What is Included in a Canadian Trademark Search?

Create Time 2019-07-10 01:07    Views:11245

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If you’ve been following along with our blog, you will now know what a trademark search is and why you should conduct one. But in the wide world of business it’s hard to know where to begin, or even what you are looking for. What you need to know is what criteria are included in a trademark search both in Canada and abroad. Luckily, we can help you out.

General Trademark Search Criteria

Just to recap, the purpose of a trademark search is to discover if there are any prior registrations and/or filings that are similar to your own proposed trademark. You need your trademark to be distinctive and dissimilar to anyone else’s. Therefore, you need to know what constitutes “similar.”

The obvious search questions: are any other trademarks spelled similarly to yours? Are they pronounced similarly to yours? You need to take into account that the trademark examiners will be looking at all the possible ways to pronounce your trademark. If you were the founder of Nike (one can only dream) and you were conducting your trademark search, you may have run into trouble if you had come across “Nikey”, “Gnike”, or even “Nique”.

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Trademark Searches Across Languages

In a country that either has multiple official languages or where multiple languages are commonly spoken, trademark meanings or how trademarks can be translated matter. In such a country, you would not be able to register a trademark in English if it was similar or identical to another trademark once translated into another regional/national language. “Antonio’s Boats” wouldn’t do very well in Italy if there was already a “Le Barche di Antonio.”

Trademark Searches Across Classes

One thing to keep in mind is that the classes of goods and services to which your trademark belongs will often make a difference in your search. While you’re searching to make sure that “Red Water Winery and Bar” isn’t taken for your new alcoholic endeavour, you may panic to find a “Red Water River Cruises” pop up; but this may not be a problem if your businesses are in no way related. You are selling a good, which is alcohol, while they are selling an unrelated service, which is a boat tour, so the literal element of your trademark may not be an issue. Just be sure they are not well known for their on-deck cocktail hours. 

Then again, “different class gets a pass” is by no means a blanket rule. Here are the two main criteria that will determine if your unrelated trademarks will still broach the standards of similarity:

  1. The figurative element and combined elements

    • The more similarities you stack on, the riskier things get. What if the letters of “Red Water” are written in similar fonts, laid out similarly, and the logos and brand colours are also similar? This could lead to trademark trouble and even if it doesn’t you could find yourself in violation of copyright.

  1. The fame or distinctiveness of the similar trademark

    • A trademark like “IKEA” is a fanciful word, which means that it is a strong trademark and enjoys a lot of protection. Even in a different industry the standards of similarity would apply, and you would not be able to register that trademark.

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    Canadian Trademark Search Criteria

    There are a couple of elements in your trademark search that are particular to Canada. Firstly, Canada has two official languages: English and French. Therefore, you will need to also search for your trademark in English and French to determine that there are no similar registered or pending trademarks. 

    Before Canada’s trademark laws changed, there were unregistered common law trademarks that enjoyed some protection. This made trademark searches difficult as there were no official listings for these businesses. With the
    new changes, trademark searches in Canada have become much easier.

    Trademark searches are nuanced and complicated. Let Witmart run your search for you so you don’t lose time running your business!
    Visit our website to book your free consultation and trademark search today.

    Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case-by-case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change. 

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