Canadian Trademark Searches – A Complete Guide
An exhaustive Canadian trademark search is an essential step toward securing your brand’s future.
Trademark searches search can help save you time and money, as well as limit the risk of future legal trouble.
Whether you’re in the process of setting up a new business or building a new product line for an existing business, a comprehensive Canadian trademark search should be one of your top priorities.
In this guide, we explain how trademark searches are typically conducted in Canada and why they’re so important.
Why is a Canadian Trademark Search Important?
A trademark search is the first line of defence in protecting your business’s unique identity.
The purpose of a trademark search is to help determine whether your brand – or the brand you’re planning to create – infringes on another business’s trademark.
Imagine spending time, money, and resources to build your brand, only to discover another company has already registered a strikingly similar trademark. Infringing on someone else’s trademark can lead to a legal dispute, a costly rebranding, and potential harm to your reputation.
What is a Trademark?
Before we dive deep into the process of a Canadian trademark search, it’s crucial to understand what a trademark is. A trademark can be a word, symbol, design, or any combination of these elements. It can even be a smell, a sound, or a colour.
Trademarks are used to identify a business’s goods or services and distinguish them from those of others in the marketplace. Essentially, they serve as a tool to communicate a business’s connection to its goods and services, creating a distinct brand identity in the process.
How to Conduct a Canadian Trademark Search
Step 1: Identify your Trademark
Before starting your search, you should know what you’re searching for. The best way to do this is to think about your trademark and search for similar marks.
Step 2: Visit the CIPO Database
In Canada, the Canadian Intellectual Property Office (CIPO) is responsible for administering and processing intellectual property (IP) rights, including trademarks.
CIPO maintains a database of all trademarks in Canada, which you can access and search for free. The Canadian Trademarks Database should be the starting place for your trademark search.
Step 3: Start Searching for Confusing Trademarks
When searching the Canadian trademark register for similar marks, you are looking for trademarks that are likely to be “confusingly similar” with your trademark.
Your trademark is likely to be “confusingly similar” with another mark if your trademark is so similar that a consumer might mistakenly believe your goods or services are sold by another business with a similar trademark. Confusion is not solely about the trademarks being identical; rather, it’s about the likelihood of misinterpretation by the average consumer.
In legal terms, confusion happens when the “use of a trademark causes confusion with another trademark if the use of both trademarks in the same area would likely lead to the inference that the goods or services associated with those trademarks are manufactured, sold, leased, hired or performed by the same person.” You can find the technical definition of confusion in Section 6 of the Canadian Trademarks Act.
Step 4: Evaluate Similar Trademarks for Confusion
If you found a few trademarks that could be “confusing” with your trademark, you’ll want to carefully consider several factors to determine whether there is actually a likelihood of confusion between your trademark and the marks you found.
When considering whether two marks are likely to be confusingly similar with one another, the assessment is not a simple side-by-side comparison of the marks. Instead, the test is conducted through the eyes of a potential consumer, and the ultimate determination is based on the following factors:
Degree of Resemblance: How similar are the trademarks in question? If your trademark appears the same, sounds the same or suggests an idea similar to an existing mark, the likelihood of confusion increases.
The Distinctiveness of the Trademarks: How unique or common are the trademarks in question? If your trademark is similar to an existing mark and the existing mark is highly unique, the likelihood of confusion increases.
Length of Time in Use: How long has the existing trademark been in use? If your trademark is similar to an existing mark and the existing mark has been in use for a long time, the likelihood of confusion increases.
Nature of Goods, Services, or Business: Are both trademarks’ goods or services related or likely to be thought of as related? If your trademark is similar to an existing mark and both marks relate to similar goods and services, the likelihood of confusion increases.
Nature of the Trade: How and where are both trademarks’ goods or services sold? If your trademark is similar to an existing mark and mark both marks are likely to appear in the same store (or sales channel), the likelihood of confusion increases.
Based on these factors, if your trademark is confusingly similar with an existing trademark, it’s likely your application will be rejected by CIPO or opposed by another trademark owner.
You can dispute a rejection, but – ultimately – you will not be refunded for a failed trademark application. Moreover, oppositions can be costly endeavours, often requiring lengthy legal submissions to the Canadian Trademarks Office.
You can find out more about the registration process and potential pitfalls for confusing trademarks in our article that explains how to register a trademark in Canada.
New to Canadian Trademark Searches? Consider Professional Help.
Understanding the concept of confusion and how it’s evaluated is crucial when conducting a Canadian trademark search. That’s why having professional guidance can be invaluable in this at this stage of the brand-building process.
Trademark professionals (like trademark agents or attorneys) often have hundreds of hours of experience, and they can often conduct thorough searches quickly and accurately.
In fact, Clearview Counsel (that’s us!) provides a free trademark search when you hire them to assist with your trademark application.
In Conclusion
A Canadian trademark search is a vital step for any business planning to build a brand in Canada. It helps ensures you’re not infringing on someone else’s trademark, which limits the risk of a legal dispute, a costly rebranding, and potential harm to your business’s reputation.
And while it’s possible to do a trademark search yourself, getting professional help can streamline the process and avoid potential pitfalls, saving you time and money along the way.
