Unlike almost all other countries, Canada does not use a classification system to define goods and services in a trademark application. Instead, the Canadian Trademarks Act requires that wares and services simply be defined in "ordinary commercial terms." While such a system does have benefits (applicants are not restricted to using certain predetermined terms in describing their wares and services, and applicants need not pay any class fees), the Canadian system also presents its own challenges.
In particular, it is often difficult to understand what constitutes an "ordinary commercial term," a difficulty that can lead to prolonged examination. Although the Canadian Wares and Services Manual (the "Manual") published by the Canadian Trademarks Office offers examples of terms that are considered to be "ordinary commercial terms," the listing contained in the Manual is neither extensive nor exhaustive. As a result, applicants are often left speculating what terms will or will not be accepted by the Examiner as an "ordinary commercial term."
This article discusses effective strategies and practical considerations for formulating descriptions of wares and services that are likely to be accepted by a Canadian Examiner as "ordinary commercial terms."
Preparing an application for filing. Rather than attempting to define wares and services in "ordinary commercial terms" prior to filing an application, it is often preferable to simply file the application as soon as possible with a broad listing of the wares and services of interest. The reasons for such an approach are as follows:
- Filing an application as soon as possible allows the applicant to secure an early Canadian filing date to minimize the risk of competing rights intervening.
- After a Canadian trademark application is filed, the list of wares and services cannot be amended to be broader than those listed at the time of filing. Accordingly, it is typically desirable to list a broad set of wares and services at the outset.
- It is difficult to predict whether a Canadian Examiner will object to a particular term, since the question of whether a term is an "ordinary commercial term" is often a subjective decision on the part of the Examiner. Thus, rather than speculating which terms will attract an objection from the Examiner, and potentially narrowing the scope of the application unnecessarily, it is often preferable to file a broad list of wares and services and wait for the Examiner to identify the terms that he or she requires to be more specifically defined.
- The precise wares and services of interest are often unknown at the time of filing. For example, for an application based on intent-to-use, the applicant may not know the precise wares and services with which the trademark will be used.
Addressing an objection at the examination stage. If the Examiner believes that some of the terms listed in an application are not "ordinary commercial terms," then the Examiner will specifically list the objectionable terms in an Office Action. At that point, the applicant has the option of arguing that a listed term is an ordinary commercial term, or may file a revised application that further specifies the rejected term.
It is worth noting that multiple iterations of arguments and amendments are permitted by Canadian Examiners. Thus, for example, the applicant may choose to argue in a response to a first Office Action that a rejected term is in fact an "ordinary commercial term" and therefore should be accepted. If the Examiner disagrees and issues a second Office Action still rejecting the term, the applicant may file a response narrowing the term slightly. If the Examiner is of the view that the narrower term is still not acceptable, the Examiner will issue a third Office Action, giving the applicant a further opportunity to redefine the term to one that is acceptable to the Examiner. Consequently, if it is important to the applicant to try to retain a particular broad term in the application, there is an opportunity to make multiple attempts to retain that broad term.
Practical guidelines for redefining goods and services. If arguments have not been successful, or if the applicant simply wishes to try to address the Examiner's objection by narrowing the wares and services, the following strategies may assist the applicant in finding terms that will be acceptable to the Examiner:
- Consult the Canadian Wares and Services Manual. The Manual contains a representative listing of acceptable wares and services. If a term appears in the Manual, the Examiner will accept it. The Manual can also be used to understand by analogy the kinds of descriptions that will be acceptable. The Manual is available and searchable online at http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr00061.html. As noted above, the Manual is neither extensive nor exhaustive. Thus, even if a term does not appear in the Manual, the Examiner will nonetheless accept it if he or she concludes that it is an ordinary commercial term.
- Consider third-party registered trademarks and allowed applications. The applicant can perform a search of the Canadian Trademarks Database (available at http://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/) and look for similar descriptions that have been recently accepted by the Registrar. It should be noted, however, that the Office is not obliged to accept descriptions that it has accepted in the past. In addition, since the Office continuously changes its policies on acceptable terms, bringing to the Examiner's attention descriptions that were accepted more than a few years ago will likely not be persuasive.
- Review corresponding applications/registrations in other jurisdictions. Some jurisdictions, such as the United States, have a similar practice requiring applicants to define wares and services in specific terms. While Canadian Examiners give little regard to the fact that a particular term has been accepted elsewhere, the corresponding applications/registrations may provide some guidance as to how the wares or services could be described.
- Replace inclusive terms with exclusive terms. In general, inclusive terms such as "including," "especially," "for example" and "in particular" are not acceptable in Canada. While these terms are common in other jurisdictions, they must typically be amended to the exclusive term "namely" in Canadian applications.
- Other terms to avoid. There are also certain terms often used in foreign applications that Canadian Examiners routinely reject as being too broad. Such terms include "apparatus," "machinery," "device" and "preparations." These terms must be replaced with the detailed description of the ware, for example, as the ware might be described in a brochure or invoice.
While the above practical tips may assist in defining wares and services in "ordinary commercial terms," because of the ever-changing policies applied by the Office when considering wares and services (often without notification to the public), and because different Examiners can apply different standards, the formulation of wares and services likely to be acceptable to a given Examiner is as much an art as a science. Should difficulties arise in finding descriptions of wares and services that are acceptable to a Canadian Examiner, we would be pleased to rely on our experience and expertise in dealing with examiners on this issue to assist you in defining your wares and services in "ordinary commercial terms."
Jacky Wong, Ottawa
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.