American Bar Association
Section of Intellectual Property Law
Webinar: Trademark Search Strategies in Europe, Latin America, Canada and the U.S.
Trademark Search Strategies in Canada
Entitlement under Canadian Trade-Marks Act
The Act sets out rules for determining who is entitled to the registration of a mark for which an application has been filed. In general terms an applicant, who has filed an application that complies with the Act for a mark that is registrable is entitled, subject to the completion of opposition proceedings, to secure a registration for a mark in association with the applied for wares or services, unless at the priority date, the mark was confusing with
(a) a trademark, whether registered or not, that has been previously used or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had been previously filed by any other person; or
(c) a trade name[1] that had been previously used by any other person
The determination is made as of a priority date, which varies depending on the basis on which the application is filed. Claims relating to entitlement are considered during examination, in opposition proceedings or proceedings seeking to expunge a registration.
When to Search
Once a potential trademark is selected searches should be conducted to determine whether or not it is available for use and whether it can be registered under the 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 trademark is being extended to additional wares or services not included in the initial registration. Similar considerations apply to distinctive design elements of proposed marks.[2]
Consideration should also be given to domain names and associated websites. The necessary steps to secure domain names should be taken before any public announcement to avoid the risk of cybersquatting.[3] The use of a confusing mark on a website directed to Canada can be a problem.
Reference must be made to existing registrations and pending applications. Consideration must also be given to elements or components which make up the mark as well as any phonetic equivalents. If a French language equivalent of the mark is likely to be used, a separate search for this version 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 equivalent and any proposed design presentations;
(b) A description of the wares or services with which the brand name is proposed to be used.[4] For searching purposes in Canada general categories will be sufficient and are preferable to an overly specific list which may be changed;
(c) 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 wares and services or whether it is merely suggestive.
Types of Searches to be Carried Out
Frequently preliminary screening searches can be conducted on an on-line basis to ascertain whether there are any obvious impediments. 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 are typically conducted using the services of a search firm.
Carrying out searches can assist in determining the potential scope of protection of a trademark as well as helping the client to understand and accept reasonable risks.
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 its filing date of 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 a written opinion should be obtained from counsel, qualified in providing such opinions, concerning the potential availability and registrability of the proposed mark. 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. There are no bad faith and willful infringement considerations.
Dealing with Impediments
If potential impediments to obtaining a registration are disclosed, if warranted, an assessment can be made concerning whether the impediments can be removed. If the mark which is an obstacle is an Official Mark registered under section 9 consent may be obtained from Her Majesty or the entity protected by the section.
If a registered trademark is not in use consideration can be given to initiating proceedings under section 45 of the Act for its expungement. The section provides a summary procedure for trimming the register of “dead wood”. The proceedings can be brought in the name of a law firm without a requirement to disclose the name of the client.
If the proposed trademark is important it may be possible to obtain an assignments of the rights associated with the registered trademarks which are impediments. A consent to registration is not binding on the Registrar of Trade-marks but may be helpful.
In addition, particularly for common law rights, investigations can be carried out to ascertain the extent to which the trademark in issue has been used in association with specific wares or services.
Small businesses cannot be ignored. Modest sales of wares or services in association with a potentially confusing mark will be sufficient to allow to give their owner rights under the Act.
The Failure to Adequately Search
The failure to adequately search can result in considerable trouble and expense. If money is invested to launch a trademark in the market place without knowing whether the trademark is available for use and registration, that investment will be at risk. Further, if the mark infringes another party’s right the threat of litigation and exposure to claims will exist. Stopping a campaign to launch a mark can be both expensive and embarrassing.
The intention of the owner of the junior mark is of little relevance to the issue of confusion[5] and the failure to carry out an adequate search will not materially affect exposure for damages or costs.
John McKeown Direct: 416-597-3371 • mckeown@gsnh.com •480 University Avenue, Suite 1600 Toronto, ON, M5G 1V2 Comments or questions are welcome.
[1]. A “trade name” is defined in section 2 of the Act to mean the name under which any business is carried on, whether or not it is the name of a corporation, a partnership or an individual.
[2]. There will be copyright considerations if the design elements are “original”. Care must be taken to ensure the design is not a copy of an existing design.
[3]. See Global Projects Management Ltd. v. Citigroup [2005] All E.R. (D) and Google Inc. v. Fraser (2005), 42 C.P.R. (4th) 560 (CIRA) where brand owners were too late and had to initiate proceedings to obtain domain names.
[4]. Canada does not follow any system for the classification of wares and service. Trademarks are registered for use in association with a specific list of wares or services.
[5] Mattel, Inc. v 3894207 Canada Inc. (2006), 49 C.P.R. (4th) 321 (S.C.C.).
johnsmckeown 