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I am considering applying for a trademark. The trademark I would like to register is the product name of a product that I am importing and selling. The name is an invented word (e.g. something to the effect of Bubbaloobaloobaloo), which is obviously neither descriptive of the product's character, depending on what you consider to constitute its character, nor its function. However, after first reading the Canadian Intellectual Property Office's Trademarks Guide, and then quite a bit of the Trademark Act, I am still uncertain as to whether or not the trademark is even registrable. Depending on the interpretation of a few particular clauses, I may be wasting my money if I apply.

With respect to filling out the application, the Trademark Act states in 30(2)(a) and 30(3), "The application shall contain a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used; The goods or services referred to in paragraph (2)(a) are to be grouped 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." In addition to that, the Trademarks Guide provides the following example,

"Statement of goods and services

"Class 25 "Blouses, sweaters, pants, skirts, socks, underwear and pyjamas.

"Class 35 "Operation of an online retail clothing store; operation of an online retail jewellery store."

In the example, every single "ordinary commercial term" listed under 'Class 25' is provided the Nice Classification system, whereas only bits and pieces of the "ordinary commercial terms" listed under 'Class 35' can be found in the suggestions provided by the Nice Classification system. In light of all this, I am led to believe that "ordinary commercial terms" should be at least loosely interpreted for the most part as 'terms provided by the Nice Classification system', but I cannot be absolutely sure...

Now on to the real issue.

Under the section 'What You Can't Register' of the Trademarks Guide, the examples it provides for 'Words in Other Languages' with respect to section 12(1)(c) of the Trademark Act entitled 'Registrable Trademarks' are as follows, "You would not be able to register the word 'gelato' (Italian for 'ice cream') in association with frozen confections; 'anorak' (Inuktitut for 'parka') in association with outerwear; or 'wurst' (German for 'sausage') in association with meat." The legislation merely states, "A trademark is registrable if it is not the name in any language of any of the goods or services in connection with which it is used or proposed to be used."

The big question presents itself: Does the product name or the corresponding "ordinary commercial terms" provided by the Nice Classification constitute the "name of the goods"?

I would really appreciate another perspective. Can anybody weigh in on this?

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Does the product name or the corresponding "ordinary commercial terms" provided by the Nice Classification constitute the "name of the goods"?

As used here, "name of the goods" means the word used to denote that sort of thing generically. So if the article in question is a knife, the name of the goods in English is "knife," while the name in French is "couteau," in German is Messer, etc.

Yes, therefore, the name of the goods is the ordinary commercial terms for the goods. Or rather the ordinary commercial terms are among the many names of the goods that cannot qualify for trademark protection. If you are trying to register "blouse" as a trademark for the article of clothing, you will not succeed. Similarly, if you're trying to register "Bubbaloobaloobaloo" as a trademark for women's blouses, and that word happens to mean "blouse" in some language, you will not succeed.

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  • Appreciate your perspective. Do you believe that 'Bubbaloobaloobaloo' is registrable if the name of a product also happens to be 'Bubbaloobaloobaloo'? – oldboy Jul 7 at 4:46

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