Trademark Availability – Is Your Trademark Available For Registration

Dave MacDonell

Dave MacDonell

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Trademark Availability – Is Your Trademark Available For Registration

All applications to register a trademark in Canada should start with a comprehensive trademark search. This search should be conducted by an experienced Canadian trademark lawyer who is qualified to provide a legal opinion on the trademark search results – i.e., whether your chosen trademark is a good candidate for trademark registration in Canada or not.  Sometimes, your trademark lawyer’s legal opinion will indicate that there is a competing pre-existing registered trademark, and that this trademark is similar enough to yours to be confusing to the public. When a pre-existing Canadian trademark registration is confusingly similar in the sense that the mark and associated wares and services are almost the same as yours, you have a couple of options:

First, your trademark lawyer may advise you to adopt a new trademark in Canada – one that is dissimilar enough to not be in conflict with the pre-existing registered trademark in question. This can be disappointing news if you’ve invested a lot of time and money in your branding.

Or, your trademark lawyer may suggest that you try to challenge the existing competing trademark in hopes of having it expunged by the CIPO.  The easiest way to do this is to request expungement under Section 45 of the Trademark’s Act Canada. This will require the owner of a competing trademark to swear an affidavit proving that they’ve used the trademark, and are still using it, or providing reasons for its nonuse during the past three-years. A Section 45 challenge can only be brought three years after the Canadian trademark in question was registered. If the registered trademark owner fails to file a response within three months of receiving a Section 45 notice, the trademark registration (Canada only) is expunged automatically. Any foreign registrations will be unaffected.

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