Amendments to the Examination Manual [2001-05-03]

Examination Procedures Paragraph 30(a) of the Trade-marks Act

Publication Date: 2001-05-03

As indicated at the beginning of the Wares and Services Manual in the section entitled "How to use the Wares and Services Manual", the Manual does not constitute an exhaustive list of all possible wares and services and identifications of wares and services not listed in the Manual may also be acceptable. Examiners should accordingly be open to accepting statements of wares and services which do not appear in the Wares and Services Manual. Examiners should only make an objection pursuant to Section 30(a) of the Act if they are certain that the description of wares/services provided is not "…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." When assessing a Statement of Wares and Services, Examiners are to use the following approach.

If the wares/services appear to be specifically described in ordinary commercial terms, the Statement of Wares/Services is to be considered acceptable.

The Examiner should be satisfied that it is possible, with the description of wares/services provided, to assess whether the mark is clearly descriptive or deceptively misdescriptive and/or confusing with another mark. The Examiner should also be satisfied that accepting the wares/services as described will not grant the applicant an unreasonably wide ambit of protection.

If the wares/services do not appear to be specifically described in ordinary commercial terms, the Examiner should refer to the Wares and Services Manual.

If the wares/services appear in the Manual, the Examiner is to accept the Statement of Wares/Services [unless a change in practice relating to the wares/services in question has been published in the Trade-marks Journal].

If the wares/ services do not appear in the Manual but appear to be as specific or more specific than a description of wares or services which appears in the Manual, the Examiner is to accept the Statement of Wares/Services.

If the wares/services do not appear in the Manual and there are no similar descriptions of wares/ services in the Manual, the Examiner should conduct research in order to attempt to ascertain if the wares/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/services in question?). The Examiner should also ask him/herself the following questions:

1. Are the wares/services sufficiently specific so that it is possible to assess whether Section 12(1)(b) of the Trade-marks Act applies?
2. Are the wares/services sufficiently specific so that it is possible to assess confusion?
3. Are the wares/services sufficiently specific so as to ensure that the applicant will not have an unreasonably wide ambit of protection [e.g.: approving wares described as computer software, without further specification, would give the applicant an unreasonably wide ambit of protection]?

If the answer is yes to each of those three questions, the Examiner is to accept the Statement of wares/services. If the answer to any one of those questions is no, the Examiner should ask for further specification and, where possible, provide suggestions.

If the Applicant or the Applicant's Agent responds that the wares/services are specifically described in ordinary commercial terms and the Examiner is not certain that they are not, s/he is to consider the Statement of Wares and Services acceptable (as long as it is possible to ascertain confusion and to ascertain if the provisions of Sections 12 apply). If the Examiner is certain that the wares/services are not specifically described in ordinary commercial terms (e.g.: computer software), s/he is to maintain the Section 30a) objection.

Particular Situations

Examiners should consider the context of a particular description of wares/services

As a general rule, Examiners should consider the context of a particular description of a ware or service (eg.: The word "pipes" on its own would require more specificity since one would want to know if they were for plumbing or smoking. If the word "pipes", however, is accompanied by other smoking products, more specificity would not be required since one can assume that the pipes in such a case are for smoking.)

Examiners should not question whether wares are transferred in the normal course of trade pursuant to Section 4 of the Trade-marks Act

Examiners are not to question whether wares are transferred in the normal course of trade pursuant to Section 4 of the Act (e.g.: wares described as menus, business cards, letterhead, etc. should not be questioned). While it is certainly possible that such wares are not transferred in the normal course of trade, it is more appropriate to assess such an issue in opposition where evidence of how the wares are transferred can be considered.

Examiners are not to question services on the basis that they appear to be merely incidental or ancillary to the sale of the applicant's goods but they are to question whether the services offer a benefit to the public when the services appear to be merely the promotion, marketing or advertising of the applicant's own wares and there does not appear to be a benefit to the public

Examiners are to question services which do not appear to offer a benefit to the public (e.g.: advertising, marketing and promotional services which appear to be in relation to the Applicant's own goods or services). This is consistent with the decision of the Trade-marks Opposition Board in Ralston Purina Co. v. Effem Foods Ltd. (1997), 81 C.P.R. (3d) 528. In that case, the Hearing Officer commented:

…while there is nothing in the Act which restricts a service to one that is not merely incidental or ancillary to the sale of goods, there is still a requirement that there be a service offered to some third party before a statement of services will be accepted. In this case the applicant's services are described as "advertising, marketing and promotional services…". I do not think that the terms "advertising" or "marketing" describe a service to the public in this case as this seems to me to fall into the same category as the services in the Carling O'Keefe case where the only person who would benefit is the applicant. I do not think that making the public aware of your product is actually providing a real service to the public. With regard to "promotional" services this could possibly include a real service to the public such as the coupon program described in the Kraft case but the service is not set out in enough detail for me to make an accurate determination. I am therefore allowing this ground of opposition and the statement of services is therefore to be struck from each of the four applications.

