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Trademark searching

File search and analysis

Once you have selected a new trademark it is important to do a trademark search to understand if there are problems in the marketplace which could inhibit your launch or adoption.  The two key items which we can consider in the preparation of a trademark search are the registrability of the trademark, that is to say whether or not the trademarks office in the country in question would have any issue with the granting of a trademark registration in respect of a particular proposed trademark, and whether there are any issues with the adoptability of the trademark in that marketplace. Adoptability is such a key issue since in many cases it may be possible to obtain a registration based on the status of the federal trademark register in the country in question, but there may be unregistered trademark rights in that marketplace which create the infringement or adoption risks which a client should know about in advance of finalizing their strategy.

It is possible for trademarks to coexist in the marketplace if they are used in different channels of trade and so to the extent that other trademarks exist that are visually or orally similar to your own potential trademark knowing the channel of trade in which you propose to use it is important.  Different types of trademark searches can be conducted for different purposes.

TYPES OF TRADEMARK SEARCHES

Primary purpose:  Initial market scan

A trademark search of this nature is intended to focus around identifying trademarks that are either identical in spelling or very similar in spelling, with limitations to the channel of trade which is included in the search.  The knockout search will typically comprise a search across all channels of trade for identical spellings and a limited number of additional queries with modifications in the search terms to cover similarly spelled trademarks and other trademarks of interest within the channel of trade.  The queries that are used in the knockout search are computer generated and so there is not quite the same amount of depth in the search as a complete register search outlined below, but if what you are really after is a snapshot of the state of the trademark register and how any items in the register might affect the registrability of your proposed trademark, this is oftentimes a good way to start.

Primary purpose:  Understand registrability of the trademark

The next option which is available in terms of assessing the registrability of a trademark is to conduct what we would refer to as a complete “register search”. A register search, as inferred by its moniker, still comprises a search of the Canadian trademark database to identify any trademarks which might be relevant to the registrability of your proposed trademark within your channel of trade. The primary difference between a register search and a knockout search is that the query strategy on the register search, as well as the analysis and generation of the opinion, is done manually rather than by the summary auto-generation type of a search which is used in a knockout. The queries which will be executed in the preparation of a complete register search such as this will include the necessary queries to cover any trademarks of similar connotation but different spelling, or looking for roots and constituent elements of the proposed trademark and other trademarks within the channel of trade, spelling variations etc. the opinion that we will provide on this type of a search will be a legal opinion as to the registrability of your proposed trademark over the contents of the search report.

Primary purpose:  Understand registrability as well as adoption risks, if any

The final type of trademark search which we can conduct we refer to as a comprehensive search as it encompasses more sources with a view to providing you with an opinion not only as to the registrability of the trademark [to which pending applications and issued trademark registrations are relevant items] but also to provide you with an opinion as to the existence of any infringement or adoption risks in the marketplace beyond registrability. The circumstance that this type of a search is intended to minimize is the one where there may not be any impediment to registrability on the Canadian register and on that basis we may be able to provide a clear opinion on registrability, but there may be one or more infringement risks in the marketplace by virtue of someone else having a previous use of a similar trademark on the same channel of trade that is not registered, or something along those lines.

Consideration of adoption and infringement risks is a very important layer of diligence, in addition to a registrability analysis, so that you do not seek to register a trademark that would necessarily cause confusion and potentially infringement liability on your part vis-à-vis a third party in the marketplace.  Even though a trademark may be registrable, there may be common-law usages or other competing positions in the marketplace which, as a result of their status, may pose a problem in terms of a previous use or priority position in the marketplace in your channel of trade.

INTERESTED IN LEARNING MORE ABOUT TRADEMARK SEARCHING?

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Patentability searches

the gear

Patentability searches give us an idea of the current state of the art in the field of your invention. Awareness of any prior art that could pose a threat to the patentability of your invention can help us figure out how best to overcome it.

PATENTABILITY

There are a number of different criteria which an invention must satisfy in order to be found to be patentable.  These include the following:

  1. Must have patentable subject matter;
  2. Must have utility; and
  3. Must be novel/unobvious.

A patentability search can determine whether an invention meets these criteria.

