Compliance with Section 4 and Paragraph 30(a) Advertising, Marketing and Promotional Services

Publication Date: 1999-09-01

In view of the Ralston Purina Co. v. Effem Foods Ltd. decision, 81 C.P.R. (3d) 528, it is clear that the services defined as "advertising and marketing relating to products of the applicant" do not constitute a service pursuant to section 4 of the Trade-marks Act. Consequently, the Office has reversed its practice and no longer considers these services acceptable. While there are no provisions in the Act that restrict a service to one that is not merely incidental or ancillary to the sale of goods (Kraft Ltd. v. Registrar of Trade Marks 1 C.P.R. (3d) 457), there is still a requirement that there be a service offered to some third party. Therefore, the Office questions any statement of services where it is not clear that a real service is provided to the public; the criteria for assessment is whether a third party benefits from the service.

Furthermore, "promotional services" are not considered to comply with the provisions of paragraph 30(a) of the Act. Therefore, the Trademarks Office, for the purposes of paragraph 30(a), requires these services to be specified in greater detail. By way of example, the following would be considered acceptable: "promoting goods and services by arranging for sponsors to affiliate goods and services with [indicate activity, e.g. a particular sports competition]; promoting goods and services through the distribution of discount cards; promoting the sale of credit card accounts through the administration of incentive award programs; promoting the sale of goods and services by awarding purchase points for credit card use; promoting the sale of goods and services through the distribution of printed material and promotional contests".

This requirement applies to applications presently pending as well as those filed in the future.

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