Preliminary Trade-mark Searches
What to consider before filing an application
The Office of the Registrar of Trademarks will provide you with the basic information that you need in order to file an application for trademark registration. However, the Registrar of Trademarks cannot prepare your application, advise you on whether your mark is registrable, or conduct a preliminary search of existing trademarks for you.
Conducting a preliminary search
A good first step is to carry out a preliminary search of existing trademarks to check whether your trademark could be confused with someone else’s. Although not mandatory, this step will assist you in determining whether a similar trademark already exists, in order to avoid trademark infringement (unauthorized use) and potential lawsuits.
Searching the Canadian Trademarks Database
You can do a preliminary search of registered and pending applications through the Canadian Trademarks Database. The listings contained in the Canadian Trademarks Database cover word marks, slogans, numbers, pictures, and combinations of these. As soon as your application is received, it too becomes part of the public record.
Searches can be conducted using any of several methods, including by trademark type or status.
To conduct a proper search, you will have to check for different possible versions of the mark that you wish to register. In the case of a word mark, you should look for all conceivable spellings, including in French. For example, if your trademark is “North Pole,” you would search for “North”, “Nord”, and “Pole.”
Also in the online records are crests, badges, and official symbols that fall into the category “Prohibited Marks” in the Trademarks Act. These records can assist you in making certain that your trademark does not fall into a prohibited category.
To begin your search, visit the Canadian Trademarks Database. A tutorial on the Canadian Trademarks Database is also available on the website. The tutorial will help you make the most of this information source.
Conducting a search of trade names
Before going any further, you should also consider a search of trade names. Trade names are often also used as trademarks; trade names can be used as trademarks even when they are not registered as such.
The name of your company is “North Pole.” “South Pole Inc.” has never have filed for trademark registration. However, if the name “South Pole” is known for frozen-water products, the company could argue ownership of the name “South Pole” as a trade name, as well as prior use of a trademark.
The Office of the Registrar of Trademarks would not have the name “South Pole” in its trademark records, because it does not register trade names. “South Pole Inc.,” however, could easily find out about your application for “North Pole,” either by doing a search of the Office of the Registrar of Trademarks records or a search at the time your application is published in the Trademarks Journal. “South Pole” may then challenge your application during the opposition stage in the registration process.
As trade names may be recorded separately in each province under provincial legislation, there is no complete central inventory containing all current names for Canada as a whole.
As conducting a search of trade names is quite complex, we suggest that you hire a trademark agent to do the work for you.
*(excerpt from “A Guide to Trademarks” prepared by the Canadian Intellectual Property Office)