Those familiar with filing and prosecuting trademark applications in Canada will know that the Canadian Intellectual Property Office (CIPO) has among the world’s most stringent standards for assessing the specificity of goods and services claimed in such applications.
To assist trademark counsel and brand owners in interpreting these standards, on September 18, 2024, CIPO released new Specificity Guidelines for the Goods and Services Manual (Specificity Guidelines). This article provides a summary of the Specificity Guidelines, including clarifications on the requirements for specifying goods and services.
What are the requirements?
By way of background, paragraph 30(2)(a) of the Trademarks Act requires that an application contain “a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used.” Additionally, section 29 of the Trademarks Regulations requires that such statement “describe each of those goods or services in a manner that identifies a specific good or service” (emphasis added). These requirements are not new. The above provisions have been in place since Canada’s trademark law was amended in 2019 and are similar to provisions that existed for decades prior to those amendments.
In determining whether a statement of goods or services identifies a specific good or service within the meaning of section 29 of the Regulations, CIPO applies the following three-part test:
1. Are the goods or services described in a manner such that it is possible to assess whether paragraph 12(1)(b) of the Act applies? A trademark that clearly describes a character or quality of the goods or services is not registrable.
2. Does the statement identify a specific good or service 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 ambit of protection.
3. Are the goods or services described in a sufficiently specific manner such that it is possible to assess confusion? A trademark that is confusingly similar to a registered trademark or a pending trademark is not registrable.
What guidance was previously available?
This three-part test is set out in CIPO’s Trademarks Examination Manual (at 2.4.5.2), which also includes limited guidance on the level of detail required for certain types of goods and services, such as “parts and fittings”, “devices”, “computer software”, “pharmaceutical preparations”, “advertising services” and “services related to the electronic transmission of data”, among others.
Additionally, CIPO maintains (and has maintained for many years), the Goods and Services Manual, which is a searchable database of representative terms that are pre-approved by CIPO and, if selected in an application, will be accepted without any need for further specification. The Goods and Services Manual also lists unacceptable and “retired” terms, together with notes explaining why the term is unacceptable and what further detail is needed. For example, the term “electronic commerce services” is retired and the Goods and Services Manual advises that the specific field must be indicated (electronic mail services, online banking and electronic bill payment, online hotel reservations, etc.).
Despite the guidance provided by the Trademarks Examination Manual and the Goods and Services Manual, many trademark counsel and brand owners frequently find themselves puzzled by CIPO’s specificity standards, facing Examiner’s Reports with objections to goods and services that have been accepted in other jurisdictions without any explanations as to why the terms are deficient.
What’s new?
CIPO’s new Specificity Guidelines might alleviate some of that frustration.
The Specificity Guidelines are intended to complement the Goods and Services Manual and to provide an indication of the level of specificity that CIPO requires for certain types of goods and services. The information is listed according to Nice class, and presented in a “fill-in-the-blank” format, with explanations of what needs to be specified. For example:
Class 9 - batteries [indicate the specific area of use, namely, batteries for automobiles, batteries for cameras, batteries for cellular phones, batteries for hearing aids, batteries for watches, etc. OR indicate the specific type, namely, 9V batteries, alkaline batteries, lithium-ion batteries, etc.]
Class 30 - snack food [indicate what the snack food primarily consists of, namely, cereal-based snack food, corn-based snack food, rice-based snack food, wheat-based snack food, etc., OR indicate the specific item of snack food, namely, rice chips, crackers, high-protein cereal bars, etc.]
Class 42 - software as a service (SaaS) [indicate the specific function and, if necessary, indicate the specific field, namely, software as a service (SAAS) for allowing registered users to connect with audiologists, software as a service (SAAS) for managing medical staff information, software as a service (SaaS) for use in customer relationship management (CRM), software as a service (SAAS) namely software for converting text to speech, etc.]
The Specificity Guidelines also include a section titled “Unclassifiable without further specification”, which lists entries that cannot be classified in an appropriate Nice class without further specification. For example:
robots [an appropriate Nice class cannot be assigned without further specification: indicate the specific type, namely, industrial robots for cleaning floors (class 7), industrial robots for welding (class 7), robots for milling (class 7), sewing robots (class 7), telepresence robots (class 9), laboratory robots (class 9), surgical robots (class 10), etc.]
information services provided via a website [an appropriate Nice class cannot be assigned without further specification: indicate the specific type of information, namely, providing travel information via a website (class 39), providing educational information in the field of food safety (class 41), providing scientific information in the field of climate change (class 42), providing information about legal services via a website (class 45), etc.]
Both the Specificity Guidelines and CIPO’s announcement of their release indicate that in the case of any discrepancies between the Specificity Guidelines and the Goods and Services Manual (e.g., due to regularly scheduled updates), the guidance provided by the Goods and Services Manual should be “prioritized”.
While CIPO has not relaxed its stringent specificity standards with the release of this new guidance, trademark counsel and brand owners are now better equipped to navigate these standards when filing and prosecuting trademark applications in Canada.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.