3.4 Specifications with registered marks

A registered trade mark¹³ or an applicant’s own mark must not appear in a specification. The presence of a word on the Register should be taken as evidence that the word is not generic for the goods or services specified. Where any of these marks or any other trade marks appear in a specification, the Examiner will raise a concern and ask the applicant to delete the mark from the specification or to provide a generic description of the goods.

Any amendment to the specification must not have the effect of extending the goods or services claimed.

The following list sets out common examples of registered marks that often appear in applicant’s specifications and suggested alternative generic descriptions. This list is not exhaustive.

Footnote

¹³ Practice Guideline Amendment 2004/1, Information For Clients, Issue 30: 31 March 2004.