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A few years ago there was some doubt as to whether “cloud computing” solutions, such as: Software-as-a-Service (SaaS), Platform-as-a-Service (PaaS), or Infrastructure-as-a-Service (IaaS), formed part of class 9 goods or class 42 services of the Nice Classification. One of the reasons for this doubt was well described by authors Byer and Hyland of K&L Gates, who wrote in a 2017 publication[1]:
“In re Jobdiva, Inc., No. 2015-1960, 2016 WL 7187434 (Fed. Cir. Dec. 12, 2016)[2], the United States Federal Circuit Court of Appeals (CAFC) “[…] acknowledged that “the line between services and products sometimes blurs.” But “[e]ven though a service may be performed by a company’s software, the company may well be rendering a service.” To determine whether a mark is used in connection with services described in a registration, a key consideration is user perception. Thus, the ultimate question is whether purchasers would perceive JobDiva’s marks to identify personnel placement and recruitment services, even if the software performs each step of the service. Because consumer perception is a fact-based inquiry determined on a case-by-case basis, and the TTAB applied the wrong legal standard, the opinion below was vacated and remanded. This CAFC opinion rejects a rigid test and states that “careful analysis is required to determine whether web-based offerings, like those JobDiva provides, are products or services….” Rather, a more nuanced assessment, based on consumer perception must be applied. U.S. trademark practitioners should consider this approach in crafting appropriate goods and services and formulating enforcement strategies.”
In Canada, the doubt didn’t quite manifest itself, as the Canadian Intellectual Property Office (“CIPO”) retired the class 9 classification for PaaS (Platform-as-a-service) on June 1st, 2017, two years prior to Canada’s adherence to the Madrid Protocol; thereby leaving class 42 services intact (e.g., “platform as a service (PaaS) featuring computer software platforms for use in the field of [insert field]” as per the Canadian Goods and Services Manual).
Indeed, the use of class 42 services for SaaS solutions appears to be reinforced by:
The inclusion of “cloud computing” services in the same class of services. In this connection, the Canadian Goods and Services manual refers to the following acceptable descriptors for cloud computing; for example: “cloud computing enabling file storage of payroll data”, “cloud computing photo sharing services”, “cloud computing provider services for general storage of data”, “cloud computing providing software for database management”, “cloud computing video hosting web sites”, “cloud computing web hosting services”, amongst other allowable language; as well as
The accepted definition of “cloud computing”[3], which has been described as the delivery of computing as a service rather than a product, over the Internet. In the case of SaaS solutions, they allow users to access and use the software application over the Internet, rather than storing and running the applications on-premises (or “on-prem”). PaaS solutions provide access to a computing platform (e.g., a proprietary solution or application) on which users run the propriety solution or application via the internet;
Canadian Trademark opposition board (TMOB) decisions[4], which referred to SaaS as a service.
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[1] https://www.iplawwatch.com/2017/01/software-as-a-service-saas-is-it-a-good-or-service/ [2] http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-1960.Opinion.12-8-2016.1.PDF [3] https://csrc.nist.gov/publications/detail/sp/800-145/final (published September 2011). [4] Metroland Media Group Ltd v Wishabi, Inc, 2015 TMOB 88 (CanLII), available at http://canlii.ca/t/gk3kw, at para. 39; NetSuite Inc. v Infor (US), Inc., 2019 TMOB 130 (CanLII), available at: http://canlii.ca/t/j3wpx, at para. 39.