On January 8th, 2013 John McKeown spoke about trade mark search strategies in Canada in a webinar sponsored by the American Bar Association Section of Intellectual Property Law entitled Trademark Search Strategies in Europe, Latin America, Canada and the U.S. Following is the content about which he spoke:
Entitlement under Canadian Trade-Marks Act
The Act sets out rules for determining who is entitled to the registration of a mark for which an application has been filed. In general terms an applicant, who has filed an application that complies with the Actfor a mark that is registrable is entitled, subject to the completion of opposition proceedings, to secure a registration for a mark in association with the applied for wares or services, unless at the priority date, the mark was confusing with
(a) a trademark, whether registered or not, that has been previously used or made known in Canada by any other person;
(b) a trademark in respect of which an application for registration had been previously filed by any other person; or
(c) a trade name[1] that had been previously used by any other person
The determination is made as of a priority date, which varies depending on the basis on which the application is filed. Claims relating to entitlement are considered during examination, in opposition proceedings or proceedings seeking to expunge a registration.
When to Search
Once a potential trademark is selected searches should be conducted to determine whether or not it is available for use and whether it can be registered under the Act. It is extremely important to conduct these searches at as early a stage as possible and certainly prior to…
Click here to continue reading the short paper that was published.