Trademarks Examination Manual — Page 2 of 5
On this page:
- Examination of the Application as to Form
- Request for Early Examination
- Formal Requirements — Section 30
- Types of Applications — Section 16, Paragraphs 41(1)(c) and 30(b) to (f)
- Contents Common to All Applications
- Content Appearing in Some Applications
- Contents of Specific Applications
II Examination of the Application as to Form
The entire processing of an application from the time of filing to the time of its registration (or, alternatively, refusal or abandonment) involves many different operational units of the Trademarks Office. The majority of trademark applications are filed electronically. The others arrive in the departmental mail room where they are date stamped and then forwarded to the CIPO Finance and Administration Directorate which is responsible for receiving and coding the appropriate fee.
The application is transferred to the Formalities Section where it is assigned a file number. The application is reviewed to ensure that the filing requirements of Rule 25 of the Trade-marks Regulations have been met and, if so, it is assigned a filing date.
The application is then formalized and entered into the database and the electronic index. Receipt of the application is then acknowledged. The application is then transferred to the Examination Section where it is searched and examined.
II.2 Request for Early Examination
(See also the practice notice entitled Requests for Expedited Examination)
Trademark applications are generally examined in order, according to the filing date of the application. The advancement of an application out of routine order creates a favoured position at the expense of all other applicants, and the Registrar will not consider requests for expedited examination.
II.3 Formal Requirements — Section 30
Once the application for registration of a trademark has been processed by the Formalities Section of the Trademarks Office, examiners begin the initial examination, in part to ensure that all the formal requirements of the application form have been satisfied as set out in section 30 of the Trade-marks Act. See also the section entitled "General" in the Trade-marks Regulations.
As part of the initial examination, examiners will also assess goods or services that have been grouped according to the classes of the Nice Classification.
II.4 Types of Applications — Section 16, Paragraphs 41(1)(c) and 30(b) to (f)
In addition to verifying the application's compliance with paragraph 30(a) of the Trade-marks Act, examiners must also review the basis upon which the applicant seeks to register the mark. The applicant will be aided in the completion of his/her application by referring to the Trade-marks Regulations, especially to Rule 25 and to paragraphs 30(b) to 30(f) of the Trade-marks Act.
Although the Trademarks Office does not supply pre-printed forms, suggested forms are available.
Applicants may also file their applications electronically.
II.5 Contents Common to All Applications
II.5.1 Identity of the Applicant
The applicant must be a "person" entitled to registration, as defined in section 2 of the Trade-marks Act. Examiners commonly refer to "persons" as "legal entities". The "person" or legal entity may be an individual, partnership, trade union, association, joint venture or corporation.
The name stated in the application as the applicant must be a legal entity. A legal entity can function legally, sue or be sued and make decisions through agents, as in the case of corporations.
However, the Registrar will generally no longer require an applicant to confirm that it is a "person" as defined in section 2 of the Trade-marks Act. The onus rests ultimately with the applicant to ensure compliance with the Trade-marks Act.
When two or more individuals or legal entities apply for the registration of a trademark, it must be confirmed that they form a lawful association. It is not enough for the individuals to say that they are in business together. The individuals must confirm in writing that they have a legal agreement between them, in other words, a lawful association, such as a partnership or a joint venture. A statement to that effect is sufficient. It is not necessary to submit evidence, an affidavit or revised application. If the applicant cannot confirm that it is a lawful association, then a new application must be filed along with the corresponding fee, correctly identifying the applicant.
Whenever applicable, a predecessor-in-title must be named, indicating previous ownership.
When the applicant is an individual, he/she shall provide a surname and at least one given name. Any trading styles used can also be incorporated in the applicant's identification.
Example: John Doe trading as Doe's Deli.
The applicant must not be identified by a trading style alone. Whenever it appears that the application has been made in the name of the applicant's trading style rather than the applicant's own name, the examiner will request an amended application, which must name the legal owner, that is, the individual, as the applicant.
While the Office will not register a trademark in the name of more than one individual or legal entity, applications to register a trademark may properly be made in the name of a partnership, which is considered a lawful association. Generally, a group of persons conducting a business as a partnership does so under a trading style (e.g., Mary Jones and John Smith, a partnership, doing business as Jonesmith Enterprises).
It may occasionally happen that two or more individuals apply to register a trademark, but do not indicate the existence of a partnership. Written confirmation that a partnership exists will be sufficient, and the applicant may provide a trading style if one exists.
The onus of determining whether or not a partnership is a legal entity rests with the applicant or registrant. Accordingly, the Office accepts applications, assignments, etc., filed in the partnership name only, without reference to the partners. However, the partnership must be identified as such.
Associations that are legal entities (i.e., lawful associations) may acquire trademark rights either in association with services performed for members or for goods or services used in commerce. The full name of the association and full post office address of its place of business must be set out.
II.5.1.4 Joint Ventures
Applications may also be made by two or more applicants who are engaged jointly in commercial activities which result in the production of goods or the provision of services, e.g., a joint venture, which is another form of lawful association. The full names and full business addresses of the applicants must be set out in the application. Only the general partners in a joint venture need be named, not any limited partners.
However, in cases whereby the parties have separate addresses, the information should be data captured in the following manner:
- ABC Inc. and XYZ Ltd., a joint venture
- 123 1st St.
- Ottawa, ON K1K 0A0 and
- 789 2nd Ave.
- Ottawa, ON K3K 1B1
However, due to the fact that the Office is limited by the number of characters that can be entered in the address field, confirmation from the applicants involved in a joint venture as to which address should be entered may sometimes be requested.
The Office no longer requires information establishing the degree of involvement of each partner as was previously the case.
Such information may be required, however, to disclose the procedure by which the trademark may be assigned or ownership resolved if the joint venture is dissolved. This requirement should be dictated by the facts in each case, and the documentation submitted at the time of assignment should deal with this question.
The instructions for completion of an application do not require the applicant to name the jurisdiction under whose laws it was incorporated. The application must, however, contain the full name of the corporation, which may be a private organization or a public authority, e.g., a municipal or provincial corporation or a provincial or federal statutory body.
A common error is when an individual files an application on behalf of a corporation and identifies him/herself either solely or in addition to the corporation or company which he/she represents. In the following examples, if the applicant is XYZ Ltd, all information preceding XYZ Ltd. is considered superfluous and should not be included when identifying the applicant:
- Jack Jones, President of XYZ Ltd.
- Jack Jones on behalf of XYZ Ltd.
- Jack Jones, attorney of XYZ Ltd.
Occasionally, an individual who intends to form a corporate body will apply for the registration of a trademark and will request that the registration be made in the name of the intended corporate body. An as-yet-uncreated business entity cannot be a "person" as defined in section 2 of the Trade-marks Act. The applicant may file the application in their own name, and subsequently assign ownership to the intended corporate body after it has been incorporated.
Where a division or component of a corporation is engaged in commercial activity associated with the use of a trademark, examiners will accept, as a proper indication of use by a division, the following:
- General Furniture Ltd., operating through its division Bowes Furniture Manufacturing Co.
- General Furniture Ltd., sometimes doing business as Bowes Furniture Manufacturing
In both cases, "General Furniture Ltd." would be considered the legal entity.
II.5.1.6 Use of French or English Form of Corporate Name
Subsection 10(3) of the Canada Business Corporations Act states the following:
Subject to subsection 12(1), the name of a corporation may be set out in its articles in an English form, a French form, an English form and a French form, or a combined English and French form, so long as the combined form meets the prescribed criteria. The corporation may use and may be legally designated by any such form.
Therefore an applicant whose name incorporates both a French and English version, e.g., Pamplemousse Inc./ Grapefruit Inc., will be recognized as the same entity whether identified only as Pamplemousse Inc. or Grapefruit Inc.
II.5.1.7 Wrong Identification of Applicant
When an application to register a trademark is filed in the wrong name, an attempt is made to remedy the error. The following are examples of the most common errors made when identifying the applicant and the corresponding actions required:
- The application shows "Incorporated" instead of "Limited", or vice versa; "Company Limited" instead of "Company Inc.", or vice versa; "Company of Canada Ltd." instead of "Company Ltd.", or vice versa, and so on. A letter from the applicant to the effect that the erroneous entity did not exist at the date of filing will be required together with the details of the filing error for the correction to be made.
- The application is filed in the old name of the applicant when a change of name occurred prior to the date of filing the application. The Office will accept this change with the submission of a letter setting out the details of the filing error and a revised application showing the correct name of the applicant. This situation is not contrary to Rule 31(a) as the actual "identity" of the applicant has not changed.
Note: The Trademarks Office will amend a pending trademark application to reflect a change of name of the applicant upon receipt of a written request; no fee is required. As a general rule, there is no requirement to provide the Office with evidence of a change of name. If the name change is a result of a merger, amalgamation or a change in corporate status, the Office will require some evidence that shows the circumstances in which the name changed. Non-notarized extracts of corporate registers or copies of the certificate of merger/amalgamation will suffice as evidence of the change in corporate status or a change of name resulting of a merger/amalgamation.
- The applicant advises that an assignment took place prior to the filing of the application; however, the application was filed in the old name. The Office will not accept an affidavit or letter attesting to the circumstances surrounding the error since the applicant was not the owner at the date of filing. This situation is contrary to Rule 31(a) of the Trade-marks Regulations and the application must be re-filed in the name of the current owner.
- The applicant is a United States company and is shown as a state corporation, for example, an Illinois corporation, but the Office is advised that this should have been shown as a Delaware corporation. If the Illinois corporation did not exist, then the Office will require a letter setting out the details of the error before accepting the amendment to show the applicant as a Delaware corporation.
If both corporations (Illinois and Delaware) existed at the time of filing and the applicant filed the application naming the wrong one, then nothing can be done to correct the error as this would change the identity of the applicant and would be considered contrary to Rule 31(a) of the Trade-marks Regulations. The application must be re-filed in the name of the correct owner.
- When an application is filed in the name of a non-legal entity, no affidavit is required to correct the applicant's name to a legal entity such as changing Farm Foods to Farm Foods Ltd. or to Mary Smith trading as Farm Foods.
Note: Any change to the applicant's name should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.
II.5.2 Address of the Applicant — Paragraph 30(g)
The applicant in each case must provide the address of his/her principal office or place of business. A separate mailing address may be provided if the applicant does not wish correspondence to be sent to the foregoing. If an individual does not have a business address, the address of the place of residence will suffice. Where an applicant consists of more than one entity, as in partnerships or joint ventures, separate addresses for each entity may be supplied.
If the applicant has no office or place of business in Canada, the address of the applicant's principal office or place of business abroad as well as the name and address of the person or firm named as the representative for service must be provided. See also section II.5.6.2 of this Manual.
Note: Any change to the applicant's address should be made by the assignment section, including typographical errors. Once the change is made, a written confirmation is sent to the applicant outlining any amendments made.
II.5.3 Identification and Description of the Mark - Paragraph 30(h) and Rule 24
(See also section II.6.2 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) — Marks in a Special Form)
Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration only of a word or words not depicted in a special form, a drawing of the trademark is required.
The trademark is considered to be a word mark that is not in special form if it consists of:
- A word or words in upper case letters.
- A word or words including lower case letters.
- A word or words including numerals.
- A word or words including French accents.
- A word or words including any of the punctuation marks found on standard English or French keyboards.
The trademark must be shown in a drawing if it consists of:
- A word or words in special form.
- A word or words which incorporate foreign accent marks such as the Spanish tilde.
- A composite mark comprising word and design elements.
- A mark comprising foreign characters.
- A word or words appearing in colour (when colour is claimed as part of the mark) and the drawing is lined for colour.
If the trademark contains design elements, the phrase "The trademark is shown in the attached drawing" should be inserted in the application and the drawing annexed to the application form. The details of the drawing may be described in situations where some portions of the mark cannot be reproduced clearly in the Trademarks Journal. Reference should not be made to a specimen. The following are examples that would NOT be acceptable:
- The trademark consists of the word AJAX and a star.
- The trademark consists of the word AJAX and a star as shown in the attached drawing.
- The trademark is the design as shown in the attached specimen.
Any of the foregoing are properly described by: "The trademark is shown in the attached drawing."
Rule 24 of the Trade-marks Regulations provides that a separate application shall be filed for the registration of each trademark. The following are examples of what examiners should not accept:
- The applicant indicates willingness to accept registration of any of the following trademarks:
- JIMMY'S PIZZA
- JIMMY'S HAMBURGERS
- JIMMY'S MUFFINS
- The applicant lists the marks and indicates a preference:
- HEAVEN'S FAVOURITE (first choice)
- ECSTATICA (second choice)
- FABUTASTIC (third choice)
If an application is filed wherein the trademark is composed in whole or part of words in more than one language, the trademark must be used exactly in the manner in which it is set out in association with the goods or services. Registration No. 224,146 provides such an example, the trademark consisting of the following words:
- LA FONTAINE DE TREVI THE TREVI FOUNTAIN LA FONTANA DI TREVI
The mark was registered in this fashion with the understanding that it would be used in association with the goods exactly in the manner in which it is set above; the three versions cannot be used separately but must be used together. However, if the mark is composed of three separate versions in three languages, and where those versions are to be used separately in association with goods or services, the applicant must apply to register three separate trademarks.
II.5.4 Description of Specific Goods or Services in Ordinary Commercial Terms — Paragraph 30(a)
Paragraph 30(a) of the Trade-marks Act states that an application for a trademark must contain "a statement in ordinary commercial terms of the specific goods or services in association with which the mark has been or is proposed to be used".
A representative listing of acceptable goods and services that are considered to be ordinary commercial terms for specific goods or services pursuant to paragraph 30(a) of the Trade-marks Act can be found in the Goods and Services Manual.
For goods or services not found in the Goods and Services Manual, the acceptable listings in the Goods and Services Manual can be used to indicate by analogy the kinds of statements that would also be acceptable to describe similar goods or services. A statement of goods or services is acceptable if it as specific as, or more specific than, a related or similar listing.
II.5.4.a Ordinary Commercial Terms
Pursuant to paragraph 30(a) of the Trade-marks Act, a statement of goods or services must be "in ordinary commercial terms".
A statement of goods or services is considered to be in ordinary commercial terms where research discloses that the goods and services are set out as they are customarily referred to in the trade, where similar language and scope has been commonly used by others in the same industry to describe the applicant's goods or services. See Dubiner v. Heede International Ltd. (1975), 23 C.P.R. (2d) 128 and Mövenpick-Holding AG v. Sobeys Capital Incorporated, 2010 TMOB 41.
Moreover, simply because a statement of goods or services can be understood does not mean that it is a description that is customarily used in the trade. See Decra-Loc Canada Ltd. v. Pave Tech Inc. (1995), 61 C.P.R. (3d) 553.
Examiners will conduct research to determine whether there are numerous commercial uses of the description of goods and services in question that would demonstrate that they are described as they normally would be in the trade.
Where ordinary commercial terms cannot be found, the statement of goods or services must be clear and concise. Technical, lengthy or ambiguous descriptions of the characteristics of the goods or services are not acceptable. The statement of goods or services must be understood in the trade to describe the goods and services of the applicant.
Registered trademarks cannot be used in statements of goods or services since they are not considered to be in ordinary commercial terms.
II.5.4.b Specific Goods or Services
Goods or services in ordinary commercial terms must also be "specific" pursuant to paragraph 30(a) of the Trade-marks Act. For example, while "clothing" is an ordinary commercial term, it is not specific, whereas "exercise clothing" is considered to be specific since the type of clothing has been specified.
At times, in order to specifically define a good, the area of use of the good will be required. For example, "catalysts" is an insufficiently defined good. However "catalysts for use in oil processing" or "catalysts for use in the manufacture of industrial chemicals", are both specifically defined areas of use for "catalysts" and render the goods acceptable. This becomes especially important in cases where a trade term can have two completely different meanings, such as "crimping irons" which can be used for hair but also for mending or molding leather or iron.
Similarly, services in ordinary commercial terms, such as "consulting", may be specified by indicating the field of use, such as "consulting in the field of workplace safety".
While a statement of services may be more difficult to specify than a statement of goods, paragraph 30(a) of the Trade-marks Act requires some specificity in association with services where it is reasonable to expect that a more specific statement of services in ordinary commercial terms can be provided by an applicant. See Sentinel Aluminium Products Co. v. Sentinel Pacific Equities Ltd. (1983), 80 C.P.R. (2d) 201.