The novelty of an invention is set out in one or more “claims” which form the core of every patent application.  Claims specifically point out and define the scope of the invention.  In drafting a patent application the general goal is to claim as broadly as possible without overlapping previously known inventions or ideas, while at the same time fully describing the essence of the invention.  Prior art is the yardstick against which the Patent Office measures the novelty of an invention.  In addition to published patents, prior art can be any printed information in books, articles, brochures, as well as general knowledge that was made public before the date of filing of the patent application.  Such prior art can render a patent application unpatentable for lack of novelty, or on the basis that the invention is obvious.  In terms of a lack of novelty, there are two key terms used to further refer to the status of an invention vis-à-vis the prior art.  These are “anticipation” and “obviousness”.  “Anticipation” occurs when the elements of a certain claim in a patent or patent application are all described in a single prior art reference – a “dead ringer” reference if you will.

In contrast to anticipation, obviousness renders an invention unpatentable if the invention can be said to be obvious by combining more than one prior art references.  The question is whether at the date a patent application is filed an unimaginative skilled technician, in light of general knowledge and the prior art available to the technician at that date, would be led directly and without difficulty to the invention.  There is a four-factor test to showing obviousness:

  1. identify who the “person skilled in the art” is, and identify that person’s common general knowledge;
  2. determine the inventive concept of the claim in question;
  3. identify the differences, if any, that exist between matters forming the “state of the art” and the inventive concept of the claim; and
  4. consider whether the differences would have been obvious to the person skilled in the art or whether they require a degree of inventiveness.

The invention is obvious if no degree of inventiveness is required.  There may also be a question as to whether an invention was “obvious to try”.  For a finding that an invention was “obvious to try”, someone must convince a judge or the Examiner that, on a balance of probabilities, it was more or less self-evident to try to obtain the invention.  This is a high standard to meet, since mere possibility that something might turn up is not enough.

In terms of chronological relevance, there are a couple of key dates and concepts to understand as well in terms of the scope and applicability of various prior art references uncovered in the patentability search. Generally speaking the date at which relevance of a prior art reference is determined is the date of filing of your own patent application. Any patent references or other prior art references which are created or published in advance of your filing date are strictly speaking relevant in the perspective of an assessment of novelty and patentability. Items that are created or published after your filing date strictly speaking and generally will not be relevant.

PATENT SEARCHING

An inventor may wish to obtain an assessment of the patentability of their invention prior to incurring the additional drafting and filing expenses discussed herein.  Patents from all countries are relevant to the patentability of an idea in Canada (and elsewhere) and while a search of Canadian and U.S. patents is not exhaustive, it typically does provide a good idea of the state of the prior art as it relates to the proposed invention at a reasonable expense.  In addition this search can locate and provide copies of prior art which is required for the drafting of the patent application.  Patents and patent applications which are disclosed by their inventors in turn provide a great deal of useful technical information to those interested in searching patents for such information.

There are numerous advantages to doing a comprehensive patentability search before proceeding to draft and file a patent application.  These include the ability to fine‑tune your own patent application based on problematic pieces of prior art revealed in the search to avoid Patent Office rejections based on those at a later date.

WONDERING IF YOUR INVENTION IS PATENTABLE? We can help.

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Canadian trademark law pointers

work in process

The following is a series of trademark law pointers addressing frequently asked questions for foreign agents and companies seeking to register or protect their trademarks in Canada.

APPLICATION BASIS

A trademark application in Canada can be filed claiming prior use in Canada (provided such prior use is substantial, the prior user might also exercise common law trademark rights in canceling subsequent trademarks and suing for infringement, even in the absence of registration, although the cost and difficulty of such an action is more difficult than if a trademark registration is in place).  Other bases of a trademark application in Canada can include:

  • intent to use the mark in Canada;
  • making a trademark well known in Canada;
  • application and use of the trademark in home jurisdiction;
  • or registration and use of the trademark in the home jurisdiction of the applicant.

Generally speaking, amendments can only be made to the basis of an application in advance of approval for advertisement by the Canadian Intellectual Property Office.  Once a case has been approved for advertisement or has been advertised in the Trademarks Journal, there are very limited numbers or types of amendments which are permissible before the Office without either re-filing or re-advertising the application.

