The Wares and Services Manual: User Guide
(page 3 of 3)
- 3. Services
3. Services
Services are listed in alphabetical order and there is an explanatory legend on the search results page. Notes are indicated for some services where revisions have been made to the original entry, or further explanations are provided.
Services listed in bold are acceptable without further specification. Services shown in italics are not acceptable and are accompanied with a hyper-link to instructions on how to describe the unacceptable services in specific ordinary commercial terms.
3.1 Context serves to specify otherwise Unacceptable Services
In some cases, the context may serve to specify an otherwise unacceptable identification of services. In other words, a description of services listed as unacceptable in the Manual, but that can be understood to be sufficiently specific when read in context of the entire statement of services, may be acceptable. For example, "counselling" applied for alone is unacceptable as the term could include any field of "counselling" from marriage counselling to nutrition counselling. However, an application for "career planning" including the services "counselling" would be acceptable as logically the "counselling" would be restricted to "career counselling." Similarly "delivery" 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 "delivery" would be understood to mean food delivery.
NOTE: 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 services listed.
3.2 Indefinite Terms
The statement of services must be specific and avoid indefinite words and phrases. As a general rule, the following indefinite terms cannot be used to specify services which do not comply with paragraph 30(a) of the Trade-marks Act: "and the like", "and similar services", "including", "related to", "related services", and "etc.". Such terms are generally only acceptable when they follow specific 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 related 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 can be used in a statement of services if they are used to provide further specification which is not essential to determining the specific nature of the services. For example, "personal appearances by costumed characters, comedians, television celebrities, movie stars, sports celebrities and the like" is acceptable since the services of "personal appearances by a movie star or sports celebrity" are listed as acceptable in the Manual and the indefinite term "and the like" merely indicates other similar types of personal appearances.
3.3 Terms for Specifying Services
3.3.1 "Namely" "Consisting of" or "Specifically"
Services that require further specification can be described using the definite terms, "namely", "consisting of" or "specifically" to introduce the services. For example, "consulting" which alone is not acceptable, can 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".
However, applicants should list the services using their specific ordinary commercial terms and as a general rule this involves naming the specific field of the service. For example, "consulting" can be described specifically as to its field e.g., "business management consulting" or "capital investment consulting services".
3.3.2 "In the nature of" "Such as" "Comprising" "Containing" "In particular" "Particularly"
As a general rule, these terms may be acceptable in a statement of services where the kind, sort or type of services have been provided and the services following any of these terms are considered to comply with paragraph 30(a) of the Trade-marks Act.
Services stated as "entertainment services in the nature of live performances by a musical band", "entertainment services such as hockey games" or "entertainment services particularly live performances by a musical" are understood to mean "live performances by a musical band" or "hockey games" and do not encompass other services.
However, "entertainment services in the nature of music events" would not be deemed acceptable since the kind, sort or type of music event has not been provided.
Furthermore, indefinite terms may be used to specify the type of business or field of interest of the service. For example, "rental of entertainment media in the nature of movies and films on DVD", and "providing an online website comprising news, editorials, and opinions concerning current event and Internet policy" are considered to be specific services in ordinary commercial terms having regard to paragraph 30(a) of the Trade-marks Act.
3.3.3 "Featuring"
As a general rule, the term "featuring" will only be acceptable when it follows specific services.
For example, since "restaurant services" are specific; "restaurant services featuring take-out services" would also be acceptable. Similarly, since "mutual fund services" is specific, "mutual fund services featuring mutual fund distribution" would also be acceptable.
However, "financial services featuring mutual fund services", would not be acceptable since financial services alone are not considered to be specific having regard to paragraph 30(a) of the Trade-marks Act.
As well, the term "featuring" may be used where the applicant must indicate the type of business or field of interest of the service. For example, "retail store services featuring clothing", "performances featuring live dance and live music" are considered to be specific services in ordinary commercial terms having regard to paragraph 30(a) of the Trade-marks Act.
3.4 Specific Circumstances
3.4.1. Banking services, Investment Banking, Merchant Banking
"Banking services", "Investment banking services" and "Merchant banking services", are acceptable within the meaning of paragraph 30(a) of the Trade-marks Act. However, Section 983(2) of the Bank Act together with the subsection 30(i) of the Trade-marks Act forbids the trade-marks Registrar from accepting trade-mark applications that describe the services by using the words "bank", "banker" or "banking", either alone or in combination with other words, unless the applicant or its licensee is authorized to use this term under the Bank Act or any other Act of Parliament. Acceptable authorization includes the applicant's name being listed among the authorized banks listed in Schedules I, II, or III of the Bank Act. However, an applicant cannot merely be a licensee of a financial institution listed in Schedules I, II, or III of the Bank Act. It is the applicant for the registration of a trade-mark that must be so authorized in order for the application to be compliant with paragraph 30(i) of the Trade-marks Act.
If the application is based on proposed use, the Office of the Registrar will accept a statement from the applicant stating that they are authorized, or will be authorized to use the term under the Bank Act or any other Act of Parliament.
Note: There are additional provisions permitting the use of "bank", "banker" or "banking" under the Bank Act. In such circumstances, the applicant must advise the Office of the Registrar by clearly stating that they are authorized to use the words "bank", "banker" or "banking " under the Bank Act or that they comply with subsections of the Bank Act relating to permitted use, or that they are authorized by order issued by the Minister of Finance pursuant to the Bank Act.
3.4.2 Benefit to the public
Advertising, Promotion, and Marketing
In view of the Ralston Purina Co. v. Effem Foods Ltd. decision, examiners will question services where it is not clear that a real service is provided to the public. The criterion for assessment 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" and
- "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 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 product(s).
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 ordinary commercial terms in compliance with paragraph 30(a) of the Trade-marks Act.
3.4.3 Services related to the Electronic Transmission of Data
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.).
For example, the following would be considered acceptable:
- "Dissemination of financial information via an Internet-based database"
- "Electronic funds transfer" or
- "Providing access to a medical database via a global information network"
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.
For example, the following would be considered acceptable:
- "Electronic mail services through wired and wireless access, paging services, wireless digital messaging services "
- "Web hosting services "
3.4.4 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 (PCS) " or
- " Radio broadcasting services"
3.4.5 Postal services
Postal services are acceptable within the meaning of paragraph 30(a) of the Trade-marks Act. However, the Canada Post Corporation Act prohibits the use of postal services without the written consent of the Canada Post Corporation. Trade-mark applications that describe services as postal services will be questioned pursuant to paragraph 30(i) of the Trade-marks Act on the basis that the applicant cannot be satisfied that they are entitled to use the trade-mark in Canada in association with postal services.
The objection can be overcome upon receipt of written conformation from the applicant that it has been authorized by the Canada Post Corporation to use the trade-mark in association with the applied-for services since this authorization would allow the applicant to be satisfied that they are entitled to use the trade-mark in Canada in association with the services described in the application pursuant to paragraph 30(i) of the Trade-marks Act.