There are no provisions in the Act to limit services to those which are not "incidental" or "ancillary" to the sale of goods provided that the services are not a normal contractual requirement or within the normal expectation of the purchaser in connection with the sale of goods. See Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457. However, services must offer a benefit to a third party in order to be acceptable pursuant to paragraph 30(a) of the Trade-marks Act. Merely making the public aware of the applicant's goods does not provide a real service to the public since the only person who would benefit is the applicant. See Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528.The following three-part test will be considered in determining whether the statement goods or services is considered to be "specific" within the meaning of paragraph 30(a) of the Trade-marks Act:
- Are the goods or services sufficiently specific so that it is possible to assess whether paragraph 12(1)(b) of the Trade-marks Act applies? A mark that clearly describes a character or quality of the goods or services is not registrable.
- Are the goods or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, goods described as "computer software", without further specification, would give the applicant an unreasonably wide ambit of protection.
- Are the goods or services sufficiently specific so that it is possible to assess confusion? A mark that is confusingly similar to a registered trademark or a pending trademark is not registrable.
II.5.4.1 Broadening of Goods or Services
It is important to note that the statement of goods or services made in the initial application may later be further specified. However, Rule 31(e) of the Trade-marks Regulations prohibits an amendment to an application that would change the statement of goods or services so as to be broader than the statement of goods or services contained in the application at the time the application was filed.
II.5.4.2 Context of the Goods and Services
In some cases, the context of a statement of goods or services may serve to specify an otherwise unacceptable statement of goods or services. Goods or services may be acceptable when they are understood as being sufficiently specific in the context of the entire statement of goods or services.
For example, "cases" alone are not acceptable as they could include any type of "cases" from camera cases to pillowcases. However, in an application for "cameras, tripods, and cases", the goods "cases" would be acceptable as it is clear from the context that the "cases" would be restricted to camera cases. Similarly "delivery" services alone is not acceptable as the service could include any type of delivery from flower delivery to furniture delivery. However, an application for "restaurant services" including the service "delivery" would be acceptable as the service would be understood to mean food delivery.
Note: Goods or services which are separated by semi-colons (;) are generally considered to stand on their own and therefore must meet the requirements of paragraph 30(a) of the Trade-marks Act without regard to the other listed goods or services.
II.5.4.3 Indefinite Terms – "And the like", "And similar goods", "Including", "Related to", "Related services", "Etc.", and "Featuring"
The statement of goods or services must be specific and avoid indefinite words and phrases. As a general rule, the following indefinite terms cannot be used to specify goods or services which would require further specification: "and the like", "and similar goods", "including", "related to", "related services", "etc." and "featuring". Such terms are generally only acceptable when they follow specific goods or services.
For example, since "restaurant services" is specific, "restaurant services including take-out services" would also be acceptable. Similarly, since "mutual fund services" is specific, "mutual fund services including mutual fund distribution" would also be acceptable. However, "financial services relating to mutual fund services", would not be acceptable as financial services alone are not considered to be specific having regard to paragraph 30(a) of the Trade-marks Act.
In some circumstances, indefinite terms may be used in a statement of goods or services if they are used to provide further specification which is not essential to determining the specific nature. For example, "roller-type lint remover for use in removing foreign particles from clothing, furniture, upholstery and the like" is acceptable since the goods have already been specifically defined as being for "removing foreign particles from clothing, furniture, upholstery" and the indefinite term "and the like" merely indicates other similar uses.
As a general rule, the term "featuring" will only be acceptable when it follows specific goods or services. For example, since "casual clothing" is acceptable, "casual clothing featuring pants, dresses and shorts" is also acceptable. However, "clothing featuring pants, dresses and shorts" would not be acceptable since "clothing" is not considered to be specific pursuant to paragraph 30(a) of the Trade-marks Act.
The Office accepts the use of "featuring" where the applicant must indicate the specific contents or field of interest (e.g., books, computer games, movies, music, photos, etc.) of CDs, DVDs, optical, floppy or other discs. For example, "compact discs featuring topics of instruction in astronomy" and "digital videodiscs featuring computer games" are acceptable.
II.5.4.4 Definite Terms – "Namely", "Consisting of" or "Specifically"
Goods and services that require further specification may be specified using the definite terms "namely", "consisting of" or "specifically".
For example, "alarms" are considered to be too broad but may be further specified by using the definite term "namely" to list the type of alarms, e.g., "alarms, namely fire, car, and burglar". Similarly, "consulting" is considered to be too broad but may be further specified by using the definite term "namely", e.g., "consulting services, namely business management consulting" or by using the definite term "specifically", e.g., "consulting services, specifically capital investment consulting".
Note: The Office, for purposes of clarity, does not accept the colon (:) instead of "namely".
II.5.4.5 "In the nature of", "Such as", "Comprising", "Containing", "In particular" or "Particularly"
These terms may be acceptable in a statement of goods or services where the kind, sort or type of goods or services has been specified and the goods or services following any of these terms are considered to comply with paragraph 30(a) of the Trade-marks Act.
For example, "clothing in particular casual wear" is understood to be limited to "casual wear" which is listed as acceptable in the Goods and Services Manual. However, "clothing comprising outerwear" is not considered to be acceptable since "outerwear" is not considered to be a specific kind, sort or type of clothing. Goods stated as "gift baskets containing cheese, bread and prepared meats" are understood to be limited to the goods listed after "containing" which are acceptable pursuant to paragraph 30(a) of the Trade-marks Act.
However, "electrical systems comprising modules" would not be acceptable since "modules" are not considered to be ordinary commercial terms nor are they specific goods.
Similarly, "entertainment services such as hockey games" are understood to be limited to "hockey games" which are considered to be in ordinary commercial terms for specific services and do not encompass other services.
However, "entertainment services in the nature of music events" are not considered to be acceptable since the kind, sort or type of music event has not been specified.
II.5.4.6 "Accessories", "Equipment", "Apparatus", "Systems" and "Products"
As a general rule, goods described by the terms "accessories", "equipment", "apparatus", "systems", or "products" are not considered acceptable without further specification since they are considered to include different types of goods with different channels of trade which are not necessarily sold in close proximity.
For example, "automobile accessories" could reasonably include everything from air deodorizers to first-aid kits to portable televisions. However, "hair accessories" are acceptable since the accessories are reasonably understood in the trade to be a recognized set of items with the same channels of trade that are typically sold in close proximity, such as barrettes, clips, and side combs.
Similarly, "telecommunications equipment" could include everything from end user items such as fax machines and two-way radios, to goods that support telecommunications delivery such as communication towers and fibre optic cables. However, "hair cutting equipment" is acceptable since the function or the area of use of the equipment can be reasonably understood to be very narrow, since hair cutting is clearly understood to be a singular activity and the equipment confines itself to manual or power operated tools for cutting hair.
Another example is "teaching apparatus" which could reasonably include everything from computer software, to notebooks, to videodiscs. However, "anesthetic delivery apparatus" is acceptable since the function or area of use of the apparatus can be reasonably understood to be very narrow and the goods are understood in the trade to refer to a limited set of items in the medical field such as the anesthetic machine, vaporizers, ventilators, and monitors.
Goods including the term "systems" may be acceptable if the goods are reasonably understood in the trade to be a recognized set of items that is often sold as one complete unit, such as "suspension systems for motor vehicles", which are specific ordinary commercial terms for the system of springs, shock absorbers and linkages that connect a motor vehicle to its wheels.
Goods including the term "products" may be acceptable if the goods are ordinary commercial terms for specific goods, such as "dairy products", which are considered to be foodstuffs made from milk that are sold through the same channels of trade in close proximity to each other.
II.5.4.7 Parts and Fittings
In general, "parts" and "fittings" are acceptable if the goods for which the "parts" and "fittings" are intended are acceptable pursuant to paragraph 30(a) of the Trade-marks Act. For example, "automobile parts" and "dish washer fittings" would be acceptable since "automobiles" and "dish washers" are each considered to be ordinary commercial terms for specific goods.
Where ordinary commercial terms for the goods cannot be found, the term "devices" may be acceptable if the field and function is provided and the goods meet the requirements of the three-part test described in section II.5.4.b of this Manual). For example, the Goods and Services Manual lists as acceptable the goods "medical devices for the qualitative detection of antibodies in human specimens collected as plasma or dried blood spots" and "electronic medical devices implanted in the eye to help restore vision".
II.5.4.9 Computer Software and Computer Programs
An identification of "computer software" or "computer programs" is not acceptable without further specification. The specific function of the computer software must be provided and, if the area of use is not obvious from the function of the computer software, the specific area of use should also be provided. Acceptable entries for computer software can be found in the Goods and Services Manual.
II.5.4.10 Discs and Other Blank or Pre-recorded Media, such as Magnetic Data Carriers
The goods "pre-recorded discs" and "pre-recorded magnetic data carriers" are not considered to be specific pursuant to paragraph 30(a) of the Trade-marks Act. The specific format of these goods must be described, e.g., "floppy disks", "hard disks", "CDs", "DVDs", "CD-ROMs" and "magnetic-stripe cards". The specific content of these goods must also be described, e.g., movies, music, photos, language instruction, computer games, hotel room key cards or phone cards.
Discs that contain pre-recorded media may also specify content by indicating the specific field of interest, followed by the words "containing topics", "featuring topics" or "containing information", e.g., "featuring topics related to the game of baseball", "containing topics of instruction in astronomy", "containing information in the field of trademarks". However, "topics in the field of business consulting" is not considered to be a specific field of interest since "business consulting" is a general term that encompasses a wide variety of topics.
If the content of the discs is described by indicating only a specific field of interest, it is understood that the primary purpose of the discs is to provide information. While the discs may include various audio-visual components, the Office considers that the discs do not contain software nor do they contain books, computer games, movies, music etc., unless the applicant explicitly states that they do.
If either the pre-recorded discs or the pre-recorded magnetic data carriers contain computer software, the function of the software must be provided and, if the area of use is not obvious from the function of the computer software, the area of use should also be provided.
Note: The goods "pre-recorded audiotapes", "pre-recorded videotapes", "pre-recorded videocassettes", "pre-recorded audio cassettes", "audio tape recordings" and "video tape recordings" are considered to indicate a specific format and specific content since the nature of the media limits the content to solely magnetic recordings of sounds and visual images and are therefore acceptable as indicated.
II.5.4.11 Pharmaceutical, Veterinary, Botanical, Nutraceutical, Homeopathic, Medicinal and Medicated Preparations, Remedies, Supplements, Extracts, Functional Foods, Enhanced Water, Medicinal Marijuana and Cannabis Oil
(See also the practice notice entitled Compliance with Paragraph 30(a) of the Trade-marks Act - Pharmaceuticals)
Goods that are described as "preparations", "remedies", or "supplements" for "pharmaceutical", "veterinary", or "medicinal" use, and similar descriptions of goods, are not considered specific pursuant to paragraph 30(a) of the Trade-marks Act. The fundamental principles for determining the acceptability of goods and services described in section II.5.4.b of this Manual apply equally to such goods, and consist of the ability to:
- Assess whether paragraph 12(1)(b) of the Trade-marks Act applies;
- Assess confusion with another mark; and
- Assess whether accepting the goods as described will grant the applicant an unreasonably wide range of protection.
In addition to these principles, the Office of the Registrar, for the purposes of paragraph 30(a), requires such goods to be specified in greater detail by either:
- Naming the disease; or
- Specifying the disease group or type of disease, disorder or condition to be treated; or
- By indicating the specific type of medication.
Veterinary pharmaceuticals, preparations or medicines are often divided into areas relating to specific animals or groups of animals, and often relates to the prevention rather than treatment of disease. For example, "pharmaceutical preparations for the treatment of infectious diseases, namely respiratory infections, eye infections" require the type of "infectious diseases" to be specified. However, "veterinary pharmaceutical preparations for the treatment of infectious diseases in poultry" require only the type of animal or group of animals to be specified.
Intangibles such as "Web sites", "electricity", "domain names", "steam" and "waste gas" should not be listed in a statement of goods since they are considered to be services, such as the following from the Goods and Services Manual: "website design", "web hosting", "energy recycling services that capture and converts wasted energy into electricity and useful steam", "selling domain names", "domain name registration", and "waste gas treatment services". Where an application lists such intangibles in the statement of goods, and it appears that the applicant may actually be offering services, the examiner will so advise the applicant.
II.5.4.13 Advertising, Promotion and Marketing – Benefit to a third party
(See also the practice notice entitled Compliance with Section 4 and Paragraph 30(a) Advertising, Marketing and Promotional Services)
In view of the Ralston Purina Co. decision, supra, examiners will question services where it is not clear that a real service is provided to the public. The criterion is whether a third party benefits from the service. For example, if the applicant's "advertising" and "marketing" services simply make the public aware of the applicant's own products, there is not considered to be a benefit to the public. In order to determine if the service is being offered to a third party, examiners may ask for further specificity by questioning the means or manner by which the service is provided. For example, the following would be considered acceptable:
- "Database marketing services, in the form of compiling customer specific databases for marketing purposes and consulting, designing, printing, and collecting marketing information"
- "Promoting the sale of credit card accounts through the administration of incentive award programs".
In circumstances where the public does benefit from promotional services, in spite of the fact that they relate to the promotion of the applicant's own goods and services, the services will be considered acceptable. For example, "providing coupon programs pertaining to a line of food products" is considered a service within the meaning of section 4 of the Trade-marks Act.
Examiners will question "cooperative advertising" as it is generally understood to be a cost sharing arrangement between the retailer and supplier for the advertising and promotion of their products.
In order to be acceptable, the statement of services must be described so that it is clear that the services are offered to a third party, and the services must be described in specific and ordinary commercial terms in compliance with paragraph 30(a) of the Trade-marks Act.
II.5.4.14 Services Related to the Electronic Transmission of Data
(See also the practice notice entitled Compliance with Section 30(a) — Programs - Data Transmission Services)
As a general rule, services including the term "data" such as "data transmission services", "electronic transmission of data", "data and voice telecommunications" or "electronic transmission of data and documents via computer terminals" or services that relate to data such as "delivery of messages by electronic transmission" or "electronic-store-and-forward messaging" are not acceptable without further specification since "data" in this context can include any information in numerical form that can be digitally transmitted or processed (including audio, video, voice, or any other form of data).
If the essential nature of the services involves providing data to customers, the applicant should set out the specific nature of the data (e.g., financial advice, client lists, video news show, music, etc.), and the general means by which it is communicated to the customer (e.g., online databases, online stores, Web sites, email, pager, or cellular text messages, etc.).
If the essential nature of the services involves providing the ability to communicate (i.e., transmission services), then the applicant should set out the specific means of communication (e.g., satellite, wireless, telephone lines, cable network, cellular, wide-area network, fax, etc.), and the general nature of the data transmitted. It is understood that the applicant may have limited control over the exact content being transmitted if they only supply the means of transmission.
II.5.4.15 Telecommunication-Related Services
Generally, services that include the term "telecommunications" (e.g., "telecommunication services"), or that relate to "telecommunication services" (e.g., "communication services", "information technology services", "electronic commerce services"), are not considered acceptable without further specification, since "telecommunication" in this context can include any communication at a distance. Therefore, services that either include the term "telecommunications" or relate to "telecommunication services" should specify the nature of the services (i.e., the specific type of communication) and the field of the services (i.e., area of business the applicant provides these services).
For example, the following would be considered acceptable:
- "Providing multiple user access to a global computer network".
In certain circumstances, the services applied for are so specific that the area of business is obvious from the specific type of communication.
For example, the following would be considered acceptable:
- "Videoconferencing services"
- "Wireless digital messaging services"
- "Personal Communication Services" or
- "Radio broadcasting services".
II.5.5 Naming Date of First Use or Making Known — Paragraphs 30(b) or (c)
Consistency in the classification and grouping of goods or services into classes is extremely important as regards the date of first use of those goods or services. When an applicant seeks to register a trademark that has been used or made known in Canada, it is advantageous to specify the earliest date of use or making known which can be substantiated in association with the goods or services falling within each general class.
II.5.5.1 Use of a Trademark
The concept of use is important in order to establish a person's right to registration of a trademark and to ensure maintenance of that registration once obtained. See paragraph 18(1)(c) and section 45 of the Trade-marks Act.
Section 2 of the Trade-marks Act defines "use" in relation to a trademark to mean "any use that by section 4 is deemed to be a use in association with goods or services."
Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present.
Subsection 4(1) states that "a trademark is deemed to be used in association with goods if, at the time of the transfer of the property in or possession of the goods, in the normal course of trade, it is marked on the goods themselves or on the packages in which they are distributed or it is in any other manner so associated with the goods that notice of the association is then given to the person to whom the property or possession is transferred."
As the words "normal course of trade" imply, the use must be by way of a normal commercial transaction. See the following cases:
- Gordon A. MacEachern Ltd. v. National Rubber Co. Ltd. (1963), 41 C.P.R. 149.
