Written By: Stephanie Williams (IP Lawyer) & Spencer Faubert (Law Student)
Looking to register a trademark, brand, logo, or slogan in Canada? One crucial step in the trademark registration process is to clearly describe the goods and services that are sold, or will be sold, under that trademark. Read on to find out why clarity is key to obtain a trademark registration in Canada and learn practical tips for crafting effective descriptions.
Goods and Services Requirements
To successfully register a trademark in Canada, a trademark application requires a listing of goods and services that are offered in connection with the trademark. These listings of goods and services must be included when a trademark application is filed and provide the scope of protection for the trademark, once registered.
A fundamental requirement for trademark registration in Canada is to describe goods and services in “specific and ordinary commercial terms”. This might sound straightforward, but it is an area where applicants frequently run into trouble. Many objections raised during the Canadian trademark examination process stem from descriptions that are not in sufficiently “specific and ordinary commercial terms”.
Avoid Obstacles to Registration
In Canada, the Trademarks Office tends to enforce stricter standards for descriptions of goods and services as compared to many other jurisdictions. If an application does not satisfy Canadian requirements, the application will be refused, likely incurring additional costs and creating registration delays, which can impact brand protection and business plans.
A typical problem that applicants encounter with descriptions of goods and services in Canadian trademark applications is vague or overly broad terms:
Here are a few examples:
- Using ambiguous terms like “clothing” instead of specifying “men’s and women’s casual clothing”, or “software” instead of specifying “computer software for use in management of payroll”.
- Listing categories that are too general, such as “retail services” instead of specifying “retail services for hockey equipment, sportwear, and sporting goods”.
Tips for a Successful Description
1. Be Specific
Your description should precisely detail what the relevant goods and/or services are. Instead of general terms, identify specific products, types of products, or service functions.
2. Use Ordinary Commercial Terms
“Ordinary commercial terms” are terms that are commonly understood to describe the relevant goods and services. They should reflect the standard language used by businesses and consumers in the relevant industry.
Examples of Specific and Ordinary Commercial Terms:
3. Be Proactive About Future Needs
The scope of coverage of a trademark application is limited by the description of goods and services listed at the time of filing. In other words, descriptions of goods and services cannot be broadened or expanded after a trademark application is filed. In contrast, descriptions of goods and services can be narrowed. If a business plans to expand product or service offerings, it is essential to consider those future plans and to include any planned future products and services at the time of filing.
Example: If a business currently offers “consulting services for small businesses” but plans to expand into “consulting for large enterprises” in the future, both types of services should be included in a trademark application to avoid filing additional applications to cover these new services at a later date.
Navigating the trademark registration process in Canada can be complex, especially when it comes to crafting a precise description of goods and services. To minimize potential obstacles and delays to registration, please contact one of our trademark attorneys to help file your application.
If you have any questions about registering your trademarks, brands, logos, or slogans in Canada, contact our experts at BRION RAFFOUL LLP today!
