How to Use the Canadian Trademark Database

By Josh Gerben, Esq.

Obtaining an international trademark is an effective way to protect your brand.  If your international trademark strategy includes Canada, be sure to conduct a search on the Canadian trademark database before you file your application.  The Canadian Intellectual Property Office, or CIPO, provides a detailed tutorial on their website.  Read below to learn about the importance of the search, basic navigation instructions, and the importance of working with an experienced trademark attorney.

Why Search the Database?

Whether you plan to register in the U.S., Canada, or any other country, it is best to complete a comprehensive trademark search with that country’s trademark office before you file your application.  The purpose of this search is to determine if any confusingly similar trademarks have already been registered.  Failing to complete a comprehensive trademark search could cost both time and money in the long run, if your trademark examiner finds a confusingly similar mark already in use in Canada.

While it can be frustrating to learn of an existing trademark, it is best to learn this before you invest time and money filing your application with the Canadian Intellectual Property Office.  If a trademark exists that may cause a likelihood of confusion in the marketplace, you will have the ability to make changes to your trademark prior to filing.  Sometimes a trademark may need a complete overhaul before it can be registered, but often, only slight changes may need to be made to gain the approval of CIPO.

How to Navigate the Canadian Trademark Database

The Canadian trademark database can be found directly on the Canadian Intellectual Property Office site.  Completing a very basic trademark word search is fairly simple.  Begin by selecting a search field.  There are several to choose from, but the following are commonly used:

• TM Lookup—Used to query trademarks, trademark descriptions, and foreign character translations.
• Application Number—Commonly used by applicants themselves to determine the status of the application
• Owner Name—Search by current owner, previous owner, or a combination of the two.
• Nice Classifications—Search to see if a specific trademark is already registered under one of the 34 classes of goods or 11 classes of services.
• Vienna Codes—Used to search figurative elements of a trademark, commonly found in logos.  This is a complex search method best left to experienced trademark attorneys.

After choosing a search field, simply type in the trademark you wish to search.  You will then be shown the results of your search, including the trademark name, status, Nice Classifications, and designs, if applicable.  It is important to note that the searches conducted on the Canadian trademark database may only reveal exact matches.  For example, if you search ‘Tony’s Subs,’ you will only receive search results containing those words.  You will not receive results for ‘Tony’s Sandwiches,’ which may be flagged by your trademark examiner as confusingly similar during the application process.  These discrepancies may cause delays and even potential rejection once your application is filed.

The Benefits of Working with an Experienced Trademark Attorney

Because the Canadian trademark database reveals only exact matches, it can be both challenging and time consuming to complete a comprehensive trademark search on your own. For this reason, it is highly recommended that you work with an experienced trademark attorney. Partnering with a professional ensures that you will be alerted to any possible trademark that may cause a likelihood of confusion. When you file your application with CIPO, you will have the peace of mind knowing that no similar trademark exists.

While searching the database for trademark word matches can be challenging, searching for matches to your logo or sound mark can be even more difficult. Trademark attorneys are experts at searching for these non-word trademarks as well. Rather than spending hours researching Vienna Codes to search for similar logos, rely on an experienced trademark attorney to complete the search for you. Instead of focusing on trademark searches, you can focus on growing your successful business.

If you plan to register your trademark in Canada, completing a trademark database search is an essential step in the process. Upon completion, you will know if you need to rework your mark due to a similar registered mark, or if you are free to move forward with the application process. While a basic search of the Canadian trademark database is fairly simple, your results may only reveal exact matches. Unfortunately, most trademark disputes do not arise from exact trademark matches, but rather similar matches. Because of this, it is best to work with an experienced trademark attorney, who will search not only for exact word matches, but also similar matches to your word, logo, or sound mark as well. Contact a trademark attorney today to begin conducting a comprehensive trademark search.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.