Since Canada's trademark reform in 2019, the most important elements of a trademark application are: the trademark itself, the identity of the trademark applicant, and the description of the goods and services for which registration is sought. That last item may seem mundane, or even unimportant, but in fact it plays a critical role in how fast trademark applications are processed and what kind of protection they offer after registration. This bulletin looks at recent changes to CIPO's Goods and Services Manual that are relevant for the videogame industry, and which offer lessons for other high-tech industries.
Canada's Intellectual Property Office (CIPO) has long been famous (or notorious, depending on one's perspective) for how demanding it is about the precision with which trademark applicants must describe their goods and services. Descriptions that would be considered acceptable in the rest of the world are considered overly vague in Canada. For example, the European Intellectual Property office accepts both "software" and "computer software". CIPO examiners would reject those terms outright, and require that the function of the software to be specified in all cases, and often also require that the industry or field of use be specified as well.
The primary tool that CIPO uses to assess whether a description is acceptable is the Goods and Services Manual. Descriptions taken from the approved items listed in the Goods and Services Manual are considered always acceptable, which has enormous practical benefits for the trademark applicant:
- The first benefit is processing times. At time of writing, a trademark application that uses only terms from the Goods and Services Manual will be fast-tracked and examined by CIPO within roughly 2 years. By contrast, a trademark application that includes even one non-approved description will be examined in 3 years and 4 months (more than 50% longer).
- The second benefit is minimizing objections. CIPO examiners are trained to accept anything that appears in the Goods and Services Manual, and to object to anything that appears broader than the descriptions contained in the Manual. So by using approved descriptions, trademark applicants minimize the cost and delays caused by objections to how they describe their goods and services.
Given the above benefits, why would trademark applicants ever use non-approved items? The answer is that approved descriptions are often quite narrow. For example, the United States Patent and Trademark Office accepts "spirits" as a description of alcoholic beverage products, but CIPO has specifically rejected that term. Instead, CIPO requires specification of each individual beverage: rum, vodka, whiskey, etc. As a result, approved items may provide lesser scope of protection. Frequently, applicants will prefer to use descriptions that cover a broader range of their products.
Additionally, entries in the Goods and Services Manual often lag behind real-world technological process. For instance, a handful of "cloud computing" services were added to the Manual in 2012, and then there was a decade-long gap before other cloud computing services were accepted in 2021-2022. At the risk of stating the obvious: the cloud computing industry was in constant evolution between 2012 and 2022. Yet, the Goods and Services Manual failed to keep up with technological change, since it remained static throughout.
The result is that trademark applicants often face an unenvious choice between using approved items that don't fully capture the business and technical realities of their industry, or using unapproved items that will lead to significant delays and possible objections as well. Software-based businesses like videogame studios were particularly vulnerable to these problems, given CIPO's strict approach to defining software.1
The (Partial) Solution
To help address this problem, CIPO has begun a pilot project which allows the public to suggest items for entry in the Manual. Fasken's videogame industry group struck a task force and submitted a series of new descriptions for common goods and services in the industry. We are pleased to report that CIPO accepted virtually all of our suggestions, as a result of which the Manual now includes the following items:
- Videogame engine software, in Class 9
- Downloadable video game assets sold individually, namely downloadable digital files containing videogame avatars, clothing, pets, vehicles, items, tools, toys, terrain, 3D objects, textures, meshes, animations, sound effects, music, emotes, and gestures for use in video game development, in Class 9
- Nonfungible tokens (NFTs) for use in authenticating ownership of digital files, in Class 9
- Downloadable digital soundtracks, in Class 9
- Downloadable emojis, in Class 9
- Providing non-downloadable video games via global communication networks, in Class 41
- Providing information on entertainment in the field of computer games and video games, in Class 41
- Entertainment in the nature of videogame tournaments, in Class 41
- Entertainment in the nature of e-sports tournaments, in Class 41
- Games as a service (GAAS) provider services featuring online non-downloadable videogames and computer games, in Class 42
These new items increase the possibilities for videogame developers and publishers to submit applications based entirely on approved item descriptions, thereby saving time and money on their Canadian trademark protection. Fasken will continue to submit additional videogame-relevant items to CIPO from time-to-time in order to ensure that the Manual continues to reflect business and technological realities of our industry.
The success of this initiative in the videogame industry provides a model for similar initiatives in other high-tech fields, ranging from artificial intelligence, to augmented reality, to blockchain based technologies. For example, the Manual currently includes just 13 approved items incorporating the term "artificial intelligence" and two of these are aspirational items with rather than real-world goods and services.2
Many industries would benefit significantly from improvements to the Manual based on input from private-sector companies and trademark lawyers working in that industry. Fasken's various industry and legal practice groups will continue to monitor additions to the Manual and look forward to collaborating with CIPO to ensure that the list of approved goods and services keeps pace with scientific and commercial innovation. If you would like to discuss additions to the Manual based on your company's or industry's needs, contact your Fasken lawyer or the relevant Fasken industry group lead.
1 Other industries facing especially strict rules include pharmaceuticals, telecommunications, and almost anything related to "data" of any kind. The reader will note that the unifying feature of the industries to which CIPO applies especially strict treatment is that they are all characterized by high levels of product and service innovation.
2 These are "humanoid robots with artificial intelligence" and "humanoid robots with artificial intelligence for use in scientific research", both of which have more in common with the Jetsons or Star Trek than they do with the products and services being offered by real-world AI companies located in Canada.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.