- Union Electric Supply Co. Ltd. v. Registrar of Trade Marks (1982), 63 C.P.R. (2d) 179.
The word "trade" in subsection 4(1) contemplates some payment or exchange for goods supplied. Free distribution of promotional material or advertising gimmicks displaying the mark may not be considered trade use. See the following cases:
- C.I.S. Ltd. v. Sherren (1978), 39 C.P.R. (2d) 251 at 257-258.
- Joseph E. Seagram & Sons Ltd. v. Corby Distilleries Ltd. (1978), 42 C.P.R. (2d) 264 at 267-268 (following Hospital World Trade Mark  R.P.C. 595 at 598-599)
- Ports International Ltd. v. Registrar of Trade Marks (1983), 79 C.P.R. (2d) 191 at 193.
Subsection 4(2) of the Trade-marks Act states that "a trademark is deemed to be used in association with services if it is used or displayed in the performance or advertising of those services."
This implies that services are in fact being provided or offered in Canada. Consequently services that are advertised in Canada must actually be performed in Canada. See the following cases:
- Porter v. Don the Beachcomber (1966), 48 C.P.R. 280 at 287.
- Marineland Inc. v. Marine Wonderland and Animal Park Ltd. (1974), 16 C.P.R. (2d) 97 at 109.
There is no definition of "services" in the legislation. Consequently, there is no distinction between primary, incidental or ancillary services. From the case law it would seem that as long as some members of the public receive a benefit from the activity, it may be considered a service. See the following cases:
- Kraft Ltd. v. Registrar of Trade Marks (1984), 1 C.P.R. (3d) 457.
- Carling O'Keefe Breweries of Canada Ltd. - Les Brasseries Carling O'Keefe du Canada Ltée trading as Carling O'Keefe Breweries v. Anheuser-Busch, Inc. (1985), 4 C.P.R. (3d) 216.
- Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528.
Subsection 4(3) of the Trade-marks Act states that "a trademark that is marked in Canada on goods or on the packages in which they are contained is, when the goods are exported from Canada, deemed to be used in Canada in association with those goods."
It has been stated that in the context of the Trade-marks Act as a whole, the words "exported from Canada" must be taken to mean "sent from Canada to another country in the way of commerce", or "transported from Canada to another country in the course of trade". See the following cases:
- Molson Companies Ltd. v. Moosehead Breweries Ltd. (1990), 32 C.P.R. (3d) 363 at 372-373.
- National Sea Products Ltd. v. Scott & Aylen (1988), 19 C.P.R. (3d) 481.
II.5.6 Trademark Agents and Representatives for Service
II.5.6.1 Trademark Agents
Rule 2 defines a trademark agent as a person whose name is entered on the list of trademark agents referred to in Rule 21 of the Trade-marks Regulations.
Rule 8(2) provides that correspondence concerning the prosecution of the application will be with a trademark agent, where the trademark agent has been authorized to act on behalf of the applicant in one of the following ways:
- the trademark agent files the application with the Registrar as the agent of the applicant;
- the trademark agent is appointed as the agent of the applicant in the application or an accompanying document; or
- the trademark agent is appointed as the agent of the applicant after the application is filed.
As per Rule 11(1), the appointment of a trademark agent need not be made in writing, but the Registrar may require the agent to file a written authorization from the person or firm that the agent claims to represent, where the circumstances described in any of Rules 8(2)(a) to (c) have not occurred or the appointment has not been clearly established.
Note: Rule 9 provides that where a trademark agent is not a resident of Canada, the agent shall appoint an associate agent who is a resident of Canada, and where an associate trademark agent is not appointed, the Registrar shall correspond with the applicant.
II.188.8.131.52 Inactive Agents
No correspondence should be sent to or received from an inactive agent. An "inactive agent" is an agent whose name has been removed from the list of trademark agents pursuant to Rule 22(3) of the Trade-marks Regulations. In such cases a letter should be sent directly to the applicant to inform them of the situation.
The correspondence will be sent directly to the applicant, a copy of which will be sent to the inactive agent, indicating that the Trademarks Office cannot correspond with the agent since the agent is inactive. Please note that examiners must amend the correspondence MANUALLY to indicate the applicant's name and address instead of the agent's.
In all cases, should the agent be inactive but a representative for service is appointed on the file, the Office will correspond with the applicant c/o the representative for service.
II.5.6.2 Representatives for Service
Section 2 of the Trade-marks Act defines a representative for service as the person or firm named under paragraph 30(g), subsection 38(3), paragraph 41(1)(a) or subsection 42(1) of the Trade-marks Act.
Paragraph 30(g) requires that if the applicant has no office or place of business in Canada, the applicant must provide the name and address in Canada of a person or firm to whom any notice in respect of the application or registration may be sent, and on whom service of any proceedings in respect of the application or registration may be given or served with the same effect as if they had been given to or served on the applicant or registrant himself.
Note: Since Rule 8(1) of the Trade-marks Regulations provides that "correspondence relating to the prosecution of an application for the registration of a trademark shall be with the applicant," a representative for service cannot act on behalf of the applicant. Therefore, where a trademark agent has not been appointed, correspondence concerning the prosecution of the application will be with the applicant, in care of the address of the representative for service.
If paper or electronic correspondence is received from the representative for service, a letter should be sent directly to the applicant to inform them of the situation, a copy of which will be sent to the representative for service, indicating that the Trademarks Office can only correspond with the applicant or their agent.
In such cases, and if the applicant's response date has lapsed, the applicant will be considered in default in the prosecution of the application and will be granted a two-month period to provide a proper response.
If the applicant's response date has not lapsed, the applicant will still be considered in default in the prosecution of the application, however will have the remainder of the period to provide a proper response.
II.5.6.3 Name and Address Changes
A list will be kept for all trademark agents and representatives for service.
All name and address changes for a trademark agent or representative for service will be handled by the Formalities Section.
The trademark agent or representative for service will not be required to supply a list of affected trademarks (registered or pending).
The change will be reflected on all trademark applications and registrations for which the person or firm acts as the trademark agent or representative for.
Paper files and existing paper documents will not be amended to reflect the change. However, the new name and/or address will appear on subsequent correspondences.
If the individual or firm wishes to be entered as the trademark agent and the representative for service, it should be clearly stated in the correspondence.
II.5.7 Applicant's Statement of Claim of Entitlement — Paragraph 30(i)
Pursuant to paragraph 30(i) of the Trade-marks Act, the application must include the statement that "the applicant is satisfied that he is entitled to use the trademark in Canada in association with the goods or services described in the application". This establishes that all information and supporting evidence, including revisions or additions of same, have been submitted in good faith, and that the application as it stands is approved by the applicant. See also section IV.8 of this Manual.
II.5.8 Signature of Applicant
A signature is not required for filing a trademark application. The Trademarks Office will also accept trademark applications and letters of prosecution which have been stamped with electronic signatures such as those currently used by a number of firms.
An application by a partnership may be signed by one of the partners if the partners are named. If the partnership comprises general and limited partners, the application may be executed by a partner who can bind the partnership. An application by a corporation may be signed by an officer authorized to sign on its behalf, and the title of the signing officer should be provided. A trademark agent may also sign on behalf of the foregoing entities. The signature of each of the parties in a joint venture may be affixed to the application, unless it is signed by their trademark agent.
II.6 Content Appearing in Some Applications
II.6.1 Predecessor in Title — Paragraphs 30(b), (c) and (d)
Pursuant to subsection 50(1) of the Trade-marks Act, use accrues to the applicant if, under certain conditions, use of the trademark is by a licensee. Wherever applicable, a predecessor in title must be named, indicating previous ownership. For example, in order to establish that use of the applicant's trademark in Canada has been continuous, the applicant must provide a list of all predecessors in title in descending order to cover the period from the date of first use to the present.
II.6.2 Drawings — Paragraph 30(h) and Rules 27(1) and 28
(See also section II.5.3 of this Manual and the practice notice entitled Compliance with Paragraph 30(h) - Marks in a Special Form)
Paragraph 30(h) of the Trade-marks Act provides that unless the application is for the registration of only a word or words not depicted in a special form, a trademark application shall contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. Drawings will be required in the following instances:
- The mark is a word composed of any lower case lettering and the lower case lettering is a feature of the trademark.
- The word(s) appears in any special arrangement other than on horizontal lines.
- A claim to specific colour or colours is made in respect of the whole or part of the mark and the drawing is lined for colour.
- The word(s) includes foreign language accents other than those used in the French language. Because Canada recognizes both French and English as its official languages, accents used in the French language are not considered to be design characteristics although accents in other languages may be.
- The mark is comprised of foreign characters. (Note: Pursuant to Rule 29, the applicant must provide both a translation and transliteration which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.)
Furthermore, the Office does not consider that an application for the registration of a word or words is in special form merely because it includes any of the following punctuation marks:
the period (.), the question mark (?), the exclamation mark (!), the comma (,), the semicolon (;), the colon (:), the ellipsis (…), parentheses ( ), brackets [ ], quotation marks (" "), single quotation marks (' '), inverted commas ( ‘ '), the dash (-), the asterisk (*), the diagonal (/ \), the dollar sign ($), and the underscore ( _ )
Accordingly, the inclusion of any punctuation marks commonly found on an English or French keyboard will not render the trademark to be in special or design format.
II.6.2.1 Form and Size — Rule 27(1)
The Trademarks Office electronically captures all designs submitted with applications and makes these available for viewing and searching through electronic means. To help ensure that the Office can capture a good quality image of the design, the original should be produced in a high resolution and/or of a good quality. The size should be limited so as to meet the space requirements for reproduction in the Trademarks Journal. Currently, the graphical file must be in TIFF format and be smaller than one megabyte in size to be accepted by the electronic filing system.
The drawing is a representation of the essential constituents of the trademark and therefore should not be enclosed in a rectangle or circle or the like, unless these are features of the mark as used or proposed for use. Neither should the following appear on the drawing: the words "Marque de fabrication", "Marque Déposée", "MD", "Trademark", "TM", "Trademark Pending" or "Trademark Registered" in full, or in abbreviated form, or the "R" symbol enclosed in a circle (®).
Matter which may be associated with trademarks on the packages or containers in which goods are offered for sale, but which is not a component of the mark, should not appear on the drawing. Examples of such matter include listings of ingredients, size, weight, volume, alcoholic content, the address of applicant, phone and fax numbers. Examiners may either ask for authorization to delete such matter from the drawing on file or request a revised drawing.
II.6.2.2 Drawings Lined for Colour — Rule 28
Where colour is claimed as part of the trademark for which protection is sought, the applicant should so indicate by describing the colour claims and, if such description is not clear, by lining the drawing for colour in accordance with the colour chart shown below pursuant to Rule 28(2) of the Trade-marks Regulations. Stippling, light and heavy lining, shades of grey, or anything similar which may appear on the drawing will not be regarded as possible colour features of a trademark by examiners, unless there is some other indication that the color grey may be a feature of the trademark, such as the description of the mark as indicated on a certified copy of a foreign registration.
If the drawing furnished with the application is lined and the application contains no reference to a colour claim, examiners will inquire as to the purpose of the lining on the drawing, i.e., whether colour is a feature of the trademark. If colour is claimed as a feature of the trademark, the applicant will be required to provide a statement to the effect that "Colour is claimed as a feature of the trademark and the drawing is lined for the colour(s)…" with the specific colour or colours indicated. This statement is understood to be a claim to colour as an integral part of the trademark, and therefore will be included in the particulars of the application when advertised, and of the registration.
The applicant may also respond with the statement that "The lining is a feature of the mark but does not indicate colour" or that "The lining is used to indicate shading but colour is not a feature of the mark." These statements will also be included in the advertisement of the mark and the registration particulars since they serve to clarify the purpose of the lining.
If an applicant states that the drawing is lined for colour, e.g., red, but the colour red is not claimed as a feature of the mark, the statement that "The drawing is lined for the colour red but the colour red is not claimed as a feature of the trademark" which will be included in the particulars of the application upon its advertisement in the Trademarks Journal.
II.6.2.3 Colour — Word Description
(See also the practice notice entitled Colour Claims: PANTONE)
Paragraph 30(h) of the Trade-marks Act provides that unless a trademark application is for word(s) not depicted in special form, it must contain a drawing of the trademark and such number of accurate representations of the trademark as may be prescribed. If the applicant claims colour(s) as a feature of the trademark, Rule 28 of the Trade-marks Regulations requires that the said colour(s) must also be described.
In Apotex Inc. v. Searle Canada Inc. (2000), 6 C.P.R. (4th) 26 (F.C.T.D.), Rouleau J. set out the rationale behind paragraph 30(h) and the requirement for precision in a trademark application:
The onus is on the applicant for a mark to show its compliance with this requirement of the legislation. The drawing submitted must be a meaningful representation of the applicant's mark in the context of the written description appearing in the application …. The rationale behind these statutory requirements is that a trademark registration is a monopoly and must therefore be precise in terms of its scope.
Where the colour claim is for a colour not found in Rule 28 of the Trade-marks Regulations, if applicable, the applicant is required to include a description of the colour code and reference system for each colour(s) claimed. Should the name of the colour system be the subject of a registered mark, the name of the colour system must be set out in uppercase letters and must include the statement that the name of the colour system is a registered trademark. The following is an example of an acceptable description: "the colour turquoise (PANTONE 15-5519)" is claimed as a feature of the mark. "PANTONE is a registered trademark".
While the Office does not endorse or recommend any one colour identification system, any colour reference used should be easy to identify and reproduce by the general public.
If the application contains a colour description which is readily visualized and clear, examiners will not require lined drawings.
- Example 1: "The upper band is yellow. The central band is green. The lower band is red."
- Example 2: "The letters are blue on a white background. The lower panel is red with the leaf in white."
If, however, the application contains a colour description that is not readily visualized, examiners will request that lined drawings be furnished.
- Example: "The leaves and border are green and orange. The flowers and ribbon are pink, yellow and mauve."
II.6.3 Specimens — Rule 29(c)
While specimens are not required to file an application, Rule 29(c) of the Trade-marks Regulations provides that the Registrar may require an applicant to furnish a specimen of the trademark as used. Specimens are required in some cases since the information provided on actual labels, packages, displays and the like may help examiners to more clearly understand the nature of the goods or services associated with the trademark. If there is any discrepancy between the trademark as applied for and the specimen submitted, examiners will request clarification before proceeding.
If colour is claimed as a feature of the trademark in the application, the specimen submitted should be in the colour(s) claimed.
When actual labels, containers or displays showing the trademark as used cannot be sent because of size or material limitations, photographs of the goods, labels, containers, etc., will suffice. Specimens such as stampings, dies, invoices, or mailing labels may be acceptable as long as they show the trademark as used.
Applicants should not send valuable items or containers such as aerosol spray cans, the former because they risk being damaged or lost, the latter because they are dangerous if punctured or exposed to heat. Business cards or letterheads may be submitted as specimens to show trademark use in association with goods or services. An applicant may also submit a flyer or an invoice as long as it shows the mark as used in association with the goods or services.
II.6.4 Nice Classification
The Nice Classification is an international classification of goods and services consisting of a list of 34 classes for goods and 11 for services established by the Nice Agreement.
Trademark examiners will conduct research on how goods and services are used in the trade in order group them according to the classes of the Nice Classification.
While goods or services must be stated "in ordinary commercial terms" and "specific", even where goods or services are considered to comply with paragraph 30(a), additional details may be required in order to be grouped according to the classes of the Nice Classification.
The Goods and Services Manual should always be consulted in order to ascertain the exact classification of goods or services. However, for goods or services not found in the Manual, examiners will consult the Class Headings and Explanatory Notes, as well as the General Remarks of the Nice Classification to determine the appropriate class for particular goods or services.
When a new edition of the Nice Classification is in place, any changes apply only to Canadian applications filed on or after the effective date of the change.
When an application has been filed prior to the effective date of the new edition, applicants have the option of remaining in compliance with the edition of the Nice Agreement that was in effect at the date of filing or amending the application to comply with the current edition during examination.
An applicant may voluntarily submit an amended application to bring it in line with the current edition of the Nice Classification. However, if an applicant choses to do so, the application must conform to the current edition for ALL the goods or services in the application. Applicants cannot choose to have some goods or services conform to the current edition and other goods or services conform to the requirements of a previous edition.
II.6.4.1 Grouping Goods and Services According to the Nice Classification
Goods or services that could have a number of uses should generally be classified in a single class according to their primary function. If goods or services are normally in a particular class, applicants cannot obtain registration in another class merely by identifying a use or purpose for which the goods or services could then fall into another class or classes.
