Description of goods and services in Canada
As we saw in our previous article, when it comes to prepare a registration request trademark, the choice of products and services that will be included is very important.
The Canadian Regulations require statements of goods or services to describe each of those goods or services in a way that identifies a specific good or service and must be classified according to the nice classification system.
L'Canadian Intellectual Property Office (CIPO) is (much) more demanding than other Offices as regards the specificity of the description of goods and services. Indeed, many terms acceptable in other jurisdictions are not generally considered acceptable in Canada and class headings are not sufficient. The Canadian examiner will require that the goods and services be described according to Canadian standards.
The following problematic examples are widely used internationally:
- “Apparel” is an ordinary trade term, but it does not identify a specific product. Examples like “casual clothing” or “children's clothing” would be acceptable choices since the type of functional clothing was provided.
- "Software" without further specification would give the applicant an unreasonably broad scope of protection. In general, the specific function of the software and the field of use (if not obvious) should be indicated.
- “Medical or pharmaceutical products” shall specify the disease, type of disease, disorder or condition to be treated, or indicate the specific type of drug.
The following three-pronged test is applied to determine whether the list of goods and services is considered specific enough:
- Are the goods or services specific enough to determine whether the mark gives a clear description of the nature or quality of the goods or services?
- Are the products or services specific enough to ensure that the applicant will not obtain too broad a protection?
- Are the goods or services specific enough to assess confusion?
CIPO has posted its Products and Services Manual. There you will find various examples of acceptable descriptions and pre-approved terms.
