In An Act respecting Trade Marks and Industrial Designs (1879) 42 Vict. c. 22, Canada required “The proprietor of a trade mark applying for its registration [to] state in [the] application whether the said trade mark...is intended to be used as a general trade mark or as a specific trade mark1.” That distinction was dropped from the application requirements set forth2 in the Unfair Competition Act (1932) 22-23 George V c. 38 (the successor to 42 Vict. c. 22). However, the Unfair Competition Act grandfathered the distinction for previously registered marks3
as did the current statute4. The distinction accordingly lives on—well over a century later—in 136 general marks and 1,709 specific marks which are currently active on the Canadian trademarks register (as of 05-Apr-2021).
You can’t investigate general or specific marks via CIPO’s online trademark database because those mark categories are not exposed for public search purposes via the database. CIPO lumps general and specific marks into the “trademark” category along with certification marks, distinguishing guises, etc. as explained in the
Select category of trademark section of the online database’s Help file. In order to investigate general or specific marks one must work with CIPO’s trademark .xml data.
The difference between general and specific marks is set out in section 9 of (1879) 42 Vict. c. 22:
In 1969, one commentator described the difference as follows
5
:
“
It might be said in summary, that the Trade Mark and Design Act required either a generic description of the wares, if the wares, irrespective of what they were, were to have applied to them a trade mark, or, a specific description of the wares. The specific description of the wares would be appropriate where a manufacturer wished to identify one of his products by a trade mark more commonly called a product or commodity mark, such as ASPIRIN [citing TMDA6889 and TMDA40220]”
Unfortunately (from a historical analysis perspective) the Canadian trademarks register no longer reflects generic / specific wares descriptions as mentioned above. That is because the current statute enables the Registrar to amend “any trademark that was on the register on July 1, 1954” to bring it into conformity with the application requirements set forth in the current statute
6, e.g. “a statement in ordinary commercial terms of the goods or services in association with which the trademark is used or proposed to be used”
7
.
66 specific marks having registration dates between 07 Apr 1880 and 19 Dec 1899 remain active on the Canadian trademarks register, some possibly familiar examples including:
LABATT'S INDIA PALE ALE & DESIGN (ale);
CADBURY (chocolate bars, etc.);
GLENLIVET (whiskey);
SUNLIGHT (soaps, detergents, etc.); OXO (meat extract in cube form);
CREAM OF WHEAT (breakfast cereals); and many others.
As highlighted in the online database extracts below, CIPO continues to maintain the general mark / specific mark categories for marks registered pursuant to the Trade Mark and Design Act, although those categories cannot be directly accessed via the online database.
1 See An Act respecting Trade Marks and Industrial Designs (1879) 42 Vict. c. 22, Section 11↩
2 See
Unfair Competition Act (1932) 22-23 George V c. 38, Sections 30-35
↩
3 See
Unfair Competition Act (1932) 22-23 George V c. 38, Section 23(1)
↩
4 See
Trademarks Act, R.S.C., 1985, c. T-13, section 27(1)
↩↩
6 See Trademarks Act, R.S.C., 1985, c. T-13, section 44↩
7 See Trademarks Act, R.S.C., 1985, c. T-13, section 30(2)(a)↩
