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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
John McKeown
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions