No task is as complex in the preparation of trademark applications in Canada as the specification of goods and services. This may involve the translation of extremely technical goods or services into language which accurately and specifically describes the goods and services in language which will be understood by the Examiner, but which are broad enough to allow for future innovations. The goods and services must meet the requirements for reflecting the “ordinary commercial terms” test set out in the Trade-marks Act, and at the same time meet the requirements set out in the Manual of acceptable goods and services. It is also important not to include any goods for which there will not be actual use of the trademark in Canada. Finally, if the trademark is successfully registered, it will be vulnerable to cancellation proceedings after a grace period of three years following registration, and at that time it will be necessary to satisfy the Registrar that use has been made on all of the listed goods and services set out in the trademark registration.

The difficulties presented in such a case are illustrated in a recent decision of the Trade Marks Opposition Board, Gowling Lafleur Henderson LLP v Banks DIH Ltd., 2016 TMOB 128 (CanLII). In that case, the registration covered “beer, ale and lager”, but during the relevant time period, only a “Caribbean lager” was being sold in Canada. Having distinguished in the registration between beer, ale and lager, the Opposition Board held that the goods could not be read as being interchangeable and thus maintained for all, and therefore beer and ale were struck from the registration.

The description of goods and services must therefore be carefully considered, both with a view to obtaining a registration, and to looking ahead to the protection of the registration over the long term.