ASSIGNMENTS OF TRADEMARK APPLICATIONS OR REGISTRATIONS

It is possible to assign Canadian trademark applications and registrations.  Assignments can be recorded in the Canadian Intellectual Property Office and it is advisable to do so.  Should you require assistance in the preparation of assignment documents or a review of a global assignment document, we are pleased to provide this service.  The turnaround time in the Canadian Intellectual Property Office on assignment recordals is currently in the ballpark of three to four months.

CHANGES TO THE MARK, POST-REGISTRATION

In order to maintain the validity of a Canadian trademark registration, the trademark must be used as registered. This is something for clients to keep in mind as there is oftentimes some “creep” or morphing of trademarks over many years as they are modernized or revisited by or during brand revisions or novation. Modest, non-substantial modification of the trademark may not result in a sufficient departure to render the initial registration susceptible to cancellation but this is something to consider and on which opinion or advice should be taken at the relevant point in time.

CLASSIFICATION OF GOODS AND SERVICES

All different types of wares and services can be included in one application – separate applications for different classifications of wares and services are not necessary for any legal reason, although this type of an approach can still be taken if there is a tactical preference to do so. Canada is a participating country in the Nice Agreement and therefore it is a requirement for all new Canadian trademark applications that the goods and services covered under the application are grouped according to the Nice Classification system.

COMMON LAW RIGHTS

It is not necessary to register a trademark in order to accrue rights in Canada in the channel of trading question. Use of the trademark in the normal course of business, or in sale of products and services, will result in the accrual of some common law rights in favor of the owner.  There are benefits to registration which can supplement an owner’s position vis-à-vis the common law. We are happy to discuss this in further detail if you wish.

DISCLAIMERS

Since the summer of 2007, the Canadian Intellectual Property Office no longer requires disclaimers of descriptive terms apart from trademarks.  Voluntary disclaimers are still possible.  Absence of the disclaimer requirement has not alleviated or removed the prohibition on descriptive or misdescriptive trademarks.

INTENT TO USE (ITU) APPLICATIONS

An applicant filing a trademark application on the basis of an intent to use the mark in commerce in Canada has up to three years from the date of filing of the Canadian application to declare the mark in use on the wares and services contained in the application.  At that point, if not all of the wares or services are in use, it would be necessary to either remove some of the wares or services from the application and re-file them in a subsequent application, or to allow the application to go abandoned if none of the wares or services in the initial application are yet in use in Canada.  It is, in certain circumstances, possible to obtain some extensions of time of this three year deadline.

LICENSING

There are certain basic requirements for effective trademark licensing in Canada. To summarize, the trademark owner needs to maintain control over the quality of the wares and services in question. We are happy to provide specific or substantive advice on the sufficiency of a particular license or licensing provision at your request.

MADRID PROTOCOL

On June 17, 2019, Canada joined the Madrid Protocol, streamlining the outbound filing process for Canadian applicants into foreign countries and also allowing foreign applicants to enter the Canadian trademark system similarly. To date we have had a number of clients successfully take part in the Madrid system in order to maximize international trademark coverage at minimal cost.

OFFICIAL MARKS

Section 9 of the Canadian Trademarks Act provides for a couple categories of special trademark protection for governments, universities and other public authorities. To the extent that these sections are applicable they are advantageous to an applicant, insofar as they provide the ability to seek the protection of the trademark across all channels of trade, as well as to potentially avoid the application of other registrability criteria pursuant to the Act. There has been case law of late restricting the applicability of this section and it is anticipated that within the next few years there will be significant revision or restriction. In the meantime, however, if you wish to consider the applicability of this section to a client please let us know and we are happy to review same.

OPPOSITION PROCEEDINGS

As is the case in many countries, Canadian trademark legislation provides the ability for a third party to oppose the registration of a trademark once it is advertised in the Trademarks Journal published by the Canadian Intellectual Property Office. Publication takes place following approval of the application for that trademark by the Examiner assigned to examine that particular application. Typical grounds of opposition might include conflicting superior rights for an allegation of conflicting superior priority, as well as other grounds of non-registrability which might be raised or alleged against the trademark in question.

