Failing to carry out an adequate trademark search can cause considerable trouble and expense. If money is invested to use a mark in the marketplace without knowing whether the mark is available for use and registration, that investment will be at risk. If the mark infringes, the threat of litigation and exposure to claims will also exist.
To avoid these problems searches should be carried out to determine if the mark is available for use and whether it can be registered under the Trademarks Act. These searches should be done well before any use of the mark. Searches should also be carried out if a mark is being extended to additional goods or services not included in the initial registration.
Consideration should also be given to the availability of domain names. Domain names should be secured before any public announcement or use to avoid the risk of cybersquatting. Consideration should also be given to the use of the mark on social media sites.
Reference must be made to existing registrations and pending applications in the countries where the mark will be used. Consideration must be given to elements or components which make up the mark and any phonetic equivalents. If a French or foreign language equivalent of the mark is likely to be used, a separate search for these forms of the mark will be required. The following information will be required to carry out a search:
(a) the proposed mark and any French or foreign language equivalents and any proposed design presentations;
(b) a description of the goods or services with which the mark is proposed to be used. For searching purposes in Canada, general categories are preferable to an overly specific list which may change;
(c) a list of countries in which the mark is likely to be used and when such use will occur; and
(d) any information which may be available concerning the use of similar marks by competitors.
It is helpful to search legal databases, directed to intellectual property matters, to determine whether the mark or similar marks have been the subject of previous litigation.
If the words making up the trademark are unusual, reference should be made to standard dictionaries and other references to determine the meaning of the mark being sought. Dictionary definitions can also help in assessing whether the mark is clearly descriptive of the goods and services or whether it is merely suggestive. In addition, as discussed, if the mark will be used in other countries, an assessment must be made of the meaning attributed to the mark in those countries.
Preliminary screening searches can be conducted on an online basis to ascertain whether there are any obvious impediments. The Trademark Offices of numerous countries provide online access to marks for searching purposes. Commercial service providers also provide access to such information.
If the screening search discloses no conflicts which cannot be overcome, a complete trademark search can be carried out. In addition, searches should 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 search is frequently called a common law search. Common law searches can also be conducted using the services of a search firm, but availability will vary by country.
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 apply in Canada within six months of its filing date in their own country and claim the benefit of this date in Canada under the Act. Unless a decision to file a trademark, application is made immediately, the search should be updated to check for new applications.
Assessments must be made based on relatively limited information. For example, usually 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, an opinion should be obtained from qualified counsel relating to the potential availability and registrability of the proposed mark. If multiple countries are involved, separate opinions should be obtained from counsel in each country. Since obtaining a registration can frequently take a substantial amount of time, a decision to move forward must be made based on such opinions.
If you have any questions, please contact me at mckeown@gsnh.com.
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.