Area of Law: Intellectual Property
Answer # 307
Trademark pre-registration searchRegion: Ontario Answer # 307
Before you spend time and money filing an application for a trademark, it is very important that you conduct a preliminary search to see what other trademarks exist.
A preliminary search will help you determine whether your trademark could be confused with someone else’s. If your trademark is too similar to someone else’s, you can consider modifying it before you apply, because your application for trademark registration will be rejected if your mark is too similar to someone else’s. Also, a search can help you avoid infringing someone else’s trademark and avoid lawsuits that they might start against you.
How to conduct a search
Conducting a search is a very complicated and technical process, and conducting an accurate and thorough search can be very difficult. You should consider hiring a trademark agent to do a search for you. You can conduct a search of trademarks yourself using the Canadian trademarks database, or the Goods and Services Manual for acceptable goods and services terms in Canada, both on the Canadian Intellectual Property Office (CIPO) website. However, a trademark agent has the expertise needed to compare your mark to other trademarks and determine whether your mark can be registered.
Trademarks Act – elimination of prior use requirement
On June 19, 2019, the new Trademarks Act came into force. Prior to this date, a “prior use” requirement existed before a trademark could be registered. Under the new Act, applicants for a trademark no longer have to use a trademark in order to have it registered, and the date of first use, or date of proposed first use, will not be recorded.
For more information about trademarks, refer to the Canadian Intellectual Property Office.
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