For example, "essential oils" are classified in Class 3. This cannot be in Class 1 even if the applicant indicates that it is used in the manufacture of other finished products. An "essential oil" is always placed in Class 3 regardless of its ultimate use.
However, if it can be shown that goods or services could have a number of uses, then two or more classes could be appropriate. The statement of goods or services must clearly indicate the basis for the multiple Nice classification with language that is appropriate to the respective classes.
For instance, the identification of "clock radios" could be classed in Class 9 with respect to "radios" and "Class 14" with respect to clocks. Examiners should not question the classification by an applicant as long both indicated classes are correct; or the individual goods or services are in an appropriate class. In this case, either Class 9 or 14 or both would be appropriate.
However, where applicants have not indicated an appropriate class, examiners will need to request confirmation.
For example, if the "clock radio" is primarily a radio which incorporates a clock (in Class 9) or if it is primarily a clock which incorporates a radio" (in Class 14), a "clock radio" cannot be placed in any other class.
Services are typically classified according to the branches of activities and their field of use. However, certain services can be placed in multiple classes on the basis of the purpose for which the services activity is rendered. In those cases, the purpose of the activity will determine classification.
For example, the term "business planning" which would normally be in Class 35, but if it concerns any financial aspect of "business planning" then it could be placed in Class 36.
Since the Goods and Services Manual accepts "business planning" as acceptable, examiners will not question the services if the applicant has placed "business planning" in Class 35.
Where the applicant has not indicated an appropriate class, examiners will request an applicant confirm the purpose for which the service is being rendered.
For example, an examiner will require further clarification of the services if an applicant places "business planning" in Class 36, as it will be necessary for the applicant to identify the type of business planning being done to justify its placement in this class, such as "business planning, namely, investment planning".
II.184.108.40.206 Material composition
As mentioned above, a finished product is typically classified according to its function and purpose. However, if a statement of goods is specific, but the goods could be placed in more than one class depending on the material composition, then the applicant should identify the material composition of the good.
For example, while the goods "statues" are considered to be in ordinary commercial terms for specific goods, they must be further defined in order to be grouped into the appropriate class. The classification of goods such as "statues" will depend upon its material composition. For example, "statues of non-precious metal" in Class 6; "statues of precious metal" in Class 14; statues made of wax, wood, plaster, or plastic would fall into Class 20; and "statues made of glass or porcelain" in Class 21.
However, where an item is made for a particular industry, despite the fact that knowledge of that industry would indicate that the goods would be made from various materials, the precise material composition may not be required. For instance, structural parts of an automobile can be made of metal or plastic, but an examiner would not question the material composition of the parts, since automobile parts would be placed in Class 12.
II.220.127.116.11 Additional considerations
Reference to other classes
Care must be taken to avoid statements such as "transport services of all goods in Classes 32 and 33" or "computer software in the field of services in Classes 41 and 45" are not acceptable. While "transport services" and "computer software" can still be grouped according to the classes of the Nice classification, these statements are not considered to be in ordinary commercial terms for specific goods or services. The applicant must state the goods being covered in Classes 32 and 33, e.g., "food transportation services" and must identify the services in Classes 41 and 45, e.g., "computer software for computer virus protection".
The exclusion of other classes, such as "goods not included in other classes", is also not acceptable since such wording is not considered to be ordinary commercial terms for specific goods.
Class and Context
In some cases, the context of the goods or services within a particular class may serve to clarify an otherwise unacceptable statement of goods or services. When a statement of goods or services includes a term that has multiple meanings, the class in which it is placed can aid an examiner to determine the meaning of the good or service.
The statement "pants, jeans and mufflers" in Class 25 would not require further clarification, as the class and context serves to indicate that the applicant is seeking registration for clothing and not for engine mufflers in Class 7.
However, if the applicant simply applied for the goods "mufflers" alone, this statement is void of context and will need to be redefined pursuant to paragraph 30(a). Once redefined, the examiner will then be in a position to determine if the applicant has placed "mufflers" in the appropriate class. If the classification is incorrect, the examiner will either inform the applicant that the classification is incorrect if issuing a report or simply approve the application without reference to the Nice class.
The goods "skin lotions" are understood to mean cosmetics in Class 3 and are therefore not medicated. However, if the goods are medicated, the "skin lotions" must be further defined to justify their placement in Class 5. See also section II.5.4.11 of this Manual for more information on defining medicated products.
Lastly, care must be taken concerning the scope of goods or services when viewed in the context of the class in which it is applied for. For example, an application for various articles of "clothing" in Class 25 would not include "articles of clothing for protection against accidents" in Class 9. Similarly, an application for various types of "cases" in Class 18 could not include within its scope "violin cases" in Class 15.
II.6.4.2 Kits, Gift Baskets and Goods Sold as a Unit
Goods such as "kits", "gift baskets" and goods described as being "sold as a unit" must comprise goods belonging to a single class.
The Office classifies "kits" according to their purpose, e.g., "nail care kits" in Class 3, "first-aid kits" in Class 5, "sewing kits" in Class 26 and "Easter egg colouring kits" in Class 28.
Accordingly, "kits" that have no stated purpose need to list the items of which the kit is composed. Moreover, if a kit having no stated purpose is composed of goods that can be classified in various classes, the applicant must list each good under its appropriate class.
The same process for "kits" should be applied to the classification of "gift baskets". For example, "gift baskets of fresh fruits" will be placed in Class 31, the Class which contains fruit. However, for "gift baskets containing cheese, crackers and wine", the applicant would have to list each good under its appropriate class, e.g., "gift baskets containing cheese" in Class 29, "gift baskets containing crackers" in Class 30, and "gift baskets containing wine" in Class 33.
Similarly, goods comprising items that are "sold as a unit" must comprise goods belonging to a single class, e.g., "computer software for tax preparation and electronic instructional manuals sold as a unit" would be placed in Class 9.
Acceptable Nice Classes for kits, gift baskets and items sold as a unit can be found in the Goods and Services Manual.
II.6.4.3 Examiner correspondences
No classes indicated
Where appropriate, examiners will inform applicants that the Trade-marks Office has begun accepting the International Classification of Goods and Services for the Purposes of the Registration of Marks ("the Nice Classification") established by the Nice Agreement and administered by the World Intellectual Property Organization ("WIPO").
Examiners will inform trademark owners that they now have an option to voluntarily amend their trademark applications and registrations to group their goods and services according to the classes of the Nice Classification.
Incorrect classes indicated with other objections or requirements
A trademark application will retain the class numbers identified by the applicant until the application has been assigned to an examiner.
After considering all substantive objections, the examiner will review the goods and services to ensure the applicant provided the proper Nice class. If the examiner cannot determine the proper Nice class, the examiner will issue a report wherein the examiner will also request a revised application to correct the Nice class.
Should the trademark owner choose not to amend the grouping of the goods and services according to the examiner's instructions, the application or registration will proceed without any classes of the Nice Classification.
Incorrect classes with no outstanding objections or requirements
Examiners will assess goods or services that have been grouped according to the Nice Classification.
Where there are no outstanding objections or requirements, and the goods or services are correctly grouped according to the Nice Classification, the classes will be entered into the database.
However, where there are no outstanding objections or requirements but the goods are incorrectly grouped according to the Nice Classification, the application will be approved for advertisement without indication of any Nice classes. Since the legislative provisions regarding Nice Classification are not yet in force, the Office does not have the authority to request the applicant to conform to these provisions.
Additional information for classification
While chemicals for use in industry and other general applications are typically found in Class 1, this can vary when a particular use is indicated. For example, hydrogen peroxide is in Class 1, while hydrogen peroxide for cosmetic purposes is in Class 3 and hydrogen peroxide for medical purposes is in Class 5.
Many products in this class are chemicals used for the manufacture of a finished product. However, the finished product would be placed in a different class. For example, unprocessed artificial resins that take the form of viscous liquids are in Class 1, but when the artificial resins are manufactured into semi-finished product, they are placed in Class 17 [ie: artificial resins in the form of a rod or sheet]. Further manufacture would then turn these semi-finished products into finished goods that can typically be found in Class 20.
As you will note from the Class Heading, manures are also included in this class. Therefore, similar products for enhancing plant growth are also found in this class. However, pesticides, fungicides and herbicides are in Class 5 because their primary function is to prevent and treat plant diseases, despite the fact that the use of these products could result in plant growth.
Chiefly, paints, varnishes, lacquers and preparations that are used as coatings either for decorative or protective purposes are placed in Class 2. However, protective coatings in Class 2 are usually in the form of paints or oils used on wood or to prevent rust. Oils for the preservation of masonry and leather are in Class 4 with the industrial oils. Materials for making and coating roads, fireproof cement coatings, bituminous coatings for roofing and road coatings can be found in Class 19 as these are types of building materials and their primary use is in building construction.
Raw natural resins are in Class 2, as they are considered to be used in primers, protective coatings, paints, lacquers and varnishes but unprocessed artificial resins are in Class 1 and artificial resins as a semi-finished product is in Class 17.
If we look at the Explanatory Note, Class 1 includes mainly "chemical products used in industry, science and agriculture, including those which go to the making of products belonging to other classes". The term "chemical products" refers to man-made as well as natural products. This would then include synthetic products such as artificial resins and of natural products or raw materials such as raw salt, protein, albumin and lactose.
However, certain natural materials in their raw state are not in Class 1 due to their function or because they are closely associated with goods belonging in other classes. The following are some examples:
- natural resins in Class 2;
- wax and petroleum in Class 4;
- rubber in Class 17; and
- chalk in Class 19.
Mordants can also be found in Class 1 and Class 2. The mordants in Class 1 are corrosive chemicals (usually acids) used primarily for etching and the mordants in Class 2 are those used to prepare a surface to accept a dye. As with the raw natural resins, the function of these mordants and their close association with other Class 2 goods justifies their inclusion in Class 2 rather than in Class 1.
Class 3 covers non-medicated soaps, non-medicated cosmetic products, non-medicated personal hygiene products and general cleaning or polishing preparations. However, the function of the cleaning and polishing preparations needs to be considered to determine the appropriate class. As seen with hydrogen peroxide in Class 1, ammonia is in Class 1 when used for industrial purposes, but in Class 3 when used as a detergent. Lotions and soaps are in Class 5 when used for pharmaceutical purposes, but in Class 3 when used for non-medical cosmetic purposes.
However, essentials oils are always placed in Class 3 despite their function or purpose.
Most of the items in this class are a type of preparation, but there are some products that have been placed in this class because they are either used for cleaning purpose or are impregnated with a preparation in Class 3. The following are some examples:
- abrasive paper;
- alum stones;
- cotton sticks;
- pumice stones; and
- cloths impregnated with a non medicated cosmetic lotion or a detergent for cleaning.
Since Class 3 typically covers preparations, most cosmetic and cleaning devices for household use are usually found in Class 21, such as electric toothbrushes and combs.
Class 4 is predominantly industrial oils, greases and lubricants, as well as fuels and illuminating substances.
Candles and wicks for lighting are in Class 4, even if they are scented, as they are considered to be illuminants and the illuminant that makes them work is wax.
This class also includes dust absorbing, wetting and binding compositions and these are included in Class 4 because they are usually oil- or grease-based products. [ie: for sweeping roads or in buildings to avoid that dust keeps floating in the air.] These products can also be used to absorb and prevent chemical spills from expanding and damaging the environment.
However, machines, apparatus and lamps that use Class 4 fuels and illuminants are not placed in Class 4. For example, all lamps powered by fuel for lighting are in Class 11.
The majority of goods in Class 5 are pharmaceutical, veterinary and sanitary preparations. As such, all types of dietary supplements are also placed in Class 5.
It is important to note that foodstuffs and beverages, such as cereal bars and meal replacement beverages, that contain dietary supplements, or that are lower in calories, salt, sugar or fat, are classified in Class 5 only if they are specified as being for medical or veterinary purposes. If they are not designated as being for medical or veterinary use, they must be classified in the appropriate food or beverage classes 29, 30, 31 or 32.
Another thing to consider is that the sanitary preparations in Class 3 are non-medicated and used in cleaning or grooming [i.e.: non-medicated soaps and non-medicated shampoos], but sanitary preparations for medical purposes are in Class 5 as they are used to sterilize or disinfect [i.e. medicated shampoos, medicated soaps, medicated lotions and medicated dentifrices].
As mentioned previously, disinfectants, preparations for destroying vermin, fungicides and herbicides are also in Class 5 because they destroy harmful microorganisms, animals and vegetation, thereby contributing to the prevention of human, animal or plant diseases.
Blood, living tissues and biological tissue cultures are also in Class 5 when they are specified as being for pharmaceutical, medical or veterinary purposes, if not, they are placed in Class 1 if they are for industrial or scientific purposes.
There are some finished products in Class 5, such as babies' diapers and bandages for dressings. These were placed in this class because in French, "produits hygiéniques" also refers to women's menstrual products. Therefore, based on this part of the Class Heading, absorbent pants and napkins for incontinence and babies' diapers were placed in this class.
Generally, medical apparatus are placed in Class 10, such as bandages used to support muscles or any part of the body, or for orthopædic purposes.
Class 6 includes unworked or semi-worked materials, namely common metals and their alloys, and ores. It also includes finished goods that are classified in this class due to their material composition.
As mentioned previously, goods that cannot be classified according to function or purpose are classified according to the material of which the goods are made. (See: II.18.104.22.168 Material composition.)
Therefore, if these goods are made of common metal, they belong in Class 6. An example of these types of products are figurines and statuettes, as their function or purpose cannot be identified in any of the Class Headings or Explanatory Notes. Therefore, they are classified according to their material composition. For example, in Classes 6, 14, 16 or 19 if they are made, respectively, of common metals, precious metals, paper, or marble. See the Goods and Services Manual for more examples.
As such, identical items can be placed in Class 6 when the goods are made of metal and in another class when not made of metal. Generally, building materials and hardware of metal are in Class 6, while building materials not of metal are in Class 19 and non-metal hardware is in Class 20.
As many of these items can be composed of both metal and non-metal components, classification will depend on the predominating component.
Goods made of common metal should not be in Class 6 if they can be in another appropriate class regardless of material composition. For example, machines, motors and engines should not be classified in Class 6 even though they may be made primarily of metal. Goods of this nature should be placed in Class 7.
A good way to remember what should be placed in this class is that goods in Class 6 are goods made of metal that do not perform a task (inert pieces of metal). Goods that perform a task are typically found in other classes like machines in Class 7 and tools in Class 8.
This class primarily covers power-driven machines and machine tools, parts of those machines, motors and engines and parts of motors and engines and should be considered together with Classes 8 and 12.
The machines and machine tools in Class 7 are usually industrial or household machines that use mechanical or electrical power to perform a task such as cleaning, cutting, shaping, welding, drilling, pumping, assembling and loading/unloading.
Therefore, the classification of a tool depends on its mode of operation. In theory, power-operated tools are in Class 7 while hand-operated hand tools are in Class 8. For example, "hammers" are in Class 8 and "electric hammers" would be in Class 7. However, there are certain hand tools or implements that are placed in Class 8 even if they are electric, like depilation appliances, nail clippers and razors. They are not in Class 7 because they do not fit in the concept of machines or machine tools.
Parts of machines are also classified in Class 7. Goods that normally belong in other classes, such as hammers mentioned above and brushes in Class 21, are placed in Class 7 when they are specified as being a "parts of a machines".
Motors and engines, whether for machines or for vehicles, are in Class 7, except those for land vehicle motors in Class 12. The same principle applies to machine coupling and transmission components; they are all in Class 7, except for couplings and transmission components for land vehicles, which belong in Class 12.
However, parts of all kinds of motors, including those parts of land vehicle motors are placed in Class 7. Why? It is considered that motors for land vehicles are usually assembled by the vehicle manufacturer itself and should thus be in the same class as the land vehicles, whereas the motor components are usually made by a different manufacturer regardless of the kind of motor.
The Explanatory Note for Class 8 indicates that this class includes mainly "hand-operated implements used as tools in the respective professions". Therefore, Class 8 includes many tools that perform a task, such as drilling, shaping, cutting or piercing.
The criteria to determine their classification in Class 8 is not so much that they are hand-held, but rather their mode of operation, i.e., that they are operated by hand and not by electricity or any other power source. Thus, as mentioned above, hand-operated tools such as hammers are in Class 8, while electric or pneumatic hammers are in Class 7 because they are power-driven machine tools.
However, certain hand tools are classified in Class 8 regardless of whether they are electric or non-electric, such as depilation appliances, razors, hair clippers and manicure sets because they cannot be considered to be "machines" or "machine tools" in Class 7.