If it appears that the public does benefit from such services, even if they relate to the promotion of the applicant's own goods and services, they are to be considered acceptable. In Kraft Ltd. v. Registrar of Trade-marks (1984), 1 C.P.R. (3d) 457, the Federal Court held that use of a trade-mark in association with "providing coupon programs pertaining to a line of food products", was a service within the meaning of the Act. Mr. Justice Strayer pointed out that there was nothing in the definition of trade-mark to suggest that "services" which are "incidental" or "ancillary" to the sale of goods are not acceptable services. Examiners are not to object to services on the basis that they appear to be merely incidental to the sale of the applicant's goods since there is no legal basis for making an objection on that ground. If the Applicant/Agent files a response and states that the services in question do offer a benefit to the public (apart from simply educating the public about the Applicant's own wares or services) and the Examiner, after considering the response, is not certain that there is no benefit to the public, s/he is to accept the services in question.

Intangible things such as web sites, electricity, domain names, etc.

When the application lists intangible things such as "web sites", "electricity", "domain names", etc. in its Statement of Wares and it appears as though the applicant may actually be offering a service (e.g.: "utility services namely the transmission of electricity", "designing Internet web sites" or "selling domain names"), the Examiner should advise the applicant of that fact.

Parts and Fittings

Examiners are not to question "parts and fittings" when the item for which the parts and fittings are intended is provided (e.g.: "automobiles and parts and fittings therefor" and "parts and fittings for the aforementioned goods" would be acceptable descriptions of wares). Wares described as "parts and fittings" should only be questioned when there is no item identified to which the parts and fittings attach.

Accessories

Examiners are to question "accessories" even when the type of item for which the accessories are intended is provided (e.g.: accessories for automobiles should be questioned since the accessories could encompass a wide variety of goods including seat covers, televisions, first aid kits, etc.).

Terms such as and "including" and "such as"

If terms such as "including" and "such as" follow an acceptable description of wares/services, there is no need to replace them with "namely" or "consisting of" Ordre des Comptables Agrees du Quebec v. Computer Automation, Inc. (1991), 36 C.P.R. (3d) 98 at p. 102]. The only time those terms need to be replaced with "namely" or "consisting of" is when they follow a statement of wares/ services which is not specifically described in ordinary commercial terms (e.g.: "milk such as chocolate milk" and "coats including fur and leather coats" would be acceptable but "computer software including educational software relating to the treatment of diabetes" would not be acceptable).

Houses

Examiners are not to question whether houses or other structures are prefabricated, modular or portable. If the Statement of Wares lists houses, the Examiner can assume that the applicant meant that the mark is used in association with houses as opposed to services which can be described as the building and selling real property.

Is it possible to amend an application to add "shoes" and "purses" for example, when the Statement of wares initially read "clothing"?

No, since it would be contrary to Rule 31(e) which prohibits amendments to change the Statement of Wares or Services so as to be broader than the Statement of Wares or Services of the original application.

Is it possible to amend an application from one covering services to one covering wares and vice versa?

Where it is clear from the application that the applicant intended to apply for registration of the mark in association with wares in the original application, it is not possible to amend the application to claim services or vice versa since such an amendment would be contrary to rule 31(e). For example, in Thomas J. Lipton Inc. v. Primo Foods Ltd. (1992) 44 C.P.R.(3d) 556, the original application was for services described as the "advertising and sale of food products". The Examiner accepted an amendment to the application so that it was for wares described as "processed meat products, namely smoked meats, corned beef, pastrami, ham, etc. The Chairman of the Opposition Board held that it was a clear error in law for the Examiner to permit the amendment even though the statement of services was ambiguous at the time of filing. The fact that the application was intended to cover services was not ambiguous since the application contained the statement that the applicant was satisfied that it was entitled to use the mark in association with services. However, if the original application is ambiguous, an amendment will be acceptable, as long as the applicant states that it is satisfied that it is entitled to use the trade-mark in association with wares/ services as appropriate.

