4 Tips For Australian Businesses Searching For Canadian Trade Marks
Emily Young
A trade mark is a type of intellectual property (IP) that is beneficial for protecting your business’ brand. Not only will a trade mark give you exclusive rights to your branding and prevent others from using it, it can also help you stand out from your competitors, including internationally. As the 10th largest economy globally and a long-standing trading partner with Australia, it is important to be prepared before you do business in Canada. This article will take you through some tips for Australian businesses searching for Canadian trade marks.
1. Consider Canada’s Rules
Knowing some of Canada’s intellectual property laws is a great way to be prepared for your Canadian trade mark application search. Some of Canada’s intellectual property rules to consider are:
- like Australia, Canada has a ‘first to use’ rule. This means that the first person who can prove their use of a trade mark will likely have more rights than a person who files a trade mark application at a later date;
- Canada will look upon a registered trade mark much more favourably than an unregistered trade mark; and
- competitors can remove trade marks not used over a consecutive three year period from the trade mark register.
2. Know Where to Search
You need to know where to check to make sure you are not infringing on a Canadian businesses intellectual property.
Canada’s trade marks are available listed on the World Intellectual Property Organisation’s Global Brands Database. There, you can check if your chosen trade mark is available to be registered in Canada. Canada also has their own trade mark database called the Canadian Trademarks Database. See below for more information on how to use this database.
3. Language Matters
Canada has two official languages – French and English. This is important because your trade mark has to be eligible in both languages.
For example, if your business is called ‘small garden’, you will need to search for the words ‘small’, ’garden’, ‘petit’ and ‘jardin’ to avoid infringing on someone else’s trade mark.
Even if a trade mark does not sound the same in English and French, if the idea behind the trade mark is the same, it will be considered an infringement. The Canadian Trade Mark Data Base has a bilingual search option to help you with this.
4. Use the Canadian Trade Marks Database
The Canadian Trade Marks Database will only show you 5000 results at a time, based on relevance. Because of this, it is important to tailor your results for the best search possible. You can find some tips for conducting a trade mark search using the Canadian trade mark database below:
- try searching using ‘wildcards’ to enhance your search. For example, use an asterisk (*) to search for a sequence of characters (e.g. search medic* to search for medicine, medical etc.);
- refine your search by using the ‘search field’ option – this way, you can search by trade mark description, application number, goods associated with a trade mark and more;
- take advantage of the additional search options available – for example, you can search by category, status, action dates and more.
Key Takeaways
Your intellectual property is the most important asset of your business. If you plan on trading in Canada, it is essential that you:
- know where to do a trade mark search;
- look into Canada’s intellectual property law;
- consider your trade mark in both French and English; and
- get the most out of your search on the Canadian Trade Marks Database.
- If you need further legal assistance with trade marking your business in Canada, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
If you plan on trading in Canada, protecting your trade mark in Canada is a great way to protect your brand and prevent other businesses from making, using or selling your product. Registering your trade mark also helps prevent you from infringing on someone else’s trade mark.
You can register your trade mark in Canada by either applying directly to the Canadian Intellectual Property Office or applying through the World Intellectual Property Organisation (WIPO) using the Madrid Protocol. The Madrid Protocol is an international treaty that lets you apply for several international trade marks in one application.
Canadian trade mark registration is valid for 10 years from the filing date. After this, you will have to renew your trade mark and pay the applicable fee for your protection to continue.
The cost of registering your trade mark in Canada will depend on which method you use and the specifics of your application. For more information, consider seeking advice from our experienced intellectual property lawyers.