Why Canada Rejects Goods and Services Descriptions Accepted Elsewhere

Among the most frequent objections raised in Canadian examination is one that concerns the description of the associated goods and services. Statements of goods and services accepted elsewhere, including in many Madrid designations, are often found not to comply with Canadian requirements.

The requirement

Section 30(2)(a) of the Trademarks Act and section 29 of the Trademarks Regulations require a statement of the goods and services in ordinary commercial terms, describing each in a manner that identifies a specific good or service. The goods and services must also be grouped according to the Nice Classification. These are distinct requirements. A term may be classifiable under the Nice Classification and nonetheless fail the Canadian requirement of specificity.

Why class headings don't work

CIPO treats the Nice class headings as general indications of the kinds of goods or services falling within each class. They do not always comply with section 30(2)(a) and section 29, and should not be used to describe an applicant's particular goods or services.

CIPO's guidance offers several examples:

• "Clothing" is an ordinary commercial term, but it does not identify a specific good. Specific items, such as shirts, jackets, or socks, must be listed.

• "Computer software" and "transport services" can be classified, but are insufficiently specific. The function of the software or the type of transport must be stated.

• "Statues" is acceptable wording, but must be further defined, for example by material, before it can be placed in the appropriate class.

• "Dish washer parts and fittings" is acceptable, because dish washers are themselves a specific good.

Using the Goods and Services Manual

CIPO's Goods and Services Manual is a searchable database of pre-approved terms, each assigned to a Nice class. Terms drawn from the Manual should be accepted without further specification. The Manual is not exhaustive, and the absence of a term does not mean that it will be rejected, but it is the appropriate starting point.

Where no ordinary commercial term exists, the description must nonetheless be clear and concise. Technical, lengthy, or ambiguous descriptions of a product's characteristics are not acceptable.

Practical tips

• Draft for Canada from the outset.

• Replace broad terms with the specific goods the applicant sells or intends to sell.

• Be attentive to terms that are specific elsewhere but not in Canada, particularly software, advertising and consulting services.

• Keep the client's actual business in view. A narrower, accurate statement is easier to defend in any section 45 proceedings.