The Wares and Services Manual: User Guide
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The Wares and Services Manual ("the Manual") serves as a guide for specifying wares and services in trade-mark applications. The intended users of this Manual are trade-mark examiners, agents, and applicants.
Paragraph 30(a) of the Trade-marks Act states that an application for a trade-mark must contain, "a statement in ordinary commercial terms of the specific wares or services in association with which the mark has been used or is proposed to be used."
The Manual contains a representative listing of acceptable wares and services, as well as directions for making unacceptable wares and services compliant with paragraph 30(a). The listing of wares and services contained in the Manual is not intended to be exhaustive but rather to provide identifications that will be accepted without the need for further specification. These listings can also be used to indicate by analogy the kinds of identifications that will be acceptable for wares and services not covered by the Manual.
If the applied for wares or services do not appear in the Manual, and if there are no similar descriptions of wares or services in the Manual, a trade-mark examiner will conduct research to find out if the wares or services are described as they normally would be in the trade, e.g., does an Internet search reveal numerous uses of the description of wares or services in question?.
Note: Even if research shows that the wares or services in question are in ordinary commercial terms, they must also be "specific." For example "clothing" is an ordinary commercial term but it is not specific. However, "exercise clothing", and "baby clothing" are both examples of specifically defined types of clothing and are acceptable. At times, in order to specifically define a ware, the area of use of the ware is required. For example "catalysts" is an insufficiently defined ware. 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 wares acceptable. This becomes especially important in cases where a trade term can have two completely different meanings. For example, "crimping irons" can be used for hair or for mending or molding leather or iron.
The following three-part test will be considered in this determination:
- Are the wares 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 wares or services is not registrable.
- Are the wares or services sufficiently specific so that it is possible to assess confusion? A mark that is confusingly similar to a registered trade-mark or a pending trade-mark is not registrable.
- Are the wares or services sufficiently specific to ensure that the applicant will not have an unreasonably wide ambit of protection? For example, wares described as "computer software", without further specification, would give the applicant an unreasonably wide range of protection.
If the answer is "yes" to all three of these questions, the Office of the Registrar will accept the statement of wares or services as being sufficiently specific. If the answer to any one of those questions is "no" the wares or services will be considered insufficiently specific. In this case, the Office of the Registrar will ask for further specification and, where possible, will provide suggestions.
If the applied for wares or services appear in the Manual as acceptable, the Office of the Registrar will accept the statement of wares or services, unless a change relating to the wares or services in question has been noted in the Manual. If the wares or services in question do not appear in the Manual, but are as specific as or more specific than a related or similar description of wares or services appearing in the Manual, the Office will accept the statement that is not in the Manual.
It is important to note that the identification of wares or services made in the initial application may later be further specified; however, no broadening of the initial identification of wares or services is permitted.
The Manual is divided into separate listings of wares and services. Generally speaking, wares and services appear only once in the Manual and are not cross-referenced.
Registered trade-marks cannot be used in statements of wares or services. Applicants must provide generic descriptions of their wares or services in specific ordinary commercial terms. Clear and concise language should be used when applying for wares or services that do not have common names. Excessively technical or overly lengthy descriptions of the characteristics of the wares or services are not acceptable.