While considering items in Class 8 one should also consider Class 21 since it may be difficult to decide whether a particular good should be considered as a hand tool in Class 8 or as a kitchen or household utensil in Class 21.
The Class Heading justifies the inclusion in Class 8 of hand-operated cutting tools and bladed weapons, such as knives, swords, scissors, egg slicers, tin openers, and pizza cutters but also includes "cutlery", such as knives, forks and spoons for eating since the same manufacturer of table knives would also manufacture spoons and forks and, as such, should be placed in the same class.
Certain specialized cutting instruments can be located in other classes, such as scalpels in Class 10 and fencing weapons in Class 28.
Class 9 is the largest class in the Nice Classification and is often described as the class of electronic equipment but, in fact, it includes a wide variety of goods.
There are mainly five general areas of goods: apparatus and instruments for scientific or research purposes, information technology and audiovisual equipment, apparatus and devices for controlling the distribution and use of electricity, optical apparatus and instruments, and safety equipment.
It is worth mentioning that safety equipment and protective clothing are classified in Class 9 based on the reference to "life-saving … apparatus" in the Class Heading. The term "life-saving" is interpreted in the sense of "preventing serious or fatal accidents" as well as in the sense of "saving human lives". Therefore, protective clothing belongs in Class 9 as much as goods such as breathing apparatus (except for artificial respiration), life belts, life jackets and bullet-proof waistcoats do. Some examples of life-saving items in Class 9 are as follows:
- clothing and shoes for protection against accidents, irradiation and fire;
- clothing specially made for laboratories;
- protective helmets, including sport helmets; and
- fire trucks.
It should be noted that protective padding used as parts of sports suits are classified in Class 28 as a sporting article. They are not considered to be "life-saving" since they protect against bumps and bruises and not potential fatality.
It should also be mentioned that certain apparatus in Class 9 are classified in Class 10 when they are intended for medical use, such as lasers, X-ray apparatus, respiratory masks and testing apparatus.
This class includes mainly surgical, medical, dental and veterinary apparatus and instruments that are generally used for the diagnosis, treatment or improvement of human or animal diseases. The words "apparatus" and "instruments" are important as they help to differentiate Class 10 goods from the medical and veterinary "preparations" in Class 5.
Sometimes it is difficult to determine whether certain items are in Class 9 or Class 10, as some goods could be placed in either class depending on their use. Usually, even if the goods perform the same function, they are often different in nature, depending on whether they are for industrial research or medical research, etc. As mentioned previously, certain apparatus and instruments in other classes belong in Class 10 when they are used for surgical, medical, dental or veterinary purposes. For example, lasers are in Class 9, but when specified as being for medical purposes, they go in Class 10. Further, needles are in Class 26, but when the needles are hypodermic needles, this becomes a Class 10 good.
The same principle should be applied to certain goods that are not apparatus or instruments, such as bandages and special clothing, furniture and bedding. For example, supportive bandages, clothing for operating rooms, beds specially made for medical purposes, and childbirth mattresses are in Class 10.
Class 10 further includes prostheses and artificial implants. The term "artificial" is important for the classification of implants in Class 10 because "living tissues used as surgical implants" is in Class 5.
As noted previously, bandages can be placed in Class 10 and in Class 5. Again, the difference is that the bandages in Class 10 are supportive, i.e., they are used for holding injured muscles or parts of the body and thus have a therapeutic supportive function, while the bandages in Class 5 are used to bind up wounds or hold dressings in place.
Certain articles, usually made of rubber, such as feeding bottle teats and valves, teething rings, babies' pacifiers (teats) and condoms are in Class 10, because the Class Heading of Class 10 makes reference to “apparatus, devices and articles for nursing infants” and “sexual activity apparatus, devices and articles” respectively.
Nevertheless, adding "for medical or veterinary purposes" to a good does not automatically place that good in Class 10. For example, sterilizers are in Class 11, even if they are used for sterilizing medical instruments.
As stated in the Class Heading for Class 11 this includes heating, ventilating, air-conditioning and air purification equipment, sanitary installations, water supply and water treatment installations, refrigerating and freezing equipment, as well as apparatus for cooking, heating and refrigerating food.
Consequently, the items included in Class 11 can be characterized as being for "environmental control" in that they change the surrounding environment, e.g., by heating, cooling, drying, purifying or disinfecting air or water.
Other classes can include electrically-heated items goods that perform a task other than heating. For instance, electric glue guns are in Class 7 because their purpose is to apply glue (even though heat is used to melt the glue in the gun), but glue-heating appliances are in Class 11 because their purpose is to melt the glue and keep it viscous by heating it, so it can then be applied to a surface using another tool.
Pipes as parts of sanitary installations are in Class 11, these types of pipes are those that are directly attached to and are specialized parts of installations such as sinks, showers and toilets.
There are other types of pipes in Classes 6, 17 and 19. The pipes that bring water to and from sinks and showers are considered to be building materials and are placed in Class 6 if they are made of metal and in Class 19 if they are rigid and not made of metal. Flexible pipes not made of metal are in Class 17.
Class 11 also comprises lighting apparatus and certain lighting accessories, such as electric lamps, light bulbs and lamp shades. Since Class 11 covers lighting items as their primary function, vehicle lights are thus in Class 11. The same applies to laboratory lights, which is placed in Class 11.
Lights that are in classes other than Class 11 are used mainly for purposes other than lighting, for example, traffic lights in Class 9.
It should also be noted that electronically-heated clothing, such as electronically-heated socks, are in Class 11 as they are used for their heating or warming purposes, i.e. relieving cold feet.
Class 12 includes all apparatus and machines used for the transport of people, animals or things by land, air or water. As such, bicycles are in Class 12 because they provide transport even if that transport is done for sport or recreational purposes.
The term "transport" is significant since there are goods in other classes that could be deemed as providing transport when, in fact, that is not the primary purpose of the goods. For example, self-propelled road sweeping machines and snow ploughs are in Class 7. These items move but their purpose is not for transportation but to perform a particular task (road sweeping and snow removal).
As mentioned in Class 7, not all parts of vehicles are in Class 12. Motors and engines, whether for machines or for vehicles, are classified in Class 7, except for land vehicle motors which are in Class 12.
There are other specific items that are not in Class 12 although they are associated with vehicles and apparatus for transport. This usually occurs when the item in question is not a structural part of the vehicle. For example:
- locks of metal for vehicles are in Class 6 as a type of ironmongery object;
- mileage recorders for vehicles are in Class 9 as their primary purpose is to "measure"; and
- lights for vehicles are in Class 11 as their primary purpose is a "lighting apparatus".
Firearms, ammunition, projectiles, explosives and pyrotechnical products are in this class. Parts of and certain accessories for these goods are also in this Class 13.
The goods in this class are powered by an incendiary, explosive or propellant force. As such, bladed weapons such as knives are in Class 8, or fencing weapons in Class 28 are not included in this class. However, there are some exceptions like sprays for personal defense purposes.
The item for harpoon guns should be considered as a "harpoon gun" for use as a weapon is in Class 13 while a "harpoon gun" for use in sport placed in Class 28. After much discussion at the Committee of Experts, the difference between the weapon and non-weapon harpoon guns has been considered significant enough to warrant their classification in different classes.
Jewellery and imitation jewellery, regardless of the material of which they are made, as well as precious and semi-precious stones are placed in Class 14. However, certain goods, such as brooches and pins, are classified in Class 26 when they are considered to be a dressmakers' article.
Generally, watches, clocks, stopwatches and other horological and chronometric instruments are in Class 14 as well. Nonetheless, some chronometric instruments are in Class 9 if their purpose is the measurement or the recording of time, like in the case of time clocks, or are wearable computer devices, such as smartwatches.
In most cases, goods made of precious metal are classified according to their function. Always remember the guiding principles: Where the precise function cannot be identified and the good is in ordinary commercial terms, the material composition will be necessary in order to determine the Class. For example, spoons would be classified in Class 8 despite being of precious metal or non-precious metal. Similarly, silver tea services should not be classified in Class 14 because there is an appropriate class for these goods, namely, Class 21, for household and kitchen utensils and containers.
However, there are goods of precious metal placed in Class 14 due to their material composition, such as statues, figurines and key holders, since Class 14 includes the wording "certain goods made of precious metals or coated therewith" in the Explanatory Note. As such, this class can also be used to include finished goods that are being classified according to their material composition and, if they are made of precious metals, they belong in Class 14.
Acceptable entries of "goods of precious metal" can be found in the Goods and Services Manual.
All musical instruments, their parts and their accessories and their cases are in Class 15, as well as certain goods that create music but are not manipulated by a musician, such as music boxes. Class 15 also includes goods that are related to the field of music, such as music stands, tuning forks and conductors' batons.
However, goods that affect sound produced from another source, such as music amplifiers or loudspeakers, and apparatus that reproduce music, such as CD players, are in Class 9.
This class consists mainly of paper, cardboard, printed matter (books, pamphlets and brochures), materials for printing and bookbinding, as well as writing materials and office requisites (writing paper, envelopes, pens, ink, paper-clips, adhesive tapes, correcting fluids and staplers).
This class also contains office equipment such as mimeograph, sealing, addressing, franking, printing and bookbinding machines.
Note that while photocopiers, computers and printers for use with computers are in Class 9, toners for photocopiers and printing ink are in Class 2.
The terms "artists' and drawing materials" in the Class Heading refers to traditional (non-electronic) art media (drawing pens, canvas for painting, painters' palettes and brushes, and modelling clay). However, paints are in Class 2 and hand tools such as sculptors' spatulas and chisels are in Class 8.
Items that are "teaching materials" are also in Class 16. This term refers to goods such as blackboards, terrestrial globes, calculating tables and biological samples for use in microscopy. Don't confuse these teaching materials in Class 16 with the "teaching apparatus" in Class 9. For example, resuscitation mannequins are considered to be a "teaching apparatus" and as such are found in Class 9. The same can be noted of electronic books or other publications that are intended by the provider to be downloaded into the end users electronic device are found in Class 9.
Since finished goods are in principle classified according to function or purpose. Goods that cannot be classified in this way are classified according the material of which they are made and, if they are made of paper or cardboard, they belong in Class 16. For example, packaging bags or envelopes are in Classes 16, 18 and 24 depending on whether they are made of paper, leather or textile.
It should be noted that plastic packaging that is a substitute for paper, like plastic films, sheets, bags or envelopes, is in Class 16 as well.
Class 17 includes unworked or semi-worked items consisting of rubber, gutta-percha, gum, asbestos and mica, as well as plastics and resins in extruded form for use in manufacture. It also includes finished goods that are classified according to material composition. Items are made of rubber, gutta-percha, gum, asbestos or mica, also belong in this class. For example, bottle closures do not correspond to the functions or purposes announced in any of the Class Headings and are thus classified in the corresponding "materials classes", namely, Classes 6, 17 and 21 if they are made of metal, rubber or glass, and Class 20 if they are made of any other material.
Moreover, goods that provide insulation are in Class 17 even if they could be placed in other classes if not for insulation purposes. Examples of this are insulating paint, paper, and fabric, which are all in Class 17 rather than the typical classes for those goods, namely Classes 2, 16 and 24.
Finally, flexible pipes, tubes and hoses that are not made of metal are in Class 17, such as radiator hoses and watering hoses.
Class 18 includes unworked or semi-worked items consisting of leather, substitutes for leather and animal skins. It also includes finished goods that are classified according to material composition. If items are made of leather or imitations of leather, they belong in Class 18.
There is no appropriate class for packaging such as boxes and pouches, which are thus classified in Class 18 if they are made of leather, or in Classes 16, 17 or 22, if they are made of paper, rubber or textile respectively.
Many items in Class 18 relate to animals due to the mention of whips, harness and saddlery in the Class Heading. Some of these are bits for animals, harness fittings, feed bags, covers for horse-saddles, stirrups, leashes for animals and collars for animals. Clothing for pets is also in Class 18 and not in Class 25. However, it should be noted, not all animal-related items are found in Class 18, such as dog kennels in Class 20 and horse brushes in Class 21.
Lastly, items used for the transport of personal goods, such as suitcases and other travelling bags, are in Class 18 regardless of material composition, as well as are umbrellas and walking sticks.
Building materials made of metal are in Class 6, but non-metallic building materials comprise most of the items in Class 19. Therefore, anything that constitutes a structure and is not made primarily of metal, from bicycle parking installations to entire buildings, is in Class 19. For example, complete homes that are built entirely in a factory and then transported and installed on-site are in Class 19 if they are composed primarily of non-metal components and in Class 6 if they are primarily made of metal.
Some specialized building materials are in Class 19 when they might otherwise be classified in another class, such as bituminous coatings which could be in Class 2 since it is a coating, is classified in Class 19 because it is a specialized building product.
As mentioned in Class 6, 11 and 17, it should be noted that there are pipes in various classes. Non-metallic rigid pipes for building are placed in Class 19.
Class 19 also includes materials such as stone, cement and marble, therefore, it also includes certain finished goods that are classified according to material composition, such as sculptures, busts, figurines and other artistic objects made of stone, marble or other Class 19 materials.
In general, furniture is in Class 20 regardless of material composition. Furniture for special use is classed by their specific intended use, such as furniture especially made for laboratories in Class 9 and dentists' armchairs in Class 10.
Bedding such as mattresses and pillows is also in Class 20, but not bedding linen, eiderdowns, blankets and sleeping bags, which are in Class 24.
The list of materials in the Class Heading controls the inclusion that goods can be placed in this class according to their material composition. Therefore, if goods are made of the materials mentioned in the Class Heading, they belong in Class 20. Typical examples are figurines or statuettes and boxes for packaging made of wood and meerschaum.
In general, Class 20 includes non-metal goods that often have a counterpart in Class 6 when those goods are made of metal. For example, many hardware items of plastic are in Class 20, their equivalent of metal being in Class 6.
However, hardware that relates to curtains is classified in Class 20 no matter their material composition. Also non textile curtains, such as, bamboo or bead curtains, as well as window blinds or shades for interiors are in Class 20 because they are considered to be a "furnishing".
Moreover, a review of the Class Headings indicates that non-metal containers for storage or transport are in Class 20, while metal containers for storage or transport are in Class 6. There are some containers in Class 21 as well, but these are limited by the Class Heading to those that are for domestic or kitchen use and are thus classified according to that purpose, regardless of material composition.
As indicated in the Class Heading and the Explanatory Note, this class includes mainly containers and small hand-operated utensils and apparatus for household and kitchen use.
This language, in particular "containers", covers a very broad range of products, some of them being very much related to certain products in Classes 7, 8 and 11. Therefore, the criterion used to classify containers in Class 21 is function or purpose. Pails, garbage cans, vases, bottles and indoor aquaria, are all in Class 21 as household or kitchen containers, regardless of material composition. Containers and certain utensils used as tableware, such as dishes, bowls, drinking glasses, mugs, tea services, sugar tongs and pie servers, are also in Class 21.
By contrast, containers used for the transport and storage of goods are classified by material composition, in Class 6 if they are of metal and in Class 20 if they are not of metal. It should be noted that according to General Remark (f), for Goods containers that are especially adapted to the form of the product they contain are in principle classified in the same class as that product. For example, containers for contact lenses are in Class 9 together with the contact lenses, and watch cases are in Class 14 together with the watches.
The household and kitchen utensils and apparatus in Class 21 are mostly non-electric and hand-operated, to which their electric counterparts can be found in other classes. For example, apparatus for cleaning and polishing and for kitchen uses such as mincing, grinding and pressing are in Class 21 when they are non-electric and in Class 7 when they are electric. Another example, combs and most brushes, including cosmetic brushes and toothbrushes, are in Class 21 whether electric or non-electric, while manicure, pedicure and other cosmetic implements, such as nail files, depilation appliances and razors, electric and non-electric, are in Class 8.
Cooking utensils in Class 21, such as kettles and pressure cookers, are non-electric.
Finally, it is important to point out that Class 21 is one of the classes that include unworked or semi-worked materials items, namely glass, except for building glass which is in Class 19 as building material. Class 21 also includes glassware, porcelain and earthenware that cannot be classified according to function or purpose. Therefore, if an item is made of porcelain, ceramic, earthenware or glass, they belong in Class 21. Typical examples are busts, statuettes and works of art.
Generally, Class 22 covers textile materials in their most unprocessed state, namely, fibers.
This class also includes some finished goods that cannot be included in the other "textile classes" (23, 24 and 25), such as tents, awnings of textile or synthetic materials and sails. Sails are in this class even though they are used with transport and sport apparatus, such as boats and ski sailing equipment that belong in other classes.
Other finished products in Class 22 are sacks and bags for the transport and storage of materials in bulk, mail bags and sacks of textile for packaging.
