Defining Goods and Services in Canadian Trademark Applications: Requirements and Tips for Applicants

All Canadian trademark applications must set out the goods and/or services with which the trademark is used or is proposed to be used. This can be one of the most challenging aspects of preparing a trademark application, in part because trademark law says that goods and services must be set out in “ordinary commercial terms” and must identify the specific good or service.

When examining applications, the Canadian Intellectual Property Office (CIPO) tends to require a high degree of specificity in trademark applications, especially when compared to other jurisdictions like the European Union and the United States.

CIPO’s Guidelines

To that end, CIPO recently published further specificity guidelines for goods and services in trademark applications. CIPO’s policies and guidelines emphasize the need for clear, specific language. The following are some of those key considerations.

1. Ordinary Commercial Terms: The description must use industry-standard language. Examiners will check that the wording is appropriate. Trademarked terms, vague, or overly technical language are not allowed.
2. Specificity of Goods/Services: Descriptions should be clear and specific. For example, “exercise clothing” is more specific than “clothing.” Sometimes, the area of use needs to be mentioned to avoid confusion, like specifying “catalysts for use in oil processing.”
3. Avoid Indefinite Terms: Words and phrases like “including”, “related to”, or “featuring” Are generally considered to be too vague and are not acceptable. For example, “financial services related to mutual funds” is too vague. Such terms may be acceptable when they follow specific goods or services, such as “restaurant services including take-out services”.
4. Clarify Definite Terms: Terms like “namely” or “specifically” can be used to help clarify descriptions, such as “alarms, namely fire and burglar alarms.” This is useful when a term may not be sufficiently specific on its own.  Similarly, words like “in the nature of” or “such as” can clarify goods or services if they provide further detail, e.g., “clothing in particular casual wear” is acceptable.
5. Avoid Broad Terms: Words like “accessories,” “equipment,” or “systems” are often too broad and need further specification unless their meaning is clear. For example, “hair accessories” is fine, but “automobile accessories” is too vague.
6. Exclusionary Wording: You can use phrases like “not including” or “excluding” to limit the scope of goods or services, but only if the descriptions meet trademark regulations. For example, “clothes washing machines, none being for domestic use” is acceptable, but “computer software for accounting, excluding laser printers” is not because the exclusion doesn’t fit the context. Exclusionary wording can help prevent confusion with existing trademarks but is not acceptable if it leads to deceptive or misleading descriptions.
7. Unacceptable Exclusionary Wording: You cannot use phrases like “not included in other classes” or exclude goods/services that don’t logically fit the broader category.
8. Overcoming Objections: Exclusionary wording can be used to address objections related to potential confusion with other trademarks. However, it cannot be used to overcome objections related to descriptiveness or misdescription under trademark law.

CIPO also provides guidelines for certain specific areas of goods and services.

1. Parts and Fittings: Descriptions of parts or fittings are allowed if they are tied to a specific item, such as “dishwasher parts and fittings.”
2. Devices: The term “device” can be used if the field and function are clearly stated, like “medical devices to detect antibodies.”
3. Computer Software: “Computer software” alone is insufficient; the function and area of use must be specified.
4. Discs and Media: Descriptions like “pre-recorded discs” must specify the format (e.g., CDs, DVDs) and content (for example, movies, music).
5. Pharmaceuticals and Remedies: These must be described in detail, specifying the disease or condition they treat or the type of preparation.
6. Intangibles: Items like “websites” or “electricity” are not goods but should be listed as services, such as “website design” or “energy recycling services.”
7. Advertising and Marketing: These types of services must benefit a third party. For example, services that promote the applicant’s own products are not considered to offer a public benefit.
8. Electronic Data Services: Terms like “data transmission” must specify the type of data and means of transmission (for example, online, satellite).
9. Telecommunication Services: Broad terms like “telecommunications” need to specify the type of communication and the business field, such as “videoconferencing services.”

Pre-Approved List and Aids for Defining Goods and Services

The details of CIPO’s approach to examining trademark applications can be found in Section 2.4.5 of the Trademarks Examination Manual. CIPO also maintains a list of goods and services that it considers to be pre-approved, the Goods and Services Manual. If an applicant uses goods and services from the Manual, they are considered to be acceptable and will not require further specification during examination.

The newly-published Specificity Guidelines for the Goods and Services Manual include a “fill-in-the-blank” list of goods and services with explanations of what needs to be specified, as well as some examples of acceptable goods or services.

There are many benefits to properly drafting the goods and services in an application, including that the application may be examined more quickly or will receive fewer requests from an Examiner to further specify, redefine, or reclassify the goods and services during examination (which in turn can reduce the cost of amending an application and responding to an Examiner’s Report).

Expedited Examination

One key benefit of the Pre-Approved List is that applications that draw exclusively from this list will receive faster examination. For instance, CIPO is currently examining applications from December 16, 2020, where they do not use the Pre-Approved List, and June 2, 2023, where they do use the Pre-Approved List.

If you have any questions or require assistance with your trademarks, please contact Sebastian Beck-Watt at info@pckip.com.

PCK IP is a leading North American intellectual property firm based in Canada, specializing in the preparation, prosecution, and strategic management of patent and trademark portfolios for global markets. Our team of seasoned patent agents, engineers, scientists, and IP lawyers supports clients across diverse technologies, with expertise in coordinating cross-border IP strategies. Contact us today to explore how we can help secure and manage your intellectual property.

The contents of this article are provided for general information purposes only and do not constitute legal or other professional advice of any kind.