PARIS CONVENTION

Canada is a signatory to the Paris Convention and, as such, the six month Paris Convention priority filing mechanism is available in Canada.  If the applicant’s home country is a member of the Paris Convention and a home application has been filed within the six months preceding the proposed Canadian filing date, the filing of the home application can be claimed as the filing date in Canada.

PENDENCY

Currently a non-contentious trademark application is taking in the range of 24 months from filing to registration, if no significant prosecution hurdles or opposition are encountered.

PROCEDURE GENERALLY

Upon filing of a trademark application in Canada, the application will undergo internal examination in the Canadian Intellectual Property Office for conformity with Canadian laws.  A search is undertaken to identify any previously registered marks or co-pending the marks subject of which are confusingly similar to the mark subject of the application. Upon approval of the application, the application will be advertised in the Canadian Trademarks Journal and there is a public opposition period of two months within which interested parties can potentially file an opposition to the registration of the application.  Following expiry of the opposition period, provided that no opposition is filed, the Notice of Allowance will be issued.  It is our current experience that trademark applications remain pending for approximately 12 to 18 months from start to finish, in cases lacking protracted examination or opposition difficulties.

REGISTRABILITY

A word mark or design mark, or symbol or shape of the wares or their packaging that is distinctive of the wares or services of the applicant are in most cases protectable.  This is subject to the requirement that the mark be distinctive, and not be primarily merely the surname of an individual who is living or has died within the preceding 30 years, is not either clearly descriptive or deceptively misdescriptive in the English or French languages of the character or quality of the wares or services, is not the name in any language of the wares or services in connection with which it is proposed to be used, is not confusing with a registered trademark, nor is it a mark which is prohibited by Section 9 of the Trademarks Act, or a potential geographical indication.

REGISTERED USER/LICENSE RECORDAL

It was previously the case that it was necessary to record registered users or licensees of trademarks in the registry maintained by the Canadian Intellectual Property Office. These registered user and license provisions were removed or amended a number of years ago. If you have questions on the recordability or advisability of recording particular title or licensed documents please let us know and we are happy to discuss same.

SEARCHES/CLEARANCE

Various levels of searching can be undertaken in advance of filing a Canadian application.  If you wish to conduct a simple trademark search, you can access the entire Canadian Trademarks Database free of charge via our Web site, www.furmanip.com.  For more complex searches or opinions, we are pleased to advise our clients regarding same – the three most typical types of searches which we conduct on clients behalf are basic register knockouts, more comprehensive register searches which again are typically primarily directed towards assessing the registrability of the trademark, and a comprehensive search which includes a register search as well as a search of common-law and unregistered sources to assess the existence of any infringement or adoption risks in the Canadian marketplace in addition to the registrability of the trademark. Contact us today if you are interested in performing a search before filing your trademark application.

TERM OF REGISTRATION

A Canadian trademark registration lasts for 10 years from the date of registration. The trademark is then renewable in similar 10 year periods thereafter.  There is no limit to the amount of renewable terms, so long as the trademark remains in use in the Canadian marketplace.

USE

Use of a trademark in Canada in respect of products typically comprises actual sales of those products bearing the trademark. Specimens of such use would include commercial documentation or packaging sold along with the product or the product itself bearing the trademark. Use of a trademark in respect of services can comprise advertisement of those services to the public for sale.

NEED MORE TRADEMARK LAW POINTERS? Contact us!

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Canadian patent law pointers

The following is a series of patent law pointers addressing frequently asked questions for foreign agents and companies seeking to register or protect their patents in Canada.

ASSIGNMENTS OF PATENT APPLICATIONS OR REGISTRATIONS

It is possible to assign a patent application or registration in Canada and the assignment can be recorded in the Canadian Intellectual Property Office. The current turnaround time for assignment recordals in the Canadian Intellectual Property Office is approximately three months.

CONTINUATION-IN-PART PATENT APPLICATIONS

There is no CIP mechanism as such in Canada.  It is possible to claim internal priority within Canada within 12 months of the date of filing of the initial application to which priority is to be claimed, or depending upon the nature of the subject matter change desired a divisional filing strategy could also be considered.

