Once a potential trademark has been selected, the next step is to determine if it is available for use and/or registration, free from any possible adverse claims. This is done by conducting a search of the trademarks Register and, to better assess availability, investigating use of trademarks by parties who may not have registered their rights, and searching corporate and business names.
The purpose of conducting a search of the Register is not just to locate trademarks which are the same as the selected mark, but also to identify potentially confusing trademarks which could pose obstacles to the use and registration of the selected mark. Given the importance of such a search, it is essential that the search be conducted under the supervision of, and the results interpreted by, an experienced trademark lawyer or agent.
Not all proprietors seek to register their trademarks, and the risk of an objection by a prior user of a trade name or of an unregistered trademark is an important consideration to bear in mind when selecting a mark. Therefore, a review of available trade directories in the relevant industry, telephone directories, and other sources of business information (known collectively as a “common law search”) is often also done. Common law searching can be somewhat difficult and time-consuming because there is no comprehensive database available which may be searched.
The level of clearance searching required will depend on the situation. In some cases, a potential registrant will be content with a simple search of the records of the CIPO.
In other situations, especially where there will be a large investment in the launching of the new trademark, greater certainty is desired and so a full and thorough common law search will also be conducted. However, since comprehensive common law searching is difficult, there can be no guarantee that a trademark can be used without some risk of an adverse claim. The magnitude of such risk is a function of the scope and complexity of the search.
A trade name (including a corporate name) should also undergo a clearance procedure, similar to that for a trademark, prior to its use, especially if it is to be used to any significant extent in public.