This class also includes padding and stuffing materials (not of rubber or plastic). Padding and stuffing derived from natural sources (other than rubber), such as straw, horsehair, kapok, feathers and seaweed, are also in this class.
Non-metallic slings and bands for handling loads and binding, and ropes and string of natural or artificial textile fibres, paper or plastics, used for packing, wrapping or binding, are in Class 22. However, thread and yarn, which are used for sewing, knitting, weaving, embroidering and in the production of fabrics, are in Class 23.
As indicated in the Class Heading, yarns and threads, either natural or synthetic, are in this class so long as they are for textile use. Clearly, cotton, silk or woolen threads and yarns are in this class. Also fiberglass, elastic, rubber and plastic threads or yarns are in Class 23.
It should be noted that our Goods and Services Manual sets forth a number of threads that are classified in classes other than Class 23 due to their specialized uses. Some examples of these are "threads of plastic for soldering" and "elastic yarns not for use in textiles" in Class 17.
Fabrics intended for traditional textile uses in this class, are flat finished goods made of textile or of substitutes for textiles such as plastic and oilcloth. Some examples of these goods are curtains, flags (not of paper), handkerchiefs, mosquito nets, printers' blankets, shrouds and wall hangings.
This class does not include finished items that are considered to be clothing in Class 25 or textile items that could be classified in other classes according to their function or purpose. Some examples of flat, textile goods that are not in Class 24 are horse blankets in Class 18, insulating fabrics and asbestos fabrics in Class 17, fabrics for bookbinding in Class 16, and geotextiles in Class 19.
It should be noted that bed linen, whether of textile or of paper, is in Class 24. However, table and bath linen such as tablecloths, napkins, coasters and towels are in Class 24 if they are made of textile or of substitutes for textiles, but in Class 16 if they are made of paper.
Finally, sleeping bags, sleeping bags liners and household linen, such as beadspreads and blankets, are in Class 24 unless they are electrically heated, in which case they belong in Class 11 or, if they are for medical purposes, in Class 10.
Clothing, footwear and headwear used for normal dress (including for sports) are in Class 25, but clothing, footwear and headwear that are especially adapted for a particular use are classified in the class that is related to that use. The following are some examples:
- clothing for protection against fire and other highly protective clothing in Class 9;
- clothing especially for operating rooms in Class 10; and
- skating boots with skates attached in Class 28.
Clothing embellishments are in Class 26. These embellishments may be decorative, such as lace trimmings, and frills and spangles for clothing. They can also be functional, such as belt clasps, snap fasteners, zippers and shoe buckles. The broad reference to hooks, pins and needles in the Class Heading allows for the introduction of crochet hooks, knitting needles and sewing needles and related items, such as pin cushions, needle-threaders and boxes for needles.
It should be noted that natural hair, wigs and other false hair items are in Class 26 as well as items that are related to them, such as hair nets, barrettes, hair bands and hair curling papers.
The reference to artificial flowers in the Class Heading justifies the inclusion of many artificial replicas of natural flora. However, artificial Christmas trees are in Class 28 together with most Christmas tree decorations since they are considered, for classification purposes, as objects of amusement.
Basically, this class is for wallpaper and "materials for covering existing floors". This is the language that differentiates items in Class 27 from certain building materials used in the construction of floors that are in Class 19, like "tiles". As expressed in the Explanatory Note, the coverings in Class 27 are intended to be added as furnishings to previously constructed floors and walls.
The Class Heading specifically mentions non-textile wall hangings. This permits the inclusion of wallpaper in this class, although wallpaper is not normally considered a "wall hanging". The term also makes it clear that wall hangings or tapestries are in this class only if they are not textile. Textile tapestries should be classified in Class 24.
Games, toys, playthings and objects of amusement such as snow globes and confetti are in this class. This class also includes decorations for Christmas trees, Christmas trees of synthetic material and Christmas tree stands are in Class 28. However, candles, electric garlands and confectionery and chocolate decorations for Christmas trees are in the classes for candles, lights and confectionery, namely, Classes 4, 11 and 30, respectively.
All amusement and game apparatus with integrated display screens, including controllers therefor, are in Class 28. However, computer game software is in Class 9 as it is a type of "computer software".
Most gymnastic and sporting articles are in Class 28, with some exceptions, such as protective helmets, goggles and mouthguards for sports and riding helmets in Class 9, gymnastic mats in Class 27 and boots for sports in Class 25.
The foodstuffs in Class 29 are of animal or vegetable origin and are prepared for human consumption or for conservation.
Unprocessed eggs, i.e. eggs in their shells, belong in Class 29 together with other foodstuffs of animal origin.
Certain foods and beverages are classified according to the predominant ingredient. For example, beverages predominantly made of Class 29 ingredients (like milk), such as milk of almonds and peanut milk are in this class.
It should be noted that foods like pizza and sandwiches are in Class 30 although they are covered with or contain Class 29 goods such as cheese, ham, tuna fish, eggs or vegetables, because the predominant ingredient is considered to be the pizza dough or the bread, which are both Class 30 products. Following this principle, filled pastries and pasta are in Class 30, even if the filling is made of Class 29 ingredients. Prepared meals are also classified in either Class 29 or 30, depending on the predominant ingredient.
Class 30 comprises products of plant origin that are prepared for human consumption or for conservation. Processed grains, rice, coffee, tea and cocoa are in Class 30 as they are plant products and not vegetables. Cereal grain products like flour are also in this class, as well as products made with flour, such as bread and pastry.
Substances that sweeten or improve the flavour of food and beverages, like sugar, honey, aromatic substances, preserved herbs, salt and condiments are also in Class 30.
Certain foods and beverages are classified according to the predominant ingredient. For example, beverages predominantly made of coffee-, tea-, cocoa- or chocolate-based ingredients are in Class 30.
According to the Class Heading, this class further includes sauces that can be used as condiments, like soya sauce and ketchup. However, Class 30 also includes certain sauces that are not necessarily condiments, like fruit coulis and tomato sauce. Therefore, the Goods and Services Manual should always be consulted when attempting to classify these types of products.
Land and sea products that are not prepared for human consumption, live animals and plants, and foodstuffs and beverages for animals are in Class 31.
It should be noted that fresh vegetables, fruits and herbs are in Class 31 even if the plants have been cut from the ground or the fruits picked from the trees. Once the vegetables or the fruits have been processed for consumption or conservation, for example, cut for a ready-made salad, frozen or cooked into a purée, compote or jam, they become a Class 29 product.
Unprocessed grains, seeds and cereals belong in Class 31. Malt is in Class 31 because it is a grain that has germinated and then been dried to halt the germination process. At this point, malt is used as a basic grain ingredient that has not yet been processed into a foodstuff or a beverage.
Eggs that are fertilized eggs for hatching are placed in this class since fertilized eggs are intended to hatch into live animals.
Also natural flowers, trees and forestry products such as trunks and unsawn timber, are in Class 31. Once the timber has been further processed into semi-worked wood, for example, beams, planks or panels for building, these are classified in Class 19.
Animal bedding is in Class 31 because most animal bedding is based on agricultural or forestry products. For example, straw, which is often used for animal bedding, is an agricultural product and is thus classified in Class 31.
General non-alcoholic beverages are in Class 32, except for milk-, tea-, coffee- and chocolate-based drinks which are in Classes 29 or 30 depending on the predominant ingredient.
The only exception to this is beer. Beer has been placed in the Class Heading for Class 32 since the inception of the Nice Classification. Proposals aiming at transferring beers from Class 32 to Class 33 have always been rejected by the Committee of Experts of the Nice Union. At the time the Nice Classification was established in the late 1800s, beers were included in Class 32 because they were often commercialized by the same companies that produced and/or sold soft drinks.
Except beers, all alcoholic beverages are in Class 33, even if their alcohol content is low including pre-mixed alcoholic beverages. However, non-alcoholic mixers that are used together with alcoholic beverages, such as ginger ale and soda water, are in Class 32.
Not only are tobacco and tobacco-based products in Class 34, but also articles used by smokers. Articles that could be in other classes are in Class 34 because of this special use such as matches, lighters for smokers, ashtrays for smokers and electronic cigarettes. It should also be noted that tobacco substitutes that are not for medical purposes are in Class 34, while tobacco-free cigarettes for medical purposes fall into Class 5.
The services placed in Class 35 are those provided by persons or enterprises that directly assist in the operation and management of third-party commercial or industrial enterprises.
Services that may further the activities of a business but do not relate directly to the operation or management of a commercial or industrial enterprise belong in other classes. Some examples are various financial and insurance services in Class 36, most telecommunication services in Class 38, transport services in Class 39 and training services in Class 41.
This class includes activities relating to finance, real estate transactions and insurance. If a service affects the movement of money, investments in the form of money, insurance, or real estate, it is in Class 36. Most brokerage services are in Class 36 because a broker acts as an intermediary between two contracting parties in commercial or financial transactions.
The only exceptions are freight brokerage and transport brokerage services because they involve setting up transportation services which belong in Class 39.
Class 36 also includes appraisal, valuation or evaluation services for the purpose of establishing the value of a particular item. The appraisal may be used as a reference for insurance coverage or for the sale or purchase of such goods.
There are appraisal, valuation or evaluation services in classes other than Class 36. For example, "business appraisal" services are in Class 35 since they provide "help in the management of the business affairs or commercial functions of an industrial or commercial enterprise". The appraisal may be used to evaluate and eventually improve business efficiency or customer service. Although such an improvement may have financial consequences for the business, the immediate purpose of the appraisal is not financial.
Lastly, appraisal, valuation or evaluation services that are to assess the quality of an item or activity are in Class 42, since they are often provided by experts in the scientific and technological fields.
Services in this class include the physical construction of buildings, ships and other major structures, as well as the repair or installation of virtually all types of goods. They further involve activities in the field of mining and gas and oil extraction.
Since Class 37 also includes maintenance and cleaning services, care should be taken when considering these services and determining the distinction between Classes 37 and 40 (treatment of materials). Cleaning, maintenance and repair services in Class 37 return an object to its original condition, improve it or preserve it without changing its essential properties, while the services in Class 40 involve the transformation of an object or material into something different by altering its physical or chemical properties. For example, compare vehicle polishing in Class 37 with chromium plating in Class 40.
Services in Class 38 involve providing the means by which one party can communicate with another. This includes using computers that communicate with each other or a computer or other electronic system that provides communication to a human being, such as a television or radio. Services in Class 38 provide the means to communicate, not the content or subject matter that may be contained in the communication activity.
Simply because a service is conducted using telecommunication contact does not mean that the service is classified in Class 38. For example, banking services are in Class 36 even if the banking activity is done online using a computer terminal.
Transport of anything or any person by any manner or means is in Class 39. From air transport to distribution of electricity, any service that has movement as its primary function is in this class. This is so even if the purpose of the transport is not simply travel. Thus, ambulance transport, armored-car transport and transport for rescue operations are in Class 39.
This class also includes packaging of goods for the purpose of transport or storage as well as storage of goods whether those goods are in transit or remain in the same location for future retrieval.
Arrangement of travel itself is in Class 39. Thus, while most brokerage services are in Class 36, freight and transport brokerage is in Class 39. Also the services of a travel agency that involve the arrangement of travel are in Class 39 while other services provided by a travel agency are in other classes, such as issuance of travellers' checks in Class 36 and making arrangements for lodging or meals while travelling in Class 43.
The term "treatment of materials" is considered to be the transformation of the essential properties of an object, a substance or a material through mechanical or chemical processes that render that object, substance or material quantitatively or qualitatively different than they were before the treatment or transformation. For example, the tanning of leather makes the final product so different from the original material, namely, raw leather, that it may be considered an entirely new product.
The transformation of leather, thread, rubber, metal and, perhaps, plastic into a shoe is a treatment of those materials to the extent that the final product is different from any one of its components. However, for such transformation to be considered a service, it must be performed for others. Therefore, "custom assembling of materials for others" is in Class 40.
It should be noted that activities such as cleaning, maintenance or repair of an object are not considered as "treatment of materials" since they do not alter the physical or chemical properties of the object but rather, they return the object to its original condition or preserve it without changing its essential nature are in Class 37.
Educational services belong in Class 41. This includes the more traditional forms of education, such as classes, seminars, workshops or degree programs, as well as other forms of education or training, such as gymnastic courses, practical training and the training of animals. Services that are integral to education are also in this class, such as the publication of books or texts (other than the publication of publicity texts in Class 35) and lending library services.
It should be noted that although all information educates the recipient to some extent, information services are not considered educational services. Information services are classified according to the subject matter of the information and thus can be found in any of the eleven service classes.
Class 41 further includes the organization of sporting and cultural activities, rental of the facilities for the realization or housing of those activities and services that entertain or amuse people, such as organizing beauty contests and gaming, rental of video tapes and planning of parties. However, services that loosely involve sporting and cultural activities may not be in Class 41. For example, business management of performing artists in Class 35 and the organization of exhibitions and fashion shows is in Class 35 when they are for advertising purposes.
Scientific and technological services in this class include not only practical but also theoretical aspects as well as research and design services of most aspects of science and technology. Thus, although medical services belong in Class 44, medical research services are in Class 42. Industrial analysis services, such as analysis for oil-field exploitation, water analysis and chemical analysis, are also in this class.
However, medical or veterinary analysis relating to the diagnosis and treatment of human or animal diseases is in Class 44, business research and analysis of data related to business, marketing and advertising are in Class 35 and financial analysis is in Class 36.
Class 43 includes restaurant services and similar services, such as catering services, cafeterias, snack bars or fast-food outlets. In general, these services consist in preparing food and/or beverages for immediate consumption by the consumer.
Class 43 is also the class for temporary accommodation services, like those provided by hotels, boarding houses and daycares. The term "temporary" is important as it marks the difference with services in Class 36, such as the rental of houses or flats. It may be difficult to determine what is "temporary" as certain services in Class 43 provide accommodation for an extended period of time, for example, retirement homes.
Providing temporary accommodation further includes the rental of meeting rooms and the rental of rooms for social events such as wedding and birthday parties. These services thus belong in Class 43. Furthermore, the rental of furniture and tableware often used for such events is also placed in Class 43.
It should be noted that not all activities related to hotel services belong in Class 43. For example, providing swimming pool facilities at a hotel is in Class 41, and the services of a company that cleans hotel rooms are in Class 37.
Travel agency services cannot be placed in a single class, as these agencies provide services that belong in different classes, such as booking hotel rooms (Class 43), booking travel tickets and travel tours (Class 39), and booking tickets for cultural or entertainment events (Class 41).
This class includes services that provide care for both human beings and animals. That care may be medical or cosmetic in nature. Therefore, as animal care is classified in this class and also includes services related to agriculture, horticulture and forestry activities.
However, it should be noted that this class is for activities that provide actual care and not the theoretical research or analysis that is associated with that care. Those services are classified in Class 42 with the other scientific and technological services.
The Class Heading "personal and social services rendered by others to meet the needs of individuals" is not intended to serve as a catch-all phrase that justifies services in Class 45 so long as they are related to needs of individuals. Many services that are provided to individuals are in other classes and should not be placed in Class 45 simply because they are "personal" or because the activity is performed to benefit an individual. For example, banking services may meet the needs of individuals, but they are financial in nature so they are placed in Class 36.
The personal and social services that are included in Class 45 are quite specific. Some examples are marriage agencies, horoscope casting and funerals.
Activities that impact on the lawful functioning of society are classified in Class 45, even if provided by non-attorneys, such as adoption agency services, arbitration and mediation services and registration of trademarks and domain names. These services protect the legal rights of individuals or corporations.
Generally, services relating to guarding or safety are also in Class 45 as it is considered to be an outgrowth of the two prior areas of activity in Class 45. Such services may be provided to individuals or corporations for legal protection or bodily protection.
II.7 Contents of Specific Applications
II.7.1 Applications Based on Use in Canada — Subsection 16(1) and Paragraph 30(b)
Paragraph 30(b) of the Trade-marks Act provides that an application for registration of a trademark that has been used in Canada must contain the date from which the applicant or his named predecessors in title, if any, have used the trademark in association with each of the general classes of goods or services described in the application.
II.7.1.1 Naming the Date of First Use
It is not acceptable for the applicant to use an expression such as "on or about" to identify dates of first use since this is not precise enough. Acceptable alternatives are "since," "since before", "since at least", "since as early as" and "since at least as early as".
The date of first use can be stated as just the year of first use, just the month and year of first use, or the day, month and year of first use. However, in all cases the date of first use cannot be subsequent to the filing date of the application.
Note: When only the month and year are named, the last day of the month will be regarded as the effective date. When only the year is named, December 31st of that year will be the determining date. See also the practice notice entitled Notice - Specific Date of First Use.
