Trade-Marks
3. Getting Started
(a) Trade-Marks Clearance and Pre-Screening
ii. - Searching Unregistered Trade-Marks & Trade Names
As discussed under Trade-Marks at Common Law, it is possible that a trade-mark may be confusing with a trade-mark or trade name which has been previously used by another party, even where such prior party has not sought to register its trade-mark or trade name. In such circumstances, the subsequent trade-mark may not be registrable, and the prior user may be able to successfully stop registration during opposition proceedings or use by way of passing-off litigation, assuming he/she can successfully show prior use and reputation as previously discussed. During the examination of an application in the Trade-marks Office, searches of trade names are not routinely conducted by the Trade-marks Office staff. Thus, the Examiner will not be aware of prior trade names, and will not cite trade names against your pending trade-mark application. Moreover, if a prior party has not sought to register its trade-mark under the Trade-marks Act, there will be no record for a trade-marks Examiner to find during his aforementioned search. Accordingly, it is possible that there may be third parties in existence who have prior rights in trade-marks or trade names which are confusingly similar to yours. You may find your application "ambushed", after the Trade-marks Office routinely advertises your application for opposition, by third parties of which you (and the Examiner) were previously unaware.
To lessen the chance of such surprise occurrences, we can conduct a computer search of Canadian registered business and corporate names (i.e., registered trade names), known as a NUANS search, in an effort to alert you to the existence of other persons who may be carrying on business under trade names which are similar to your proposed trade-mark. It is also possible to check other sources, such as telephone directories, dictionaries, business directories, popular media, and trade publications to determine whether or not a particular trade-mark or trade name is being used, despite the fact that the owner may not have sought a registration in respect thereof. These types of searches are generally more involved and expensive, as there is no one single place or source at which to conduct the search.
If you know about prior unregistered trade-mark or trade name rights before you finalize your trade-mark selection, you can better assess the risk that you may be infringing the prior existing rights of another trader, and/or that someone may seek to oppose your application for a trade-mark after it is advertised for opposition. Investing a modest amount in preliminary searching may save you significant costs and headaches in the long term. Your trade-mark agent can also be of assistance in advising you if there is a likelihood that your trade-mark will be objectionable for other reasons, such as descriptiveness, or genericness. Additionally, a registered trade-mark agent can advise you on choosing a strong trade-mark versus a weak trade-mark (Choosing a Trade-mark). In most cases, this service is provided for a minimal charge, and can be done in advance of carrying out any preliminary searches, thus saving you the cost of unnecessary searches.