CONVENTION PRIORITY REQUIREMENTS

It is possible to claim Paris Convention priority in Canada, within the 12 month period following the filing of the home application.

ENTITY STATUS

Section 2 of the Patent Rules provides that “small entity” means an entity that employs 50 or fewer employees or that is a university, but does not include an entity that has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees, or has transferred or licensed, or is under a contractual or other legal obligation to transfer or license, any right in the invention to an entity that employs 50 or fewer employees or that is a university, and has knowledge of any subsequent transfer or license of, or of any subsisting contractual or other legal obligation to transfer or license, any right in the invention to an entity, other than a university, that employs more than 50 employees.

INTERNAL PRIORITY

Priority can be claimed within Canada to a previously filed complete or incomplete Canadian application for up to 12 months from the earliest date of filing claimed.

PATENT MARKING

There are no mandatory patent marking requirements in Canada.

NATIONAL PHASE ENTRY OF PCT APPLICATIONS

It is possible to make a late national phase entry of a PCT application in Canada up to 12 months after the 30 month deadline.  This is possible by reinstating the application which is deemed to be abandoned as of the 30 month national phase entry deadline.  As such, it is possible to enter the national phase in Canada up to 42 months from the priority date claimed in the PCT application.

PROVISIONAL PATENT APPLICATIONS

It is possible to file an incomplete application in Canada which consists of, at a bare minimum, the filing fee, description of the invention without claims or abstract, and an indication that the grant of a Canadian patent is sought.  There is then a period of 15 months within which the application can be completed.

PUBLIC DISCLOSURE

There is a 12 month public disclosure grace period granted by Canadian legislation with respect to inventor-derived public disclosures of the invention.  It is possible to file a valid patent application in Canada at any time up to 12 months following the first such disclosure of the invention in the world.

RE-EXAMINATION

At any time after the grant of a patent, anyone, including the patentee, can initiate a re­examination of an application.  Re-examination is limited to the consideration of prior art which was publicly available.

PATENT TERM

The term of a patent which was granted from an application having been filed before October 1, 1989, is 17 years from the date of grant of the patent.  The term of any patent issued on a patent application filed after October 1, 1989 is 20 years from the Canadian filing date.

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What is a trademark?

Branded

You probably come across the ® symbol multiple times a day on products whose branding is protected under federal intellectual property laws, but do you know what a trademark is or how to go about protecting it?

A trademark is any type of a word, phrase, mark, logo or the like which is used to differentiate your products or services from those of others. It is important for a company to not only understand what trademarks are but also to have a plan for the protection and expansion of their brand over time in the marketplace.

Traditional trademarks included “word marks” as well as designs or logos applied to the sale of products or services by an owner.  Word marks would include corporate names, product names, as well as advertising taglines and the like.

Trademarks can take many forms including words, numbers or letters, logos or designs, slogans, colors, smells, product or packaging configurations or trade dress, sounds, or other similar items.  Legislation in Canada and in most other countries defines a trademark as any kind of a mark or indicator which is applied or used in relation to a product or service for sale, to identify or distinguish the product or service in the eye of the consumer from those of other parties in the marketplace.  Beyond word marks and logo or design marks there are expanded categories of trademarks which can be protected in so far as they also provide a source indication to the consuming public.  For example, color is a type of a trademark which can be registered in Canada.  Two examples of a color trademark which can usually easily be understood are John Deere green and Caterpillar orange, for application to equipment in the channel of trade of those particular companies.  Those colors are used by those companies to indicate in the mind of the consumer the source or quality of their product.

There are at least three “legal” categories of trademarks which it is important for you to be aware of on an ongoing basis under Canadian and similar equivalents under international laws.  These include regular trademarks, certification or collective trademarks, and in the Canadian context public authority trademarks.

