If you are considering launching a new brand in Canada, it is generally a good idea before investing in the launch, and even before filing a trademark application, to determine whether the proposed mark is available for use and registration.
This inquiry is carried out by conducting a clearance search for the trademark against the relevant goods and services with which you intend to use it. Without taking this step, you run the risk of investing in a brand which inadvertently infringes the trademark rights of others and which may ultimately go abandoned.
Luckily, there are a number of options out there to assess the state of the register and marketplace.
Aside from the DIY internet search that you probably performed when you first came up with the idea for your new brand, with the help of your trademark agent, the following searches may assist in determining the registrability and availability of a trademark:
- A search of the Canadian trademarks register; and
- A full Canadian marketplace search.
When a new trademark application is filed, it is “examined” by the Trademarks Office. As part of the examination, the Office will search trademark records in an attempt to locate existing or pending trademarks that could conflict with the applied-for mark. If a conflict exists, the Office notifies you that your trademark is considered either unregistrable or that you are considered not entitled to registration, and the Office invites comments or submissions in that regard. This may lead to potentially costly legal fees resulting from the exchange of arguments and there is no guarantee that the objection will ultimately be overcome.
If you perform a register search before applying for the trademark, you can identify from the start potentially confusing trademarks that exist on the register and that may pose an obstacle. As a result of the search, if you deem (together with your trademark agent) that the risk of confusion is too great and the likelihood of overcoming an objection slim, you can choose a different trademark at that time – that is, when the costs of re-branding are relatively small or non-existent.
Some may query whether the costs of a register search are worth it considering that, for the nominal cost of the filing fee, the Trademarks Office in effect performs the search for you.
However, there are a number of reasons why relying on examination for clearance is not an ideal strategy:
- It generally takes the Office 8-10 months to examine a new application. During that time, you either hold off on commencing use of your trademark until the application is approved or you move forward with the launch of the brand not knowing whether the application will be approved or not. The first option is usually not attractive from a business standpoint and the second option runs the risk of having to re-brand after several months of use and promotion if an obstacle is identified.
- Even if the Trademarks Office approves the application for advertisement, it is possible that a third party may feel differently and commence an opposition against the trademark application. If the opposition is reasonably well-founded based on prior rights which exist on the register, there is a good chance that the opponent and its confusing trademark(s) would have appeared in a register search. Identifying them before filing the application may have helped avoid the situation of a potentially costly opposition proceeding and/or re-branding.
- Although a trademark may be registrable, it may nonetheless be entitled to only a narrow scope of protection. If the mark in question contains a word or words which appear in several other trademarks on the register for similar goods or services, on the one hand, the Office cannot prevent you from also using that word as part of a trademark. On the other hand, you will not be able to claim exclusive rights in that word and the scope of protection will generally be limited to the mark as a whole for the specific goods and services listed in the application. If that situation is not what you had in mind for your new brand, you may wish to choose a different trademark.
Register Search v. Full Marketplace Search
While the register search certainly has benefits over no search at all, if budget permits, it is preferable to perform a full marketplace search. The reason for this is that Canada recognizes common law trademark rights – that is, trademark rights that arise out of usage and for which an application has not been filed. As a result, a trademark application may be opposed and defeated on the basis of common law rights. This also means that even if you obtain a trademark registration, it could be vulnerable to invalidity if challenged on the basis of earlier common law rights.
A full marketplace search can help identify potentially confusing trademarks by searching not only the trademarks register, but also corporate name databases and other data resources. While a search of this type is not exhaustive of all rights that others may have at common law, it usually provides a good indication of rights that may exist.
Currently, to obtain a trademark registration you must pay the Trademarks Office a filing fee at the time of filing the application and a registration fee after the application has been approved and passed through advertisement to allowance. In view of the upcoming changes to Canadian trademarks legislation which will bring Canada in line with certain international treaties such as the Madrid Protocol, it is anticipated that the filing fee and the registration fee will be rolled into a single fee to be paid at the time of filing the trademark application.
This proposed fee structure will make it even less attractive to use the examination procedure as a means of clearance. Under the existing system, if your application is blocked during examination or opposition and ultimately abandoned or refused, then you never have to pay the registration fee. Under the proposed structure, the entire filing/registration fee would be forfeited in that scenario.
… Or Not to Search?
Of course, each case is different and must be assessed on its individual facts. There may be times when a clearance search is not appropriate for you. If, for example, you have had wide use and promotion of your mark in Canada over several years, then searching before applying for your trademark may not be helpful because no matter what the results show, you probably are not interested in re-branding.
That being said, it is always a good idea to do periodic searches of the marketplace to ensure that there is no unauthorized use of your trademark. However, that is a topic to which a whole other article could be dedicated.
Please contact us to discuss what type of trademark clearance search may be right for you.
Questions? If you have any questions please call 613-232-5300 to speak to a professional or email us at OwnWhatsYours@aventum.law.