A trademark is a word, symbol, design, or combination used in association with products or services. It plays a significant role in distinguishing the products or services of one business from its competitors. A trademark can be valuable intellectual property as it may also represent a company’s reputation.
Trademark registration serves as proof of ownership and an effective way of protecting your trademark from misuse and imitation. Before registering a trademark in Canada, you should complete a trademark search to determine whether the marks you intend to use for your products or services are unique.
You should also realize that imitating, using, or trying to register a trademark that is already in use can potentially expose your business to legal liabilities. So, how do you perform a trademark search in Canada? Read on to find out.
Importance of Trademark Registration in Canada
Trademark registration in Canada is not a strict legal requirement. If you use an unregistered trademark for a specific period, you can acquire its ownership through common law and get limited trademark rights. For example, common law limits your trademark ownership rights to the geographic area where the mark can function, and you will need to prove its ownership to the court.
Registering the trademark gives you the exclusive rights to use it anywhere in Canada for 15 years. You also get the right to initiate infringement proceedings in either the federal or provincial courts. Since trademark registration is proof of ownership, the burden of proof is on the challenger should there be a dispute about your trademark.
You can also use Canada trademark registration to claim priority in registering your trademark in other countries. Trademark also helps to establish a company’s credibility among the public. If anything happens and you need to defend your reputation, you may have a hard time doing that with an unregistered trademark.
What Does a Trademark Search Entail?
While you can conduct a trademark search in several ways, you should review the trademarks database in the jurisdiction you intend to use your trademark. You want to make sure no other entity has registered an identical mark.
If you plan to do business in other jurisdictions in the future, consider searching the trademark databases of those jurisdictions as well. An advanced trademark search may also include reviewing a registry of business names and searching among unregistered local businesses for the identical mark.
With an advanced search, you can unearth competitors who are likely to claim prior commercial use of the trademark. CIPO could block your application to register a trademark based on the previous usage. We also mentioned earlier that using a trademark already in use by another entity could expose your business to infringement claims and other costly liabilities.
To eliminate all doubts before registering a trademark, you may also need to search for confusingly similar trademarks. Again, it is best to conduct this kind of search with the help of a trademark practitioner or a third-party search provider with the expertise and experience to search for potentially confusingly similar versions of the mark.
How To Search The Canadian Trademarks Database
The simplest and quickest way to conduct a trademark search in Canada is to look up your preferred mark in the Canadian Trademarks Database. The government updates this database weekly and is the most reliable place to find information about registered trademarks.
You can find the Canadian Trademarks Database online on the Canadian Intellectual Property Office (CIPO) website. Performing a basic trademark search on the site is quite simple. The first step is to select a search field from a variety of options, including:
- TM Lookup – You can use this search field for querying a trademark, trademark description, or foreign character translation.
- Application Number – Select this option if you want to check your trademark application status.
- Owner Name – This field allows you to search trademarks by the current owner and past owners.
- Vienna Codes – Use this option to search a trademark’s figurative elements. It is a complicated search method ideal for experienced trademark attorneys.
- Nice Classifications – This search method allows you to determine if someone has already registered the trademark under any of the 11 categories of services or 34 types of goods.
Once you select a search field, enter the trademark you want to search. Your search results will include the trademark name, status, and Nice Classification. It may also have trademark designs where applicable.
Trademark searches performed on the trademarks database usually show exact matches only. That means if you search ‘Jeff Cabs,’ you only get search results with those words. You won’t receive search results for ‘Jeff Cars,’ and the trademark examiner may flag them as confusingly similar during the registration process, potentially leading to delays or rejection of your trademark application.
Common-Law Trademark Search
After a successful trademark search on the Canadian Trademarks Database and determined that no one has already registered your proposed trademark or anything confusingly similar, you will need to ensure that no entities are using that trademark, albeit unregistered.
Trademarks that are in use without formal registration are generally referred to as common law trademarks. A business using a common law trademark can claim that it has already built a solid reputation using that mark and could use that claim to block you from adopting, using, or registering the trademark.
When searching for a common law trademark, it is worth noting that unregistered trademarks don’t have national protection, unlike registered trademarks. Any protection accorded to an unregistered trademark is limited to the geographical area in which you are using it.
When conducting a standard law trademark search, you might want to focus on local business listings and listings in places that you plan to use the mark. It is also essential to check the names of businesses registered in your provinces for a confusingly similar mark.
You may broaden your search to website domains to ensure no business has claimed a domain name identical to your brand. Be sure to check all the popular domain endings, such as .com, .org, .ca, and .net. With this information, you will have an easy time determining whether the entity that owns the domain name uses your proposed mark as a trademark.
Hiring a Trademark Attorney for Trademark Search in Canada
It can be challenging and time-consuming to conduct a comprehensive trademark search on your own. This search involves an in-depth analysis of your proposed trademark’s registrability, which includes examining numerous database sources, comparing various variations of your mark, and common law trademark searches.
Therefore, it is essential to work with a proficient and experienced trademark lawyer. By working with a professional, you can quickly identify a trademark that can potentially be confusing. When you finally apply to register your trademark, you will have peace of mind knowing that no similar mark exists.
Final Thoughts
Performing a trademark search is an integral component of the trademark registration process in Canada. It helps eliminate any issues that will lead to your application being rejected and gives you peace of mind knowing that you are not trying to adopt or register an already in-use mark.
You can successfully conduct a basic trademark search by following the steps outlined in this article. However, if you need help completing a comprehensive trademark search in Canada, please contact a reputable trademark attorney.
