, influenza" or (c) by indicating the specific type of medication (for example "Acetaminophen").
- "Clothing", "footwear" or "headgear" will trigger an objection. However, while many applications often list all of the specific items of clothing (e.g. t-shirts, sweatshirts, knit tops, etc), it is sufficient to specify the type or purpose of clothing. For example, casual clothing, baby clothing, exercise clothing, and undergarments are all accepted terms in the Wares and Services Manual.
In determining what terms will be accepted as being in "ordinary commercial terms," an applicant should refer to the Manual of Wares and Services. Since the Manual does not contain a complete listing, it is also helpful to refer to existing applications or registrations to see what terms have been accepted.