What’s Included in a Trademark Application
An application for the registration of a trademark for goods or services may be filed if the applicant is using or proposes to use, and is entitled to use, the trademark in Canada in association with those goods or services.
If the applicant applies to register a trademark without intending to use it in relation to the specified goods and services, there is nothing to stop the trademark from being registered (if the trademark is otherwise registrable) absent an opposition. While it will be possible to oppose an application because the applicant was not using and did not propose to use the mark, or the application was filed in bad faith it can be difficult to locate the evidence to support such grounds. Past oppositions that succeeded on such a basis relate to particularly abusive situations.
The application must contain:
(a) a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used;
(b) in the case of a certification mark, particulars of the defined standard that the use of the certification mark is intended to indicate and a statement that the applicant is not engaged in the manufacture, sale, leasing or hiring of goods or the performance of services such as those in association with which the certification mark is used or proposed to be used;
(c) a representation or description, or both, that permits the trademark to be clearly defined and that complies with any prescribed requirements; and
(d) any prescribed information or statement.
The regulations provide that the statement of goods and services must describe each good and service in a manner that identifies a specific good or service. In addition, the description must be sufficiently specific to allow a determination to be made concerning the applicable Nice class. If similar language and scope has been used by others in the same industry, this suggests that an applicant’s statement of services or goods is in ordinary commercial terms. Where ordinary commercial terms cannot be found the statement of goods and services must be clear and concise. Typically details relating to function, area of use, or field of use of the goods or services must be added.
The CIPO Goods and Service Manual contains searchable lists of goods and services acceptable to CIPO. The CIPO Trademarks Examination Manual sets out some specific rules and guidelines for describing certain types of goods and services. CIPO also has a practice notice dealing with the use of exclusionary wording in statements of goods and services.
A separate application must be filed for the registration of each trademark. An application must group the goods and services according to the classes of the Nice Classification, each group being preceded by the number of the class of the Nice Classification to which that group of goods or services belongs and presented in the order of the classes of the Nice Classification. Any question arising as to the class within which any goods or services are to be grouped is finally determined by the Registrar, whose determination is not subject to appeal.
There is an increased likelihood that trolls or squatters can seek to apply for a mark if they are aware of a brand owner’s interest in the mark. To avoid such problems, brand owners should file applications early and control the public release of any information about any proposed marks. In more extreme situations there are methods of proceeding designed to minimize public disclosure.
If you have questions, please contact me at firstname.lastname@example.org.
Goldman Sloan Nash & Haber LLP 480 University Avenue, Suite 1600 Toronto, Ontario M5G 1V2 Direct Line: (416) 597-3371 Fax: (416) 597-3370 Email: email@example.com
These comments are general in nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.