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, there are two things that you may want to do. First, you may want to make sure that you are either using or will be using the trademark in Canada. Second, you can decide to conduct a preliminary search to see what other trademarks exist.
Use the trademark
The law requires that you must use your trademark before it will be registered. This means that you must use the name, symbol, or design in association with the products or services offered by you. The Office of the Registrar of Trademarks at the Canadian Intellectual Property Office (CIPO) will ask you to provide the date of first use on your trademark application. If you have not started to use your trademark, you should apply for a ‘proposed use’ trademark. This is an important distinction.
New Trademarks Act
On June 19, 2014, the new Trademarks Act received Royal Assent. It is anticipated that the new Act will be proclaimed into force in 2019.
Under the proposed new Act, applicants for a trademark will 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.
Second, 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. Although you can conduct a search yourself on the CIPO website, a trademark agent has the expertise needed to compare your mark to other trademarks and determine whether your mark can be registered.
For more information about trademarks, refer to the Canadian Intellectual Property Office.
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