How to Complete a Trademark Search in Canada
Conducting a trademark search is a crucial step in creating an identity for a business to operate in Canada. A trademark search will help you determine if a similar or identical trademark already exists. Setting up your business branding without checking existing trademarks opens you up to the risk of using another trademarked identity which results in wasted time, money, and possible legal complications.
What is a Trademark?
A trademark is a type of intellectual property that provides legal protection for a brand or logo used by a person or business to distinguish their goods or services from others in the marketplace. It is a recognizable sign, symbol, design, word, phrase, or combination of these elements. Trademarks play a crucial role in business by establishing brand recognition, reputation, and consumer trust. They help consumers identify and differentiate between products or services ensuring they are getting what they expect from a particular brand.
Starting your Trademark Search with CIPO
The Canadian Intellectual Property Office (CIPO) online database search will be the most up-to-date source for trademarks in Canada. The CIPO Online Database Search allows you to search the Canadian Trademarks Database, which contains registered and pending trademarks in Canada. Visit the CIPO website and access the Canadian Trademarks Database (https://ised-isde.canada.ca/cipo/trademark-search/srch) to get started.
- Start with a broad search: Begin with a general search using keywords or phrases that closely relate to your proposed trademark.
- Narrow down the search: Once you have identified similar trademarks, refine your search using more specific terms related to your goods or services. This will provide a clearer picture of any potential conflicts.
- Check different categories of marks: Search for similar trademarks in all relevant categories related to your goods or services. More information on the different categories is available here: https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/various-categories-marks
- Review variations: Consider searching for variations of your proposed trademark, including misspellings, phonetic equivalents, and plurals. These variations may still be considered confusingly similar.
Common Law Trademark Search
Common law trademarks are those adopted and used without registration, and their owners can claim reputation and goodwill to prevent others from using or registering a similar mark. After conducting your search in the trademarks databases, it is important to conduct a common law search to check if any businesses are using a similar mark without registration. These common law rights are limited to the geographical areas where the mark is being used.
To search for common law trademarks, consider checking local business listings in the areas of intended trademark use. Conducting a search for business name registrations can provide insights into similar marks within your province. Checking for claimed domain names with various extensions (.com, .ca, .org, etc.) can also help assess potential conflicts.
Furthermore, search the web and social media platforms for businesses or goods/services associated with confusingly similar names and marks. This broader search can uncover additional potential obstacles or conflicts.
Conducting a common law search is important to assess potential conflicts beyond registered trademarks and ensure your proposed mark does not infringe on existing rights or create confusion in the marketplace.
Analyzing Trademark Search Results & Next Steps
After conducting your CIPO search and completing a common law search, carefully review the results to identify any potentially conflicting trademarks. Look for marks that are similar in terms of name, appearance, sound, or meaning.
If you encounter potentially conflicting trademarks or are unsure about the search results, it is advisable to consult with a trademark lawyer or agent. They can provide expert guidance and help you make an informed decision about the availability and registrability of your trademark. While conducting your own trademark search is very valuable, it is not a substitute for professional legal advice. A trademark professional can ensure your proposed trademark is adequately protected.
Working with a Trademark Professional for your Search
It is highly recommended to consult a trademark lawyer or registered trademark agent during the process of selecting a business name and trademark. They can conduct thorough searches, assess availability, and provide guidance before you invest in branding efforts. If the desired mark is unavailable, they can assist in finding an available and distinctive alternative. A trademark professional is also well suited to assist with more complicated situations, like when a trademark is intended to be used across multiple jurisdictions.
Engaging a trademark professional early in these situations can help ensure informed decision-making, allow for smoother and more likely-to-succeed trademark applications, and avoid potential conflicts or infringements which can lead to costly delays, loss of goodwill if you have to rebrand, and legal complications.
As a savvy entrepreneur, you know the branding of your business is a critical asset for your future success. Preventing problems is cheaper than correcting them; handle your trademark with the gravitas it deserves!