What You Need to Know about Conducting Trademark Searches
But did you know that you can potentially expose your business to significant liability if you adopt, use or try to register a trademark that is not actually available?
To adopt, use and register a trademark you must choose a mark that is distinctive, which means that it can distinguish you from other traders who may be offering similar (or dissimilar) goods and services. To be distinctive a trademark cannot be confusingly similar to existing trademarks (both registered and unregistered). Adopting, using and applying to register a trademark that is confusingly similar to an existing mark is not only likely to leave your business vulnerable to opposition and/or claims of infringement and passing off; these actions can also result in choosing a weak mark which will ultimately be worth less to your business.
Thus, it is key to check whether the trademark that you are hoping will define your business and brand is available for registration. This ever-important check can be done by completing a comprehensive trademark search.
A trademark search can take many forms but at bare minimum it should include a review of the trademarks database in the jurisdiction in which you plan to use the mark to ensure that no one else has already filed an application to protect the identical mark. If you think you may expand to various other jurisdictions, the registry of trademarks in those jurisdictions should be searched as well.
In a more comprehensive form a trademark search might include searching for the identical trademark on a registry of business names and among unregistered local businesses. This kind of searching will give you an idea of whether there are competitors who can make a claim to prior commercial use of the trademark and therefore prior entitlement. This is important information since prior use could be used to block an application to register a trademark. Adopting and using a mark that is already in use in the marketplace can also expose you and your business to claims of infringement or passing off, liability which most business owners are looking to avoid.
An even more comprehensive search would include searching confusingly similar trademarks through each of the avenues listed above. This type of search is best completed by a trademark practitioner or third-party search provider who will have the perspective and experience to know how to search for potentially confusingly similar variations of the trademark.
I want to do a preliminary search on my own - Searching the Canadian Trademarks Database
The first step to conducting a trademark search in Canada is to look up your proposed trademark name in the Canadian Trademarks Database, which is available online or in-person at the Canadian Intellectual Property Office. The database gets updated weekly and is the most reliable source of information on which trademarks have been registered in Canada. The database gives you the date that the trademark was first used or indicates if it has been applied for on a proposed use basis. It also reveals the registration date which you can use to calculate the registration's expiry date (by adding 15 years to the date of registration). The database will also outline the description of the goods and services in the registration and the classes under which they were filed, if any.
There are several ways in which this search can be conducted. The quickest way to find out if the exact name you are looking for is already registered is to use the basic trademarks search function. The search can pick up a trademark by name, by the name of the registrant and even by the class of goods listed in the application. This is an excellent first step for checking a trademark's availability. By looking up the proposed trademark you can almost always confirm whether the exact match is available or already taken.
The next step would be to conduct an advanced search. This search allows you to simultaneously enter multiple criteria, which may be useful if your trademark is a combination of common words and you want to see the other instances in which those words are used. At this stage, it may also be useful to look for symbolic equivalents to your trademark (e.g., the word love expressed as a heart) and whether the equivalent to your trademark is registered in another official language (e.g., if your English trademark has a registered French equivalent). It may also be helpful to search for any phonetic equivalents to your proposed trademark. You will also want to consider the idea suggested by the trademark and search for trademarks with confusingly similar ideas. For example, if you wish to adopt, use and register BLACK AS NIGHT in association with clothing, you may also want to search for NOIR AS NIGHT or maybe even BLACK AS TWILIGHT to ensure that these confusingly similar marks would not pose a barrier to your adoption, use and registration of BLACK AS NIGHT.
The Canadian Intellectual Property Office provides the following guideline in determining whether a similar trademark could be a source for confusion:
would a prospective purchaser upon seeing one trademark applied to certain goods and/or services, reasonably assume that the goods and/or services in both cases emanated from the same source? If the answer is yes, confusion probably exists between the two trademarks.
Using this criteria as a guide may help you identify any potentially similar marks during the advanced stage of the search.
Searching outside of the trademarks database – common law searching
Once you have completed the search within the Trademarks Database and think you have determined that your proposed mark, or anything confusingly similar therewith, has not already been registered, it is important to check that no businesses are using that mark without having registered it.
Trademarks that have been adopted and used without a registration are generally classified as common law trademarks (click here to check out our article on the differences between common law and registered trademarks). An owner of a common law mark can make a case that it has established goodwill and reputation with its customers which they could use to prevent you from adopting and using the mark and from registering it. While there is a substantial burden of proof on the owner of a common law mark to prove reputation and goodwill when seeking to enforce their common law rights, the rights nonetheless may still exist and could be an obstacle to registration (or worse – could expose to you claims of passing off if you are unaware that the common law rights exist).
