Trademarks allow consumers to distinguish between products and services of one business and those of another, making them a most valuable business asset. However, that asset’s value is closely tied to the extent to which an owner can claim exclusivity over a trademark through registration. Moreover, adopting and using a trademark that is identical or confusingly similar to that of another entity may potentially expose a business to significant liability. As such, conducting trademark clearance searches at an early stage to determine if trademarks are available for use and registration should be a key consideration for Canadian businesses.
This article outlines the benefits of trademark searching, different types of searches, and specific Canadian considerations, emphasizing the importance of proactive trademark clearance.
Benefits of searching
Searching before using and applying to register trademarks in Canada offers numerous advantages, such as assessing:
- The likelihood of registering the mark: a search can identify registrations and pending applications for confusing trademarks that could be cited as a bar to registration or form the basis of an opposition. A search can also capture prohibited marks (a unique Canadian concept), which may pose an obstacle to any identical or nearly identical trademarks, regardless of the goods or services (unless consent is obtained);
- The risk to using the mark: a search can identify registered and unregistered trademarks (i.e., those that may have been used in Canada so as to have become known) which may be asserted against the use of a confusing trademark in legal proceedings alleging infringement, depreciation of goodwill and passing off;
- The strength of the mark: a search can help determine the distinctiveness of a mark or the extent to which it is diluted in association with the proposed goods or services, and thus the scope of protection to which the mark will be entitled.
A trademark search can help businesses foresee potential problems and evaluate the likelihood of overcoming them. A search opinion from a Canadian trademark practitioner will guide businesses in their choice to use and apply to register trademarks in Canada.
Types of searches
Basic trademark clearance typically comprises at least a search of the Canadian Trademarks Office database for relevant registrations and active applications. A more robust inquiry will include a search of “common law” references (e.g., business name registrations, web searches, etc.) to identify use-based rights that are enforceable but might not otherwise be captured by a search of the Trademarks Office database.
While it is possible for businesses to conduct their own preliminary searches of the Canadian Trademarks Office online database and common law references, it is important to keep in mind that such simple searches will typically only capture trademarks that are identical or virtually identical to the mark being considered. As such, relevant confusingly similar trademarks may not be identified. For example, trademarks that differ in their spelling but are otherwise identical when sounded, or in the ideas suggested, may not be captured by such a search. Trademark practitioners have access to tools allowing for more comprehensive searches compared to an “exact match” search and can help determine if a similar trademark identified by the searches may be considered confusing.
Canadian issues
Conducting clearance searches before using or filing a trademark is all the more important in Canada due to some Canadian-specific circumstances.
Examination delays
The Canadian Trademarks Office is currently facing all-time high examination delays. At the time of publication, examination is approximately 55 months from filing for applications listing any goods or services that are not included in the Canadian Goods and Services Manual. Even Canadian designations of international trademark applications (i.e., Madrid applications) take the maximum allowable time to be reviewed (i.e., 18 months), on average. In most cases, it will take years before a trademark is registered in Canada or an objection is even raised by an examiner.
Accordingly, the practice of filing an application and waiting for the Trademarks Office to identify conflicting prior trademark rights or inherent registrability issues prior to launching a new trademark comes with significant risk in Canada. Most businesses cannot afford to wait for Canadian trademark examination before launching their products or services. Thus, relying on the Canadian Trademarks Office to conduct the clearance will most likely result in adopting a new trademark in Canada without any sense of whether it can be safely used or successfully registered.
French language issues
Canada’s two official languages - English and French - hold an equal constitutional status. Under Canadian law, the first impression of consumers speaking either or both of Canada’s official languages is relevant in assessing confusion. The Trademarks Office and the courts will consider whether a proposed mark is likely to cause confusion with another mark in either or both English and French. For example, a French trademark such as CHEVAL BLANC could potentially be considered confusing with the English mark WHITE HORSE (since they are translations of each other and convey the same impression to a bilingual consumer). Trademark owners should keep in mind the duality of language in Canada and should consider obtaining a registrability and availability opinion for their trademark as well as for its translation, when relevant.
Furthermore, the French language holds the status of official language in the province of Québec through the Charter of the French Language, making the use of the French language mandatory in all spheres of public life in the province, including commerce and business. Accordingly, non-French trademarks appearing on products, commercial publications, public signage and commercial advertising must be translated into French unless an exception applies. In that regard, registering non-French trademarks in Canada (and, as of June 1, 2025, applying to register non-French trademarks appearing on products or their packaging) may give trademark owners the ability to take advantage of an exception to the translation requirements in Québec.
A Canadian trademark practitioner can opine on French language issues prior to conducting searches and provide advice, as part of the registrability and availability opinion, as to whether pursuing registration for a non-French mark should be considered in view of the French language requirements in Québec.
An ounce of prevention…
Businesses and brand owners should consider conducting trademark searches and obtaining availability opinions prior to investing in the launch of a new trademark in Canada. Trademark clearance is a relatively inexpensive step compared to the potential cost of rebranding after a product or campaign has already been launched; not to mention the cost of defending a potential trademark infringement action or other retaliation from another brand owner.
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