Got
your .com/.ca domain? Before proceeding with building a new brand,
smart entrepreneurs will conduct a thorough clearance search to determine what
limitations, if any, exist on the use of the key elements in their new brand
starting with their proposed trademarks.
The
main purpose of a clearance search is to determine whether a proposed trademark
is available for use. In addition, the search will also help determine whether
the owner of the proposed trademark is legally entitled to become the exclusive
user. A good clearance search will uncover similar trademarks already in use,
which could impose limits on the scope of the goods and services that the
proposed trademark can be used in association with. Entrepreneurs should
strongly consider selecting an alternative trademark if the results of the
clearance search indicate that a large number of similar trademarks are already
in use.
At a minimum, the clearance search should
include a search of the Canadian Trademark Registry, which is a database of
pending and registered trademarks, as well one or more searches for
‘unregistered trademarks’, which include any word, logo or slogan that has been
used in association with a product/good or service. Although trademark
registration provides greater legal protection, the owners of unregistered
trademarks also have legal rights which can impose limitations on the use of a
proposed trademark.
Entrepreneurs
who launch their new brand without a clearance search run the risk that they
could be held liable for trademark infringement if any of the key elements in
their new brand are found to be confusingly similar with any registered
trademarks owned by third parties. Liability for trademark infringement can be
found even if the entrepreneur had no prior knowledge of the third party
trademark(s). In addition to an award of compensatory damages, the owner of a
registered trademark is also entitled to a permanent injunction to prohibit any
further use of the infringing mark by the infringer.
Mandatory
re-branding is expensive (and embarrassing). A good clearance search to ensure
that each of key elements in a new brand will be available for use is a
fundamental step in building a successful brand. Securing the .com/.ca domain
is just the beginning.
If you have any further questions
regarding trademarks registration or protecting your business’ brand, feel
free to contact Darryl Bilodeau at MDK’s office today!