For example, if the applicant states that it intends to use the trade-mark in association with the wares "restaurant services" and states that it is satisfied that it is entitled to use the trade-mark in Canada in association with "restaurant services", the examiner should allow the applicant to amend its application to refer to services. It is felt that no third party would be prejudiced with this type of amendment. Because of the ambiguity of the original statement, notice was given that the application could cover wares or services.

Computer Software

"Computer software" on its own is not an acceptable description of wares since it encompasses a very wide field. The 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 area of use should be provided also. For example, the following would be acceptable descriptions of wares:

"software for use in cancer diagnosis"
"software for computer aided mechanical design"
"computer programs for controlling mining machinery"
"software for use in database management"
"software for use as a spreadsheet"
"software for word processing"
"computer software for designing web sites"
"software for creating computer games"
"computer programs for teaching typing skills"
"communications software for connecting (specify, e.g.: computer network users, global computer networks)"
"computer communications software to allow customers to access bank account information and transact business"
"computer e-commerce software to allow users to perform electronic business transactions via a global computer network"
"computer search engine software"
"computer software to automate data warehousing"
"computer software to control and improve computer and audio equipment sound quality"
"computer software to enhance the audio visual capabilities of multimedia applications, namely for the integration of text, audio, graphics, still images, and moving pictures"
"computer telephony software"
"data compression software"
"desktop publishing software"
"educational software featuring instruction in (specify subject matter)"
"educational software for children"
"facilities management software, namely software to control building environmental, access and security systems"
"factory automation software, namely software to integrate manufacturing machine operations, track problems and generate production reports"
"industrial process control software"
"web site development software"
"computer operating programs"

Telecommunications Services

"Telecommunications services" is not an acceptable description of services as it is not sufficiently specific. Examples of descriptions that would be acceptable are as follows:

"telecommunications air time brokerage services"
"telecommunications gateway services"
"telecommunications services, namely ISDN services"
"telecommunications services namely personal communications services"

Telecommunications Equipment

When an application lists "telecommunications equipment" in the Statement of Wares, the Applicant must indicate the specific items of equipment, e.g.: telephones, facsimile machines, etc.

Ordinary commercial terms

Occasionally, it will appear to the Examiner that the wares or services are described quite specifically but that they are not described in ordinary commercial terms. In Decra-Loc Canada v. Pave Tech, Inc. (1995), 61 C.P.R.(3d) 553, the Trade-marks Opposition Board held that wares described as "border support systems for discrete block ground covering" were not in ordinary commercial terms since the evidence showed that the wares were normally described as "a paver edge restraint system, a paving stone edge restraint, a curb system for paving designs and the like." The Opposition Board commented that simply because a product description is comprehensible and adequately identifies the product does not mean that it is a description customarily used in the trade to refer to the product. As an example, the Opposition Board noted that everyone would easily recognize "a seat having four legs and a back for one person" as a chair, however, that is not how a chair would customarily be referred to in the furniture trade. When it appears to the Examiner that the wares/services are not described as they would customarily be described in the trade, the Examiner should raise an objection pursuant to section 30(a) of the Act.

Clothing

Examiners are to accept statements of wares which describe a limited category of clothing. Examples of acceptable descriptions of clothing are "athletic clothing"; "beachwear"; "casual clothing"; "casual wear"; "children's clothing"; "baby clothes"; "outdoor winter clothing"; "rainwear"; "exercise clothes"; "maternity clothes"; "clothes for fishing"; "golf wear"; "ski-wear"; "formal wear"; "protective clothing"; "fire retardant clothing" ; "bridal wear"; "undergarments"; and "uniforms for medical personnel".

Footwear

Examiners are to accept statements of wares which describe a limited category of footwear. Examples of acceptable descriptions of footwear are "athletic footwear"; "beach footwear"; "children's footwear"; "infant footwear"; "outdoor winter footwear"; "rain footwear"; "exercise footwear"; "fishing footwear"; "golf footwear"; "ski footwear"; "evening footwear"; "protective footwear"; "bridal footwear"; "orthopedic footwear"; "footwear for medical personnel".

Hair Care Preparations and Skin Care Preparations

Examiners should consider "hair care preparations" and "skin care preparations" as acceptable descriptions of wares. Please note that hair care products and skin care products require further specificity since they could encompass a variety of products including large machines and electrical equipment.

Conclusion

An application can be refused under Section 30(a) of the Trade-marks Act if the Registrar is SATISFIED that the APPLICATION DOES NOT CONFORM TO Section 30. However, if after careful consideration, the Examiner is still in doubt about the acceptance of a statement of wares/services, the statement of wares/services is to be accepted.