Exclusionary wording in statements of goods or services

Publication Date: July 19, 2021.

Amendment Date: December 19, 2022.

This notice is intended to clarify the practice before the Trademarks Office that would, as of the date of this notice, allow broader exclusionary wording in statements of goods or services contained in trademark applications, including Protocol applications, so long as such statements are not contrary to the Trademarks Act (the Act) or Trademarks Regulations (the Regulations).

There is no general prohibition against describing goods or services using wording which excludes or limits those goods or services. Paragraph 30(2)(a) of the Act requires that an application for a trademark contain "a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used". Furthermore, section 29 of the Regulations states that the statement of goods or services "must describe each of those goods or services in a manner that identifies a specific good or service". That being said, use of limiting or exclusionary wording is not the preferred option and generally should only be considered by an applicant when specifying all the goods or services would be onerous. For example, if the applicant wishes to exclude "t-shirts" from the goods described as "casual clothing", it would be onerous to list all possible items of casual clothing except for t-shirts.

Acceptable exclusionary wording

Limitations of statements of goods or services will be accepted if the statements are otherwise acceptable under the Act and Regulations. Acceptable exclusionary phrases can be in the form of, for example, "not including", "none being", or "excluding". The following are examples of acceptable use of exclusionary wording:

• Class 7: "Clothes washing machines and clothes drying machines, none being for domestic use"
• Class 9: "Computer video games, not including games of chance"

These statements are considered acceptable since the first portion of the statement preceding the exclusionary portion would be acceptable on their own.

The Office's existing practice of accepting exclusionary wording that indicates material composition for the purposes of Nice Classification remains in effect. For example, the following are examples of acceptable use of exclusionary wording for the purposes of properly classifying goods or services according to the Nice Classification system:

• Class 14: "Clock cases, not of precious metal"
• Class 19: "Downspouts, not of metal"
• Class 27: "Decorative wall hangings, not of textile"

In the following statements, the exclusionary wording is acceptable and applies to all of the goods or services preceding it even if the goods or services are separated by a semi-colon:

• Class 9: "Keyboards for smartphones and digital tablets; computers for boats, or airplanes; computer application software for mobile phones for use in database management; downloadable applications for mobile phones to read periodicals; all of the aforesaid goods not for use in the field of human medicine and healthcare and/or veterinary services"
• Class 42: creating, maintaining, and hosting websites for others; computer design services; none of the aforementioned services in the fields of tax or financial planning and compliance”

It is also acceptable to have more than one exclusionary statement applying to some or all the goods or services preceding them even if they are separated by a semi-colon and so long as it is clear that the exclusion applies to some or all of the goods or services, for example:

• Class 5: "Antibacterial soap; alcohol-based antibacterial skin sanitizer gels; all purpose sanitizers; hand sanitizers; all of the aforementioned goods not containing any cannabinoids; all the foregoing excluding soaps and detergents intended for use in dishwashers or dishwashing appliances"
• Class 9: "Dashboard cameras excluding smartphones, located in or on motor vehicles; artificial intelligence software for autonomous vehicles; software and hardware excluding smartphones located in motor vehicles for digitizing and recognizing objects on streets, roads and highways, namely, traffic congestion, infrastructure defects, road hazards, collisions, construction and other vehicles; none of the aforementioned for use in the mining industry"

In cases where the exclusionary wording is ambiguous or not acceptable, the Office will raise an objection and request that the applicant amend the applicable statement.

Unacceptable exclusionary wording

Statements of goods or services may not include exclusionary phrases which reference Nice classes as such wording is not considered to be the ordinary commercial term used for a good or service. For example, the following statements would not be acceptable:

• Class 25: "Shoes, not included in other classes"
• Class 6: "Alloys of metal excluding those found in classes 5 and 14"
• Class 16: "Brushes included in this class"

The Office will not accept a limitation of goods or services if the wording has the effect of excluding goods or services which would not normally fall within the scope of the broader statement. For example, the following statements would not be acceptable:

• Class 9: "Computer software for accounting, excluding laser printers"
• Class 29: "Eggs and cheese, not including butter"

To be acceptable, the goods or services being excluded must be in ordinary commercial terms and described in a manner that identifies specific goods or services. For example, the following statement would not be acceptable because the goods after the exclusionary wording are not acceptable on their own:

• Class 1: "Agricultural chemicals, excluding chemical preparations"

The following statement would not be acceptable as the goods before the exclusionary wording are not acceptable on their own:

• Class 1: "Chemicals, none being for agricultural purposes"

When to use exclusionary wording

The exclusion of specific goods or services may generally be used by an applicant to overcome a confusion objection. For example, an applicant may seek to exclude items which are the same as, or similar to, the goods or services of the cited application or registration. The exclusion should usually be broader than the goods or services covered by the cited trademark to remove any likelihood of confusion. However, applicants should note that the nature of the goods or services and their channels of trade are not the sole criteria for assessing confusion under subsection 6(5) of the Act; the confusion objection may be maintained despite the limitation provided by the applicant. Where the statement of goods or services of the cited trademark is broad, it may not be sufficient for the applicant to limit the goods or services in its application.

Examiners will generally not accept the exclusion of goods or services to overcome an objection that the trademark is clearly descriptive under paragraph 12(1)(b) of the Act, as any exclusion would likely cause the trademark to be deceptively misdescriptive. The circumstances where exclusions would be acceptable in this case are very limited and will be treated with extreme caution by Examiners.

This practice notice is intended to provide guidance on the Canadian Intellectual Property Office practice and interpretation of relevant legislation. However, in the event of any inconsistency between this notice and the applicable legislation, the legislation must be followed. The provisions of this practice notice are general guidelines only, are not binding in any particular case and are subject to change.