  1. A regular trademark would be a word mark or logo or design of the like which was used by a regular corporate entity as a trademark in respect of a certain product or service.  Unregistered trademarks would typically all qualify in this category as well.
  2. The second category mentioned above, certification trademarks, is provided for under the trademarks legislation in Canada and elsewhere which is used in a licensing or certification scheme to effectively indicate to members of the public not necessarily the source of a product or service but rather that the particular product or service is certified to meet a particular standard.  The standard, in the registration context of the certification mark, is defined in the application and can be related to the quality of the product or service, the method of manufacture, location or region of origin of the product or service, or some other characteristic.  One key restriction to the use of the certification mark is that the owner of the mark itself cannot be the source of goods or services which are marked with that certification trademark.
  3. A final category of trademarks which is outlined here for informational purposes are public authority trademarks.  This is a creature of the Canadian trademark legislation which you will potentially encounter from time to time in clearance of your own regular or certification trademarks.  Public authority trademarks are registered by a governmental authority in Canada pursuant to Section 9 of the federal Trademarks Act.

Another extended category of trademarks beyond color is that of the actual shape of the product or packaging. This is sometimes referred to as “distinguishing guise”. Examples of distinctive shapes of products which have been registered before the Canadian Intellectual Property office include the well-known historical glass Coca-Cola bottle, the Heinz catsup bottle etc.

Common law rights

It is not necessary to register a trademark to accrue some rights in Canada in that mark within your channel of trade.  Simple use of the trademark in the sale or normal course of business will accumulate some rights in favor of the owner.  It is often times the case that trademarks are first used on a common-law or unregistered basis by companies and then subsequently registered as a measure of “insurance” or rounding out the portfolio of rights owned or identified as essential by the company to their ongoing operation.  There are numerous procedural advantages to taking advantage of the federal trademark registration system in Canada which include the fact that by performing a registration at the applicant/registrant creates a bar in the federal trademark registry to someone else coming along after the fact and registering a confusingly similar trademark.

REGISTRABILITY

The following registrability criteria need to be met in order to render that trademark registrable:

  1. It must not be clearly descriptive of the wares or services themselves, nor deceptively misdescriptive;
  2. It must not be a generic term;
  3. It must not be primarily merely the name or surname of an individual who is living or recently deceased;
  4. It must not falsely suggest a connection with any living or recently deceased person; and
  5. It must not be “scandalous, obscene or immoral”.

The second prong of registrability involves the consideration of potential confusion with any previously filed or registered marks in the same channel of trade.  The rights of a trademark owner are conferred by the Trade-marks Act through registration of the trade‑mark, and include the exclusive right to use of the trade‑mark throughout Canada in respect of the wares or services set forth in the registration, subject to adjudication.

TERRITORIAL RESTRICTIONS

A trademark registration only protects the owner in the jurisdiction within which it is registered.  In an exporting scenario in particular it is fairly important to consider the clearance and protection of your trademarks in your foreign markets as you develop your export strategy, by way of protecting yourself against not only in market infringement by third parties but also protecting yourself in terms of the possibility of any disintegration of any local distribution arrangements etc. so that you are not left in a position that a third party has any rights in your trademarks in those foreign countries or markets.

ONGOING USE REQUIREMENT

Use of a trademark in the ordinary course of business is a key factor that will provide the ongoing basis for your rights in a particular market.  Registering a trademark can overcome to a degree the instant need for use but in order both to maintain a registration in most cases as well as to maintain your rights in an unregistered common law trademark, it is necessary for you to “use” it in the ordinary course of business which is to say that it is necessary to mark the trademark on products or services or advertising thereof in the ordinary course.  It is necessary also to maintain and/or to be able to produce from time to time as required evidence of ongoing trademark use, in support of your registrations or as required evidence in an enforcement proceeding.  Determining what is the appropriate “date of first use” for use in registration proceedings is another key basic concept.  The date which will be used is dependent upon whether the trademark is used in respect of products, or services, or both.

Although continuous use in the normal course of trade may often involve periods of non-use, any non-use that is outside of that occurring in the normal course of trade could be sufficient to defeat an application for registration.

Interested in protecting your branding? Contact us today!

RECENT UPDATES AND INSIGHTS

Protecting your IP Assets as a Part of your Exporting Strategy
Protecting your IP Assets as a Part of your Exporting Strategy
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