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What You Need to Know about Conducting Trademark Searches in Canada
But did you know that you can potentially expose your business to significant liability if you adopt and use 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 your goods and services from those of other traders who may be offering similar goods and services (and occasionally those who offer similar goods and services if their trademark is very well known). To be distinctive a trademark cannot be confusingly similar to existing trademarks, whether those trademarks are registered or unregistered. Adopting, using and applying to register a trademark that is confusingly similar to an existing mark of an existing business is not only likely to leave your business vulnerable to trademark opposition proceedings and/or legal allegations of trademark infringement and passing off, but may also result in choosing a weak mark which will ultimately be worth less to your business since your potential customers may associate the mark with a competitor’s business instead of yours.
Thus, it is key to analyze whether the trademark that you are hoping will define your business and brand is available for registration in the key jurisdictions in which you will use it (e.g., Canada and the United States). This ever-important analysis can be done by conducting a comprehensive trademark search and analysis the search results to determine the risk of conflict with third parties. Conducting a trademark search for your desired mark early in your planning process can help save you time and money that you may have otherwise invested in branding your goods and services with a mark that you are not eligible to use or register.
Trademark searches can be of varying degrees of comprehensiveness and reliability. The more comprehensive the search, the greater the confidence you can have in the search results adequately uncovering possible conflicting marks. The most basic search is a review of the trademarks database in the jurisdictions in which you plan to use the mark to ensure that no one else has already filed an application to protect the identical mark. This is known as an exact match trademark search. If you think you may potentially expand to other jurisdictions, the trademark databases in those jurisdictions should be searched as well.
In a slightly 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 of an unregistered trademark (as is the case with a registered trademark) can be used to oppose, and if successful, prevent the allowance of 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 trademark infringement and/or passing off, and liability which most business owners are looking to avoid.
An even more comprehensive search would include searching for confusingly similar trademarks through each of the data sources listed above. This type of search is often best completed by a trademark practitioner or third party search provider who has the training and experience to know how to search for potentially confusingly similar variations of a trademark.
I want to do a preliminary Canada trademark 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 of the Canadian Intellectual Property Office (CIPO). The Canadian Trademarks database is 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, as applicable. It also reveals the registration date from which you can calculate the registration's expiry date (by adding 15 years to the date of registration for marks registered before June 17, 2019; and by adding 10 years to the date of registration for marks registered on or after June 17, 2019). 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 CIPO trademark search can be conducted. The quickest way to find out if the exact trademark you are looking for is already registered is to use the basic trademarks search function. The search can locate a trademark by the trademark itself, by the name of the registrant and even by the classes of goods and/or services listed in the application or registration. This is an excellent first step for checking a trademark's availability. By looking up your proposed trademark you can almost always confirm whether the exact match is available or already taken (insofar as the Trademark Register is concerned--this will not locate unregistered trademarks for which Canadian trademark applications have not been filed).
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. If, for example, you want to adopt, use, and register COOL BEANS in association with sporting equipment, you may also want to search for KOOL and/or BEANZ to verify that these confusingly similar sound-alike marks do not pose a threat to your use, adoption, and registration of COOL BEANS.
If your mark has one or more elements that are particularly distinctive, then you may also want to search for other marks sharing those elements. This can be especially important if a distinctive element of your mark occupies the first portion. For example, if your mark is SUREFIRE HOCKEY for use in association with sporting equipment, then you would want to identify other SUREFIRE marks registered or applied for in association with similar goods or services.
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 for 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 criterion as a guide may help you identify whether any potentially similar marks may be confusingly similar during this advanced stage of the search. While the above guidance is a useful first step, a more nuanced analysis of whether two marks are confusing with one another is made having regard to a set of factors prescribed in the Trademarks Act when argued between a trademark applicant and a trademark examiner during the prosecution of a trademark application.
Searching outside of the trademarks database – common law searching
Once you have completed the search in 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 (for comparison, see 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, using and registering the mark. 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 its common law rights, the rights nonetheless may still exist and could be an obstacle to registration. Worse, the existence of such rights could also expose you to a claim of passing off.
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. 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. There are several ways in which a business name registration search can be conducted, for example, you can use services provided by the Canadian government, such as ordering a NUANS report or using the search function in the Ontario Business Registry database.
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.
Finally, searches of the web and social media platforms should be conducted to uncover confusingly similar marks in use, whether in association with businesses (i.e., trade names) or goods and/or services of a business.
Should I retain a trademark lawyer or registered trademark agent 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 trademark lawyer or registered trademark agent for help. A trademark 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 trademark lawyer or registered trademark agent may be helpful in double-checking your findings if you believe that your trademark search has not been conducted thoroughly. This will provide you with greater confidence in your search and analysis before investing time and money into the registration process and into the promotion of your trademark in association with your goods, services and/or 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 jurisdiction (if registered) or geographical area (if unregistered), there are several routes available. The optimal course of action, however, will likely depend 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 recourse available other than choosing a new potential trademark. Further, continuing to use your mark without registration could lead to allegations of infringement and legal proceedings. As such, in this scenario it may be best to consider alternative potential trademarks that may serve as a good representation of your business.
Working with a trademark lawyer or registered trademark agent at this stage can be very helpful. In addition to reviewing the search results that you have uncovered to confirm that the mark is not available, an experienced trademark lawyer or registered trademark agent with a keen knowledge of the tests applied during examination of an 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. For example, if an existing trademark registration seems as though it has not been used for an extended period of time, the registration may be susceptible to summary expungement.
If you have found a registered trademark that is not an exact match to your proposed mark – such as by being registered in a different class of goods or having phonetic but not spelling similarity – it may be useful to get in touch with a lawyer and assess the likelihood that the similarity presents 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.
Where an identical or similar business or product or service name is being used and has not been registered, you may still be able to obtain 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, such as whether your registration was in ‘bad faith’ (that is, you knew a competitor’s use of a confusingly similar mark predated your use and/or registration).
When should I retain a trademark lawyer or registered trademark agent to complete a trademark search?
It is very useful to contact a trademark lawyer or registered trademark agent when you are in the process of choosing your business name and trademark in the first place. Doing so will allow the trademark lawyer or registered trademark agent 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 a brand identity. If the mark you wish to use is deemed unavailable the trademark lawyer or registered trademark agent 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 trademark lawyer or registered trademark agent 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.
Closing Thoughts
Conducting a trademark search is a vital first step in the trademark registration process. It helps to uncover potential barriers to the registration of your proposed trademark and provide assurance that you are not wasting time or money on adopting and using, and attempting to register a trademark that is already in use.
Following the steps outlined above will allow you to conduct your own initial trademark search. If you prefer that we conduct a professional trademark search for you or if you would like our help in deciding how you should proceed, please contact us for a complimentary and confidential initial telephone appointment with a member of our team.