In terms of searching for common law trademarks, it is important to understand that unlike registered trademarks, unregistered trademarks are not protected nationally. Therefore, the scope of any protection that they may be afforded will extend only to the geographical areas in which they are being used. This should be kept in mind when executing a common law trademark search since it will help to focus the scope of your search. In particular, it is useful to check local business listings and listings in areas in which you intend to use the trademark to uncover use of confusingly similar trademarks in those areas.
On a broader scale, it can be useful to search the names of businesses registered in your province for any similarities to your proposed mark. Further, it may be useful to check out if a website domain name identical to your brand has already been claimed. When doing so, make sure to check a range of commonly used domain endings (e.g., .com, .ca, .org, etc.) From the information you find on these websites you will be able to better assess whether the business that owns the domain name is using that word, slogan, etc., as a trademark or not and whether they could create a hurdle to adoption, use and registration of the mark you wish to have.
Should I retain a lawyer to complete the trademark search?
If you have followed the steps above in completing your own search and have discovered that there are registered or unregistered marks that could potentially be an obstacle to your registration, it may be useful to contact a lawyer for help. A lawyer or registered trademark agent in the jurisdiction in which you want to file can help you determine whether a similar trademark could be a cause for confusion.
A lawyer may also be helpful in double-checking your findings if you believe that the search has not been conducted thoroughly or would like confirmation before investing time and money into the registration process and into the branding of your goods, services and business.
The trademark I wanted is already in use. What do I do now?
If at the end of your trademark search, you have found that your proposed mark is already registered or in use by a business within your geographical area, there are several routes available. The course of action is also dependent on whether the trademark in question is registered or in use as an unregistered trademark.
If you have found that there is an existing registration that is identical to your proposed mark in the same category or class of goods that you intend on offering, there is often little legal recourse available. Further, continuing to use your mark without registration could lead to accusations of infringement and costly legal proceedings. As such, in this scenario it may be best to consider alternative, unused marks that may serve as a good representation of your business.
Working with a lawyer at this stage can be important and very helpful. In addition to reviewing the search results that you have uncovered to confirm that the mark is not available, a creative lawyer with a keen knowledge of the tests applied on application by the Trademarks Office may be able to work with you to devise a strategy to overcome the hurdles you may be facing. This may include providing advice on other forms of the trademark that may be less confusing or strategies to cancel or oppose existing registrations and applications if, and when, appropriate.
If you have found a registered trademark is not an exact match to your proposed mark – such as by being registered in a different class of goods, having phonetic but not spelling similarity – it may be useful to get in touch with a lawyer and assess the likelihood that the similarity may present an obstacle in the registration process. These situations are best evaluated on a case-by-case basis, and your proposed mark may still be eligible for registration and legal protection.
In cases where an identical or very similar business or product name is being used without registration, you may still be able to get a registration for your mark, especially in instances where the mark is already in use (i.e., if you have already been commercially distributing your goods and offering your services in the jurisdiction in which you wish to file). A lawyer will be able to help you evaluate the likelihood of getting the trademark registered and will be able to identify any legal risks associated with adopting and using the mark.
When should I retain a lawyer to complete a trademark search?
It is very useful to contact a lawyer when you are in the process of choosing your business name and trademark in the first place. Doing so will allow the lawyer to search for the mark, assess its availability and provide you with a clearance opinion BEFORE you spend the time and money devising a brand and an identity. If the mark you wish to use is deemed unavailable the lawyer can work with you to identify a mark that is available and distinctive for use with your goods, services and business.
As mentioned above it is also wise to contact a lawyer when:
- you are unsure if the trademark that you wish to adopt, use and register is available;
- you are unsure about the implications of the results of your search;
- you wish to adopt, use and register a mark across several jurisdictions and want some assurance that the mark is available in them all before filing applications; or
- it appears from the results of your own search that the mark you have already adopted and begun using is already registered by someone else.
Conducting a trademark search is a vital first step in the trademark registration process. It helps to uncover barriers to the potential registration of your trademark and can result in assurance that you are not wasting time or money on attempting to register a trademark that is already in use.
Following the steps outlined above will streamline your trademark search. If you would like our help in conducting a trademark search or in deciding how to proceed, please contact us for a complimentary and confidential telephone appointment with a member of our team.