Trademarks allow consumers to distinguish between products and services originating from one business and those originating from another (“distinctiveness”), which make them a most valuable business asset. Unlike most other forms of IP rights, trademarks can potentially last indefinitely and their scope of protection can vary over time. A trademark owner must therefore be vigilant when a similar or identical trademark is used by a third party for similar or identical products or services. Such use may over time erode the distinctiveness of a trademark and ultimately lead to loss of rights.
One approach used by businesses in connection with trademark monitoring is the use of competitive intelligence. This involves the gathering of information relating to commercial activities in a given sphere of interest. However, such information often presents limitations — for example, competitive intelligence tends to be market-based and therefore only pertains to what is about to be done or is already under way, forcing businesses to be reactive rather than proactive when faced with a potential trademark issue. Competitive intelligence also rarely indicates whether a competitor or other third party has filed a trademark application for a problematic trademark or the full extent of the rights that may be obtained if such a trademark is registered, even if the trademark is not yet in use. This is particularly important since in many countries trademark registrations may be obtained without the need to show use of the applied-for trademark. In addition, having registered a trademark in a given country or jurisdiction does not guarantee that a competitor or other third party will not be allowed to register a trademark that is identical or similar to yours for identical or similar products or services.
To properly protect a trademark, it is therefore important to monitor not only the marketplace but also the Trademark Registers in relevant countries/jurisdictions to identify applications for potentially problematic trademarks. This is accomplished through periodically conducting trademark searches on various Trademarks Office databases. Such searches may aim to identify, for example:
- applications for trademarks that are identical or similar to a given trademark; or
- applications filed by a given party; for example, a competitor.
Trademark searches can be designed to consider numerous parameters, including:
- the required degree of similarity for a problematic trademark to be flagged by the search;
- the products or services of interest or the classes to which they belong (products and services are classified in accordance with an international classification system called the Nice Agreement, which is adhered to by most countries);
- the markets in which a business currently operates or plans to operate;
- the desired frequency of the searches;
- etc.
These parameters make trademark searching a very flexible and efficient tool that can be tailored to the trademark management strategy of a business, actual and prospective markets, risk tolerance, and budget. Searches can be done at the national, regional, multinational or even worldwide levels and at a relatively low cost.
Trademark searching allows for the identification of applications that have been published. If a trademark search reveals a potentially problematic pending application, a party with prior rights can oppose that application to prevent its registration. An opposition proceeding is generally less burdensome and far less costly than an invalidity proceeding against an issued registration. Moreover, in some jurisdictions — including Canada and the U.S. — trademark searches can monitor newly filed applications, allowing a party with prior rights to address the situation much earlier in the process and potentially even before use of the problematic trademark commences, which tends to favour settlement at a much lower cost.
Given their versatility, relatively low cost, and the major pitfalls they can help to avoid regarding both the scope of trademark rights and the costs of safeguarding them, trademark searches can be highly valuable tools for protecting a mark’s distinctiveness and should not be overlooked as an important part of a portfolio management strategy.
The preceding is intended as a timely update on Canadian intellectual property and technology law. The content is informational only and does not constitute legal or professional advice. To obtain such advice, please communicate with our offices directly.