Canada: The Importance Of Carrying Out Timely Trademark Searches

Last Updated: August 16 2018
Article by John McKeown

Once a potential brand name is selected, searches should be conducted to determine whether or not it is available for use and whether it can be registered under the Trademarks Act. It is extremely important to conduct these searches at as early a stage as possible and certainly prior to any use of the brand name. Searches should also be carried out if a brand is being extended to additional goods or services not included in the initial registration. Similar considerations apply to distinctive design elements of proposed brand names.

Consideration should also be given to the availability of appropriate domain names. The necessary steps to secure domain names should be taken before any public announcement to avoid the risk of cybersquatting.

Reference must be made to existing registrations and pending applications in the countries where it is contemplated the mark will be used. Consideration must also be given to elements or components which make up the mark as well as any phonetic equivalents. If a French or foreign language equivalent of the mark is likely to be used, a separate search for these forms of the mark will be required.

The following information will be required in order to carry out a search:

(a) the proposed brand name and any French or foreign language equivalents and any proposed design presentations;

(b) a description of the goods or services with which the brand name is proposed to be used. For searching purposes in Canada, general categories will be sufficient and are preferable to an overly specific list which may change;

(c) a list of countries in which the mark is likely to be used and when such use will occur; and

(d) any information which may be available concerning the use of similar marks by competitors.

It is also useful to search legal databases, directed to intellectual property matters, to ascertain whether the mark or marks similar to it have been the subject matter of previous litigation.

If the words making up the brand name are unusual, reference should be made to standard dictionaries so that the brand owner has a clear idea of the meaning of the mark being sought. Dictionary definitions can also help in making the assessment of whether the mark is clearly descriptive of the goods and services or whether it is merely suggestive. In addition, as previously mentioned, if the mark will be used in other countries an assessment must be made of the meaning which will be attributed to the mark in those countries.

Frequently, preliminary screening searches can be conducted on an online basis to ascertain whether there are any obvious impediments. The trademark offices of numerous countries make available to the public their database of marks for searching purposes. Commercial service providers also provide access to such information.

If the screening search does not disclose any conflicts which cannot be overcome, a complete trademark search can be carried out. Such a search will include a more complete review of existing trademark registrations and their possible impact.

In addition, searches may be carried out directed to the common law rights of individuals or businesses who have used similar marks or business names but have not obtained trademark registrations. Online searches may be done of corporate and business names (NUANS searches), telephone directories, the Internet, domain names and trade directories. This type of search is frequently referred to as a common law search. Common law searches can also be conducted using the services of a search firm but availability will vary by country.

All searches are subject to limitations relating to the timeliness of the searched data and its accuracy. For example, there will be delays in the noting of filed applications in the records available to be searched. Such searches cannot cover the possibility that a foreign applicant may file an application in Canada within six months of the date of filing the application in their own country and claim the benefit of this date in Canada in accordance with the Act.

Unless a decision to file a trademark application is made immediately, the search should be updated to check for new applications. In addition, the interpretation of the data requires that assessments must be made on the basis of relatively limited information. For example, in most cases there will be little or no evidence as to how the trademarks disclosed in the search are actually used. In some cases, additional specific investigations may be appropriate.

Once these searches have been carried out, an opinion should be obtained from counsel qualified in providing opinions concerning the potential availability and registrability of the proposed mark. If multiple countries are involved, separate opinions should be obtained from counsel in each country. Since the process of obtaining a registration can frequently take a substantial period of time, in the vast majority of cases, a decision to move forward must be made on the basis of such opinions.

If potential impediments to obtaining a registration are disclosed, and if it is warranted, an assessment can be made concerning whether the impediments can be removed. If the impeding mark is an official mark, a consent may be obtained from its owner. If a registered trademark is not in use, consideration can be given to initiating proceedings under section 45 of the Trademarks Act for its expungement. If the proposed trademark is important, it may be possible to obtain assignments of the rights associated with the registered trademarks which are impediments. In addition, particularly for common law rights, investigations can be carried out to ascertain the extent to which the brand name in issue has been used in association with specific wares or services.

It is possible to purchase the rights associated with a common law mark but this can be more cumbersome than obtaining an assignment of a registered mark particularly if the mark is used as a trade name.

The failure to adequately search can result in considerable trouble and expense. If money is invested to launch a brand in the marketplace without knowing whether the brand name is available for use and registration, that investment will be at risk. Further, if the brand name infringes another party’s right, the threat of litigation and exposure to claims will exist. Stopping a campaign to launch a brand can be both expensive and embarrassing.

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.

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John McKeown
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