The most common objection raised in the examination of an application, by the Registrar of Trademarks, is that the description of goods and/or services is not defined in ordinary commercial terms. Prior to filing an application, as part of our trademark services, we work with our clients to fully understand their business activities and draft a suitable statement of goods and services that will not elicit an objection. However, the Trade-marks Act and Trade-marks Regulations do not define the meaning ‘ordinary commercial terms’ and together with the many inconsistencies among the trademark examiners objection can still be raised.
Even if a statement of goods and services is in ordinary commercial terms, it must also be specific. This is of particular importance in cases where a trade term may have more than one completely different meaning depending on the field of use. In view of the requirement ‘to specify’ goods and services we give consideration to the dictionary meaning of the term, since there is no definition in any statute. In providing details of the goods/services, the description must be expressed in ordinary commercial terms. The expression ‘ordinary commercial terms’ is generally understood to mean a non-technical and clear description of the goods/services as customarily used in the trade to refer to goods/services and so understood by an average person.
The drafting of the statement of goods/services prior to filing of an application is of the utmost importance since, once filed, an application cannot be amended to add to or broaden the scope of the goods/services. However, after filing its application an applicant may, at any time, delete or restrict the scope of its goods/services.
A statement of goods/services that is too specific could, however, be fatal to the application. The Trademarks Act stipulates that a trademark will be registered if it is:
…clearly descriptive or deceptively misdescriptive in the English or French language of the character or quality of the goods or services in association with which it is used or proposed to be used or of the conditions of or the persons employed in their production or of their place of origin; or
…the name in any language of any of the goods or services in connection with which it is used or proposed to be used.
Thus, the applicant must balance its need to obtain as wide a scope as the law permits against a duty to state its goods or services in specific and ordinary commercial terms together with the Registrar’s ability to assess the scope of the rights requested for registration.