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TRADE-MARK AVAILABILITY SEARCH: WHY AND HOW?

By Isabelle Deshaies

In Canada, the first to adopt a trade-mark is the one who has the right to use it. The adoption takes place when use of the mark begins, or when an applicant files an application to register the trade-mark, the first date being the relevant one. A trade-mark is a commercial identity. A logo, a company or business name, as well as an internet domain name, may qualify as a trade-mark. The main criterion is that it serves to distinguish the wares or services of its owner, from the wares and services of its competitors.

Trade-mark rights allow the owner to stop the use and registration of any other, new coming, identical or confusingly similar trade-mark.

Finally, the Trade-marks Act prohibits the adoption of certain kind of marks.

Before adopting a trade-mark, it is highly recommended to perform an availability search in order to identify any mark susceptible to refrain use and registration of the proposed trade-mark. This search is performed to ensure that the application will mature into registration, and that same will not be subject to expungment based on a third party's previous rights.

Even if the owner a trade-mark does not intend to register it, performing an availability search will prevent further suits, injunctions, passing-off or even a criminal suit for counterfeited trade-mark. Such suits are far more expensive than performing a search, as legal fees and damages are quite expensive, apart the need to change the trade-mark and reinstate the reputation of the company.

Preventing objections, oppositions
and expungment of the registration

During the registration process, the examiner ensures that the mark is registrable. He performs a search on the Trade-marks Register to identify prior applications or registrations for an identical or confusingly similar trade-mark. In such a case, the examiner will object registration the trade-mark and, if such objection is not overcome, the applicant will need to change its mark. i

At the examination stage, the Registrar may only rely on the Trade-marks Register to raise an objection of confusion. However, a third party may raise an opposition to stop registration of the trade-mark, based on confusion with a previously adopted Common Law trade-mark.

An opposition is raised when the trade-mark is advertised in the Trade-marks Journal. In such a case, if the opponent shows that it has prior rights on the trade-mark, the opposed mark will be refused by the Registrar. There again, the applicant will need to change its mark.

Finally, if the owner of a prior mark did not raise an opposition against registration of the trade-mark during the registration process it may, within five years from the registration date of the trade-mark, apply with the Federal Court to have the registration expunged based on its prior rights.

The complete availability search enables the applicant to have a state of the market place at the time the search is performed. If, after performing the search, the trade-mark seems available, there are good chances that the application will mature into registration and that there will be no suit to have the registration expunged.ii If the trade-mark is launched without previously insuring that the trade-mark is available, some ghosts may be running after you!

It is noteworthy that the Registrar may also object registration of the mark based the other objections of the Trade-marks Act. Registration of a mark will be refused if it is a name, descriptive, the name of the wares / services, or otherwise prohibited by the Act.

Performing the search

To be properly performed, the availability search requires many skills. First, the searcher must have linguistic knowledge in order to be able to identify the proper phonetic equivalents to be searched, as well as having translation skills if the mark is in a foreign language or is designed to reach consumers speaking a foreign language. iii

Moreover, the searcher must be familiar with the Vienna Codes relating to design marks, and be able to identify and name the determinative visual elements of the mark to be searched.

Usually, search houses combine many experts. They know how to search the mark and are able to identify the subtle elements to be further searched. Their role is to know how to pull out, from the Trade-marks Register, all identical and confusingly similar trade-marks. This does not only include visually and phonetically similar trade-marks, but also those suggesting similar ideas.

Apart from the Trade-marks Register, other registers identified as Common Law registers should be searched, as a “complete availability search”, to identify any other confusing reference, at risk of being the basis of an opposition or an application for expungment of the registration, based on a third party's prior rights as explained above.

Amongst the relevant databases to be searched, the search house includes Quebec and British-Columbia business registers, the Federal Corporations register, domain names, the internet network and other databases to which it has access.

It is to be noted that the Trade-marks Act is federal and applies to all Canada. Therefore, even a local reference may stop or limit the registration of a trade-mark.

Apart the risks of confusion, the searcher must consider all the other criteria under which registration of a trade-mark may be refused: name or surname of a living individual, descriptiveness, name of the wares or services, and other prohibitions of the Trade-marks Act. Therefore, telephone directories must be searched, as well as specialized dictionaries and databases.

If the examiner misses a reference during the examination stage, there is always a risk that the registration be expunged based on the fact that the trade-mark should not have been registered at the time it was.

Search report analysis

Once the search house has retrieved all relevant references, the report should be remitted to a registered trade-mark agent who is the expert recognized to have the qualification to analyze the report and submit a legal opinion as to the possibility of using, and registering, the trade-mark. The search results are studied according to the Trade-marks Act's registrability criteria, prohibitions, as well as with regard to the Common Law practice. In view of he trade-mark practice with the Trade-marks Office and her knowledge of the Office's and the Courts' decisions, the registered trade-mark agent is able to justify her opinion, as well as to submit some recommendations as to the use and changes to make, if necessary, to increase the chances of protecting the mark.

Conclusion

In short, the availability search is so crucial in the adoption and marketing process, that it is sometimes recommended, in case of a limited budget, to perform a search before to start using the mark and apply to register it later on.

This article does not constitute a legal opinion. Ask your registered trademark agent for more information.

© Isabelle Deshaies
March 2011

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i. The Registrar's decision may be appealed at the Federal Court.

ii. A complete availability search is usually considered to be reliable at 95% to 98%.

iii. In a decision of the Federal Court of Canada, 1st div., the trade-mark Cheung Kong SA IP, written in Chinese characters, was considered to be confusing with the English word mark Cheung Kong. This was essentially due to the fact that both marks were addressed to the same kind of consumers, e.g. Chinese people familiar with both the English and Chinese languages. See Cheung Kong (Holdings) Ltd. c. Living Realty Inc. (1999 CanLII 9394 (C.F.) 15 December 1999.

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