II.7.2 Applications Based on Making Known in Canada — Section 5, Subsection 16(1), Paragraph 30(c)
Section 5 of the Trade-marks Act states the following:
- A trademark is deemed to be made known in Canada by a person only if it is used by that person in a country of the Union, other than Canada, in association with goods or services, and
- the goods are distributed in association with it in Canada, or
- the goods or services are advertised in association with it in
- any printed publication circulated in Canada in the ordinary course of commerce among potential dealers in or users of the goods or services, or
- radio broadcasts ordinarily received in Canada by potential dealers in or users of the goods or services,
- and it has become well known in Canada by reason of the distribution or advertising.
An application that contains a "made known" claim and a "proposed use" claim for the same goods or services is acceptable.
As well, an application may be based on "making known in Canada" and "use in Canada" for the same goods or services on identical dates or where use has taken place before the making known. While there must be use in another country of the Union in order to claim "making known", that does not mean that there cannot be use in Canada.
II.7.2.1 Manner of Making Known in Canada — Section 5
Apart from stating that the mark has been used in a particular country of the Union other than Canada in association with the goods or services, the applicant must be specific about the manner of making the mark known in Canada. One or more of the following statements may be made:
- The trademark has been made known in Canada by reason of the distribution of the goods in association with the trademark in Canada.
- The trademark has been made known in Canada by reason of the advertising of the goods or services in association with the trademark in printed publications circulated in Canada in the ordinary course of trade among potential dealers in or users of such goods or services.
- The trademark has been made known in Canada by reason of the advertising of the goods or services in association with the trademark in radio or television broadcasts ordinarily received in Canada by potential dealers in or users of such goods or services.
II.7.2.2 Naming Date of Making Known
It is not acceptable for the applicant to use an expression such as "on or about" to identify dates of making known in Canada since this is not precise enough. Acceptable alternatives are "since", "since before", "since at least", "since as early as" and "since at least as early as".
The date of making known in Canada can simply be stated as just the year of making known or just the month and year of making known, or the day, month and year of making known. However, in all cases the date of making known cannot be subsequent to the filing date of the application.
Note: When only the month and year are named, the last day of the month will be regarded as the effective date. When only the year is named, December 31st of that year will be the determining date.
II.7.3 Applications Based on Application or Registration in or for a Union Country and Use Abroad — Subsection 16(2) and Paragraph 30(d)
II.7.3.1 Data Appearing in Canadian Application
Under the provisions of subsection 16(2), an applicant who has applied for or registered a trademark in or for another Union country and used it in any country may file to register his/her mark in Canada.
In accordance with paragraph 30(d), the Canadian application must contain particulars of the corresponding foreign application or registration such as the following:
- The registration date and number of the registration or the serial number and the filing date of the application.
- The country of the Union in or for which the mark was registered or applied for. Section 2 of the Trade-marks Act defines "country of the union" as:
- any country that is a member of the Union for the Protection of Industrial Property constituted under the Convention, or
- any World Trade Organization (WTO) Member.
Note: A registration in Benelux (economic union of Be[lgium], Ne[therlands], and Lux[embourg]) is acceptable since it is equivalent to a registration in each of the three countries — Belgium, Netherlands and Luxembourg.
European Union trademarks registered in the European Union Intellectual Property Office (EUIPO) are acceptable. Claims based on a World Intellectual Property Office (WIPO) international registration are also acceptable, however the applicant must confirm that the international registration extends to the applicant's country of origin (i.e., the international registration must have effect in the applicant's country of origin as that term is defined in section 2 of the Trade-marks Act). The reason for this is because the international registration cannot be considered to be "in or for" the country of the initial application/registration on which the international registration was based which is why the applicant must confirm that the international registration extends to its country of origin.
- The name of a country in which the trademark has been used by the applicant or the applicant's named predecessor in title, if any, in association with each of the general classes of goods or services described in the application. The country need not be a country of the Union. If the trademark has not been used in a single country in association with all the specific goods or services, but has been used in one country in association with some of them and in another country in association with others, the names of two (or more) countries should be provided.
Use in Canada
Paragraph 30(d) requires the applicant to name the country in which the trademark has been used. However, this is only required if the trademark has neither been used in Canada nor made known in Canada. If the application also includes a separate paragraph containing claim pursuant to subsection 16(1), the paragraph containing the subsection 16(2) claim does not need to include a statement of use.
Although subsection 16(2) is labelled "Marks registered and used abroad", there is nothing in subsection 16(2) nor in paragraph 30(d) that requires the trademark to be "used abroad". Therefore, the applicant is free to state Canada as its country of use.
However, pursuant to paragraph 30(b) of the Trade-marks Act, once Canada is named as a country of use, the applicant is then required to provide the date from which the applicant or his named predecessors in title, if any, have so used the trademark in association with each of the general classes of goods or services described in the application. Moreover, since the date of first use in Canada does not need to be in the form of a separate subsection 16(1) claim in a separate paragraph, it is acceptable for the application to include a claim where the first half of the paragraph sets out the particulars of the foreign application or registration, but where the second half of the paragraph is a statement of use in Canada, as long as it indicates the date of the first use of the trademark in Canada in association with each of the general classes of goods or services described in the application.
Note: Since Benelux and EUIPO are not countries, they cannot be named as countries of use. However, "European Union (formerly European Communities)" is listed as a WTO Member and therefore it is acceptable as a country of use.
- The "country of origin" of the applicant. Section 2 of the Trade-marks Act defines "country of origin" as:
- the country of the Union in which the applicant for registration of a trademark had at the date of the application a real and effective industrial or commercial establishment, or
- if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a), the country of the Union where he on that date had his domicile, or
- if the applicant for registration of a trademark did not at the date of the application have in a country of the Union an establishment as described in paragraph (a) or a domicile as described in paragraph (b), the country of the Union of which he was on that date a citizen or national.
If the address for the applicant shows a country (e.g., Japan) which differs from that upon which the 16(2) claim is based (e.g., United States), examiners will request confirmation that the United States is the country of origin of the applicant as defined in section 2 of the Trade-marks Act in order to substantiate the claim made pursuant to the provisions of subsection 16(2) of the Trade-marks Act.
Note: In the first portion of the subsection 16(2) claim, the goods or services in association with which the foreign trademark application has been filed or the trademark registered must be listed as shown on the certified copy, however, they can be limited to only the goods or services in association with which the applicant wishes to register the trademark in Canada.
In the second portion of the subsection 16(2) claim, the goods or services in association with which the trademark has been used in any country must be defined in specific and ordinary commercial terms in accordance with paragraph 30(a) of the Trade-marks Act.
II.7.3.2 Certificate of Corresponding Registration — Subsection 31(1)
When a Canadian application is based on an application or a registration in or for a Union country, the mark may be examined but may not proceed to advertisement until a certified copy of the registration is filed in Canada. The applicant must furnish a copy of such registration certified by the office in which it was made, together with a translation thereof into English or French if it is in any other language.
Subsection 31(1) of the Trade-marks Act is clear in requiring that the certified copy be issued by the office in which it is made. The certified copy may be submitted electronically by fax or online. A photocopy of the certified copy may also be submitted. However, the Trademarks Office will not accept alternatives such as the submission of a notarized copy of a foreign registration accompanied by an affidavit attesting to its authenticity.
In cases whereby the copy of the foreign registration indicates that the registration is valid until a certain date and that date has lapsed, a new copy of the registration showing that the registration period has been renewed or extended will be required for the trademark to be approved for advertisement in the Trademarks Journal.
Owners (other than applicant) Shown on Certified Copy
A certified copy of the corresponding foreign registration which stands in the name of the applicant's predecessor in title is acceptable, as subsection 16(2) states "…that the applicant or the applicant's predecessor in title has duly registered in or for the country of origin of the applicant and has used in association with goods or services is entitled…" The Trade-marks Act and Regulations do not contain a requirement that the foreign registration stand in the applicant's name. However, the applicant must indicate in the application that he/she is relying on the predecessor in title named in such application/registration.
However, if an application is filed in the name of an applicant in both Canada and the foreign country, and the certified copy when submitted shows that the foreign registration is no longer in the name of the original applicant, the subsection 16(2) claim will no longer be acceptable. This is because the foreign registration stands in the name of a new owner.
In the Name of More Than One Person
The Office considers that a foreign registration which stands in the name of more than one person cannot be considered to have been registered by the applicant or the applicant's predecessor in title pursuant to subsection 16(2) and paragraph 30(d) of the Trade-marks Act.
Therefore, the certified copy of the foreign registration which stands in the name of several individuals may not support the applicant's claim made pursuant to subsection 16(2) of the Trade-marks Act.
Trademark Shown on Corresponding Registration
In order to support a subsection 16(2) claim, the trademark shown on the corresponding registration must be identical in all respects to that shown in the application. Paragraph 30(d) of the Trade-marks Act states: "…in the case of a trademark that is the subject in or for another country of the Union of a registration or an application for registration by the applicant or his named predecessor in title on which the applicant bases his right to registration…" [emphasis added].
Therefore any discrepancy between the mark applied for in Canada and that registered abroad would mean the applied for mark is no longer the one in the foreign registration. For example, a design mark applied for in Canada would not be supported by a certified copy that showed the identical features in a different arrangement, nor would it be supported by a certified copy that included a colour claim that was not incorporated in the Canadian application.
However, differences in the registration which are due only to another office's different way of showing word marks in standard characters are not relevant. Examples of this are when foreign registrations show a word mark wherein the first letter of the word is capitalized followed by lower case letters (such as shown in a German registration) or when the foreign registration shows a word mark in what appears to be bolder upper case lettering than that shown in the corresponding Canadian application.
Where the certified copy of the foreign registration contains a statement to the effect that the characters in the certified copy (letters and numbers) are considered as being standard, and also contains a statement to the effect that there is no claim to any particular font style, size, or colour, an examiner will accept the certified copy in support of the applicant's claim made pursuant to subsection 16(2) of the Trade-marks Act in respect of an application for a word mark that is in all capital letters in the Canadian application.
An application may include a claim made pursuant to the provisions of section 14 of the Trade-marks Act for a trademark that the applicant or the applicant's predecessor in title has caused to be duly registered in or for the country of origin of the applicant. Such a claim does not require a statement of use in compliance with the provisions of paragraph 30(d), however a certified copy of the registration must be provided together with the prescribed fee.
Note: A certified copy showing a trademark that differs from the applied for trademark only by elements that do not alter the distinctive character or affect the identity of the trademark will be accepted in support of a claim to the benefit of section 14 but not in support of a subsection 16(2) claim. The section 14 claim must be made exclusive of a subsection 16(2) claim in order to permit reliance on a slightly varied version of the applied for trademark.
Foreign Registrations Covering a Number of Trademarks
If an application for a single trademark is based on a subsection 16(2) claim and the corresponding foreign registration comprises a series of design or word trademarks (one of which is the applicant's trademark), the foreign registration will not normally serve to support the claim, as the trademark differs from that which was registered.
However, this type of registration will be accepted from the countries of Australia, New Zealand, Singapore, the United Kingdom, Hong Kong, China and Bermuda since such a registration has been shown to be the equivalent of a single registration for each of the trademarks listed on the certified copy.
Occasionally, an applicant will seek to base a subsection 16(2) claim on a registration obtained in one of the individual American states (e.g., North Carolina). However, such a claim is unacceptable since section 2, subsection 16(2) and paragraph 30(d) of the Trade-marks Act clearly indicate that a registration relied upon must be one that has been issued in or for a country of the Union. A state registration would not meet the foregoing criteria as neither would North Carolina be a country of the Union nor could such a registration be considered to have been effected in the applicant's country of origin.
II.7.3.3 Priority Date — Section 34
(See also the practice notice entitled Priority Claims)
Under the terms of the Convention, an applicant (or his/her successor-in-title) who is a member of a country of the Union may file an application for registration of a mark in Canada, and may claim as the filing date, the date he/she filed an application in or for the Union country for the same or substantially the same mark for use in association with the same kind of goods or services.
In accordance with subsection 34(1) of the Trade-marks Act, in order for an applicant to make a claim of priority based on an earlier filed application, a declaration setting out the date and country of filing of the earlier application must be filed with the Registrar of Trademarks within a period of six months after the date on which the earliest application was filed for the registration of the same or substantially the same trademark for use in association with the same kind of goods or services. Such a priority declaration may be filed in one of the following ways:
- by including the declaration in an application as originally filed, provided that the subsequent application is filed within the above-noted six-month period;
- by amending an application to include the declaration, provided that the amendment is made within the six-month period; or
- by filing a separate declaration in respect of an application at any time within the six-month period.
Should an error be made in a priority declaration concerning the date or country of filing of the earlier application, the Office will permit the declaration to be amended to correct the error at any time within the six-month period of time. After the expiry of the six-month period of time, no amendment will be permitted to the date, goods, services or country indicated in the declaration since it is considered that such an amendment would be inconsistent with subsection 34(1) of the Trade-marks Act.
Subsection 34(1) of the Trade-marks Act does not require that a priority declaration include the number of the earlier application. The Office, however, considers that it is highly desirable for it to be able to make available to the public either the number of, or a copy of, the earlier application. Accordingly, where a priority declaration does not include the number of the earlier application, the Office will, pursuant to subsection 34(2) of the Trade-marks Act, require the applicant to either provide the Office with the number or submit a certified copy of the earlier application.
Should an error be made in indicating the number of the earlier application, the Office will permit the number to be corrected at any time before registration. Since subsection 34(1) of the Trade-marks Act does not require the declaration to include the number, the Office considers that an amendment of the number is permitted by the applicant as of right in accordance with Rule 30 of the Trade-marks Regulations.
For the purposes of the priority declaration referred to in paragraph 34(1)(a) of the Trade-marks Act, the Office does not consider there to be any requirement to identify the specific goods or services in respect of which priority is claimed. With respect to goods or services, it is sufficient if the declaration indicates that the priority application was filed for registration of the same or substantially the same trademark for use in association with the same kind of goods or services. If, however, an applicant chooses to limit the priority declaration to goods only, to services only, or to specified goods and/or services, the limitations to the goods or services covered by the priority declaration may be made at any time within the above-noted six-month period. After the expiry of the six-month period, no amendment to remove any such limitation will be permitted since this would be considered in substance to be the making of a new priority declaration outside of the time limits permitted by paragraph 34(1)(a).
As per the Office practice notice entitled Dies Non published January 30, 2008, and subsection 66(1) of the Trade-marks Act, any trademark time limit that expires on a day when the Trademarks Office is closed for business is deemed to be extended to the next day when the Office is open for business. All persons are entitled to these extensions regardless of their place of residence or of the designated establishment to which documents are delivered.
Since section 34 of the Trade-marks Act is subject to the provisions of section 66 of the same, both the online filing system and Intrepid are programmed to automatically calculate the allowable six-month period and the dies non practice with respect to priority claims. As such, once a priority claim has been entered in our system by operations staff, there is no need to question the claim.
For example, if the six-month period for a priority claim falls on a Saturday and the following Monday is a statutory holiday, the applicant will be given until the Tuesday to file the trademark application and include the appropriate priority claim.
Since section 66 of the Trade-marks Act applies to any day the Office is closed (and not just statutory holidays) another example is if the six-month period falls on a Sunday, the applicant will be given until Monday to file the trademark application with a priority claim.
However, if the applicant would like to amend the initial claim, it is the examiner's responsibility to properly apply the Office practice with respect to priority claims.
II.7.4 Applications Based on Proposed Use in Canada — Subsection 16(3), Paragraph 30(e), Subsection 40(2)
II.7.4.1 Explanation of Proposed Use Provision
Paragraph 30(e) provides for the submission of an application to the Trademarks Office based on proposed use of a trademark in Canada. Thus, a person may apply for registration of a trademark on the basis of intended use in Canada by stating that the applicant, by itself or through a licensee, or by itself and through a licensee, intends to use the trademark in Canada.
Since actual use of the trademark in Canada in association with the applied for goods or services is only required to commence prior to registration (subsection 40(2)), this provision allows an applicant to determine the registrability of the mark before embarking on costly advertising campaigns or before investing large sums on labelling or packaging materials. The applicant also obtains an entitlement date corresponding to the day the application is filed in Canada.
An application based originally on proposed use may not be amended to claim a date of first use in Canada as such an amendment would be contrary to Rule 31(d) (see Airwick Industries Inc. v. Metzner (1982), 75 C.P.R. (2d) 55; Champagne Moet & Chandon v. Ridout Wines Ltd./Les Vins Ridout Ltee (1983), 77 C.P.R. (2d) 63; and Societe Nationale Elf Acquitaine v. Spex Design Inc. (1988), 22 C.P.R. (3d) 189).
A claim of proposed use may not be added to an application after it has been advertised as such an amendment would be contrary to Rule 32(c).
As well, pursuant to Rule 32(d), an applicant will not be permitted to change the basis of the application from reliance on proposed use in Canada to reliance on use and registration abroad after advertisement.
II.7.4.2 Declaration of Use — Subsection 40(2)
After the application containing a proposed use claim is allowed, the applicant must, in accordance with subsection 40(2) of the Trade-marks Act, file a declaration of use stating that use of the mark in Canada has commenced in association with all or some of the goods or services covered by the application. If the trademark has only been used in association with some of the goods or services, the mark may only proceed to registration in respect of those goods or services. If the applicant itself does not intend to use the trademark, the declaration of use required can be submitted by the applicant's licensee or successor in title.
A licensee is an entity licensed by or with the authority of the owner of a trademark to use the trademark in a country. The owner has, under the license, direct or indirect control of the character or quality of the goods or services. Accordingly, the use, advertisement or display of the trademark in that country by that entity, has, and is deemed always to have had, the same effect as such use, advertisement or display of the trademark in that country by the owner. See also the subsection 50(1) of the Trade-marks Act.
The format in which a Declaration of Use may be set out is as follows. Use of the identical format is not required, provided that the same information is given.
Declaration of Use
File Number: __________
Applicant's Name: __________
That since the filing of this application for registration of the trademark, the applicant, by itself and/or through a licensee, has commenced the use in Canada of the trademark claimed in the said application in association with (Please select one box only):
___ All the goods and/or services specified in the application.
___ Only the goods and/or services shown on the attached page.
II.7.4.3 Abandonment under Subsection 40(3)
Pursuant to subsection 40(3), an application for a proposed trademark is deemed to have been abandoned if a declaration of use is not received by the later of:
- six months after the Notice of Allowance by the Registrar, referred to in subsection 40(2); and
- three years after the date of filing of the application in Canada.
The Notice of Allowance issued by the Trademarks Office will specify the response date based on the foregoing criteria.
Extensions of Time — Section 47
(See also the practice notice entitled Extension Fee and Refunds)
Upon the expiration of the time limit to file a declaration of use, the Trademarks Office will grant an extension of time of six months if the request is justified and the applicant pays the prescribed fee as set out in Item 9 of the Tariff of Fees of the Trade-marks Regulations.
If a reason is not provided that would justify the extension of time, the Office will refuse the extension of time and abandon the application.
Where the applicant requires approval from a government department before use of the trademark can begin, the Office will grant an extension of time of one year. Specifics of the government department from which the applicant is seeking approval will be required.
Significant and Substantive Reasons
(See also the practice notices entitled Extensions of Time to File a Declaration of Use and Declaration of Use - Significant Substantive Reasons)
The Trademarks Office will require significant and substantive reasons to support a request for an extension of time that extends beyond the period of three years from the original deadline to file a declaration of use. The determination of whether a reason is significant and substantive will be decided on an individual basis.
II.7.5 Applications for Certification Marks — Sections 23, 24 and 25 and Paragraph 30(f)
(See also the practice notices entitled Certification Marks and Certification Marks - Compliance with Paragraph 30(f))
II.7.5.1 Definition of Certification Mark
A certification mark is defined in section 2 of the Trade-marks Act as "a mark that is used for the purpose of distinguishing or so as to distinguish goods or services that are of a defined standard with respect to:
- the character or quality of the goods or services,
- the working conditions under which the goods have been produced or the services performed,
- the class of persons by whom the goods have been produced or the services performed, or
- the area within which the goods have been produced or the services performed,
from goods or services that are not of that defined standard".
According to paragraph 30(f) and subsection 23(1), an applicant may file an application to register a certification mark as long as he/she is not engaged in the manufacture or sale of goods or the performance of services such as those covered by the mark.
The owner of a certification mark may be engaged in activities other than certification, such as the sale of goods or the performance of services other than those covered by the certification mark. The owner may use the same mark as a certification mark on goods and as an ordinary trademark on services, or vice versa. However, the applicant cannot use the same trademark to both indicate defined standards for goods or services and use it as an ordinary trademark to distinguish those same goods or services from the goods or services of others, as the co-existence thereof would directly contradict the claims to use made in each application.
II.7.5.2 Use of Certification Mark
An example of a certification mark is one registered by a trade association to identify goods or services of its members. Thus, the certification mark of the Association of Professional Engineers of Ontario certifies to the purchaser of engineering services that those services have been performed by qualified professional engineers. The Association of Professional Engineers of Ontario is the owner of the certification mark and is responsible for the quality of services performed. The professional engineer who performs the services is not the owner of the certification mark but is authorized by the owner to use the mark in association with the services rendered.
Note: A certification mark can be based on a subsection 16(2) claim; however, an application for registration of a certification mark based on proposed use is not acceptable in view of the definitions of "certification mark" as found in section 2 and in view of section 23 and paragraph 30(f) of the Trade-marks Act.
II.7.5.3 Descriptive of Place of Origin — Section 25
An application for registration of a certification mark must satisfy essentially the same registrability requirements under section 12 as an application for an ordinary trademark. However, a certification mark which is descriptive of the place of origin of the goods or services is registrable if:
- the applicant is the administrative authority of a country, state, province, or municipality, including or forming part of the area indicated by the mark; or
- is a commercial association having an office or representative in such area.
The owner of any certification mark registered under section 25 shall permit the use of the mark in association with any goods or services produced or performed in the area of which the mark is descriptive.
II.7.5.4 Data on Application
The examination of an application to register a certification mark requires determining that the following provisions have been met.
- The applicant cannot be engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those associated with the certification mark pursuant to subsection 23(1) of the Trade-marks Act.
- When the mark is identified by a geographical term, pursuant to section 25 of the Trade-marks Act the applicant must be the administrative authority or commercial association of the area indicated by the mark.
- Paragraph 30(f) of the Trade-marks Act requires an application for the registration of a certification mark to contain particulars of the defined standard referred to in the definition of "certification mark" in section 2 of the Trade-marks Act.
- In view of the decision of the Trademarks Opposition Board in Molson Breweries v. Labatt Brewing (1996), 69 C.P.R. (3d) 274 in respect of the trademark KOKANEE & Design, the Office does not accept an application for the registration of a certification mark as complying with the requirements of paragraph 30(f) of the Trade-marks Act, unless the application sets out in a meaningful way particulars of the defined standard that the use of the mark is intended to indicate. To be meaningful, the particulars set out should allow a member of the public to ascertain the precise nature of the defined standard that the use of the mark is intended to indicate.
- An acceptable defined standard may include details on the qualifications required from the persons producing the goods or providing the services or norms of quality or performance or production of the goods and services, etc.
- Where the defined standard is very lengthy or where certain details of the standard may change from time to time, it is permissible for the applicant to include a brief summary of the standard in the trademark application and to refer to another document for the details of the standard, provided however that at least the relevant portions of the other document are available to and easily accessible by the public. To ensure that any such other document is available to and easily accessible by the public, it is highly recommended that the applicant provide a copy of the complete document describing the details of the defined standard. Please note that a reference to a web link is not desirable since, a web link may no longer exist and therefore the defined standard details would no longer be accessible to the general public. If the document is only available upon the payment of a fee, this would be considered unacceptable and contrary to the provisions of paragraph 30(f) of the Trade-marks Act.
- In all cases, a brief summary of the standard will need to be included in the application. A mere reference to another document is not acceptable.
- Example of defined standards in registered certification marks:
- TMA707,008 GROWN IN IDAHO & Design
- The certification mark, as used by person authorized by the certifier, certifies the regional origin of potatoes grown in the State of Idaho and certifies that those potatoes conform to grade, size, weight, color, shape, cleanliness, variety, internal defect, external defect, maturity and residue level standards promulgated by the certifier. Copy of the complete details of the standard are available for the public within the Canadian Intellectual Property Office.
- The certification mark must be used in Canada by licensees of the applicant in the case of an application based on use in Canada.
- In the case of a foreign applicant relying on registration and use abroad, a certified copy of the foreign registration must be furnished. The corresponding registration need not cover a certification mark. That is, the foreign applicant may have used the trademark abroad as an ordinary mark even though he/she now wishes to register it as a certification mark in Canada. Conversely, a trademark registered and used as a certification mark abroad may be offered for registration as an ordinary trademark in Canada.
Certification Mark — Lengthy Defined Standard
The Office practice notice of July 15, 1998 provides that the applicant may provide a summary of the defined standard in the application as long as "the relevant portions of the other document are available to and easily accessible by the public".
Where the details of the defined standard are very lengthy, the applicant is still required to make a copy available to the public and include the name and a brief summary of the relevant portions of the document relied upon in the application. As stated in Molson Breweries v. Labatt Brewing (1996), 69 C.P.R. (3d) 274 at 283 (T.M.O.B):
It would not be imposing too onerous a burden on an applicant to furnish a meaningful "defined standard" when the certification mark application is initially filed or to update the defined standard as the need arises. Further, easy access to the standard which a certification mark symbolizes would appear to be in the public interest. Presumably, the particulars of the defined standard need not be set out in its entirety in the trademark application as long as reference is made to the titles of published manuals, or the like, where the standard may be found.
The particulars of the defined standard must accompany the application since subsection 29(1) of the Trade-marks Act requires that "the documents on which the entries therein are based…shall be open to public inspection during business hours…". Therefore, it is not acceptable for the applicant to provide a Web or Internet address where the defined standard may be viewed electronically since such information may not always be available to public inspection.
Where the details of the defined standard are very lengthy and the applicant does not wish to submit a paper copy, the Office would allow the applicant to submit an electronic version of the defined standard in an acceptable format provided that a summary of the standard is included in the application. It is the responsibility of the applicant to ensure that the electronic version of the defined standard is submitted in such a format that is easily readable and accessible to the public in accordance with subsection 29(1) of the Trade-marks Act.
Changing Applications Between Regular Trademark Marks and Certification Marks
Subsection 23(2) of the Trade-marks Act provides that the owner of a certification mark may license others to use a trademark and that such use is considered to be use by the owner.
Subsection 50(1) of the Trade-marks Act provides that use of a trademark through a licensee is considered to have the same effect as use by the trademark owner.
Therefore, notwithstanding Rule 31 of the Trade-marks Regulations, the Office considers that an application for a regular trademark used by the applicant may be converted to an application for a certification mark used through a licensee.
The Office considers such an amendment to be clarification that the applicant's use of the trademark has been through a licensee as a certification mark and not contradictory to the statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services.
An amendment from an application for a certification mark used through a licensee to an application for a regular trademark used by the applicant is also acceptable. The Office will accept that the applicant's use of the regular trademark has been through a licensee and will not consider such use to be contradictory to the statement made in the initial application that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services.
This is consistent with the decision of Mister Transmission (International) Ltd. v. Registrar of Trade Marks (1978), 42 C.P.R. (2d) 123 (F.C.T.D.), at 126-127:
While the registered mark and the certification mark are used for quite different purposes, the first for the purpose of distinguishing the services of the owner of the mark from services performed by others, and the other for the purpose of distinguishing services of the defined standard from services that are not of such a defined standard and they are thus marks of different categories or types, both are included in the definition of "trade mark" in s. 2 of the Act and there is nothing in the Act, as there was in para. 28(1)(b) 3 of the Unfair Competition Act, 1932 (Can.), c. 38 and also R.S.C. 1952, c. 274, which prohibits a person from owning registered marks of both types so long as he complies with s-s. 23(1) and is not engaged in the performance of services of the kind in association with which the certification mark is used. If he is not so engaged, the fact he is on the register as being the owner by assignment of a registered trade mark with which the certification mark is confusing appears to me to be irrelevant to his right to registration of the certification mark.
And at 129:
Subsection 23(2) appears to remedy this by providing that use by a licensee of the owner shall be deemed to be use by the owner. But plainly, such use is not deemed to be equivalent to engaging in the manufacture, sale, leasing or hiring of wares or the performance of services. If it were, the owner would be disqualified by s-s. 23(1), with the result that no one could ever qualify to register a certification mark.
And further, at 129-130:
But, in my opinion, it does not follow that, because a trade mark is used by a registered user and because, for the purposes of the Act, that use has the same effect as use by the registered owner, the registered owner must be deemed to be engaged in the manufacture, sale, leasing or hiring of the wares or the performance of the services in association with which the trade mark is used.
II.7.6 Applications to Extend Statement of Goods or Services — Paragraph 41(1)(c) and Subsection 41(2)
Paragraph 41(1)(c) of the Trade-marks Act provides that the registered owner of a trademark may amend the statement of the goods or services in respect of which the trademark is registered.
Subsection 41(2) of the Trade-marks Act provides that an application to extend the statement of goods or services in respect of which a trademark is registered has the effect of an application for registration of the trademark in respect of the goods or services specified in the application for amendment.
Conversion to an Ordinary Trademark Application
There are occasions when an applicant may wish to convert an application to extend the statement of goods or services to an ordinary trademark application. This is an acceptable practice, however a new serial number will have to be awarded and, in the case of design marks, a drawing must be filed. The filing date remains the same.
Examiners must also ensure that the ordinary application replacing the extension of goods or services application maintains the same trademark, statement of goods or services, basis of filing and name and address of applicant.
Under the same conditions, the Office will also permit the applicant to revert to an ordinary application for registration when the registration on which an extension of goods or services application is dependent becomes expunged or cancelled. In addition, examiners should inform the applicant of the expungement and of the possibility of reverting to an ordinary application. If the applicant requests this change, a revised application must be filed deleting reference to the registration on which the extension application was based.
Affidavit of Continuous Use
For trademarks previously registered pursuant to subsection 12(2) of the Trade-marks Act, section 29 of the Unfair Competition Act or Rule 10 of the Trade Mark and Design Act, where the registration of the mark which is the subject of an application to extend the goods or services is contrary to either paragraphs 12(1)(a) or (b), the Registrar does not require a showing of acquired distinctiveness pursuant to section 32 if the goods or services in respect of the application to extend are in the same class as the goods or services covered by the registration. In such a case, the Office accepts an affidavit of continuous use.
The following should be kept in mind:
- The evidence must establish that use of the trademark has been continuous in relation to the goods or services originally registered, from the date of the initial evidence establishing secondary meaning until the date of application for the extended statement. The evidence should also show use of the trademark in respect of the extended goods or services from the date of use in Canada until the date of application for the extension statement.
- The application to extend the goods or services must be based on use in Canada.
Trademarks Previously Registered Pursuant to Section 14 of the Trade-marks Act
An applicant may not rely on the evidence submitted with the original registration in an extension of goods or services application unless the evidence in support of the original registration filed pursuant to section 14 also related to the goods or services for which the application to extend is filed.
For example, if the foreign registration and evidence filed in support of the initial registration showed that the trademark was not without distinctive character in Canada in association with "shoes, books, tennis rackets and perfume", yet registration was sought only in relation to "shoes and tennis rackets" the applicant could claim the benefit of section 14 in a subsequent application to extend the statement of goods in relation to "books and perfume" as the evidence already filed supports the claim.
However, if the goods or services in the application to extend were not included in the certified copy and in the evidence filed in support of the section 14 claim on the initial registration, new evidence pursuant to either subsection 12(2) or section 14 must be submitted in relation to the additional goods or services. It should be noted that it is not sufficient that the additional goods or services in the application to extend fall within the same class as those for which section 14 evidence was originally filed. Therefore, goods extended to "golf clubs" would not be supported by evidence filed in relation to "tennis rackets".
The mere filing of an affidavit of continuous use in Canada is neither appropriate nor acceptable in the foregoing situation since a section 14 claim is not based on use in Canada.
The preceding practice applies only to trademarks which, as a whole, contravene either paragraph 12(1)(a) or 12(1)(b) of the Trade-marks Act.
II.7.6.1 Other Amendments Under Paragraph 41(1)(c)
The application to amend a registration to extend its statement of goods or services may include a request for other amendments affecting the statement of goods or services in respect of which the trademark is registered. Amendments of the statement of goods or services are authorized by paragraph 41(1)(c) of the Trade-marks Act and include deletion of certain goods or services from the statement of registration or re-statement of the goods or services for purposes of clarification.
II.7.6.2 Drawings and Specimens - Extension of Goods or Services
No drawings or specimens are normally required to accompany an application covering an extension of goods or services. If, however, the trademark was registered under the Trade Mark and Design Act or the Unfair Competition Act and if no drawings are on file, one will be requested. See also sections II.6.2 and II.6.3 of this Manual.
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