Tips for Filing for a Canadian Trademark
Are you considering applying for a trademark?
Before beginning the application process, it is important to determine whether there are any existing trademarks that your proposed trademark might be confused with. If the Registrar or the owner of an existing trademark allege that confusion exists, it will be up to you to prove that there is no reasonable likelihood of confusion within the meaning of section 6(2) of the Trade-marks Act.
Confusion can arise in a variety of circumstances. Sometimes the trademarks have a word in common. Sometimes the trademarks are spelt differently but sound the same. Sometimes the trademarks are completely different. And to make matters more…confusing…it’s also possible for two identical trademarks not to be confusing. The key is to consider all of the surrounding circumstances, including:
Is the customer base or market for the existing trademark the same as yours?
Do you sell the same product or provide the same service as the owner of the existing trademark?
Would a casual consumer be confused as to the source of the product or service?
Are the ideas suggested by the existing trademark the same as the ideas suggested by your proposed trademark?
Is the existing trademark famous?
If you answered yes to any of the above questions, your trademark application could be rejected by the Registrar or opposed by the owner of an existing trademark. If not, it is possible that your trademark application could be successful.
Confusion analysis can be head-scratching at best and downright infuriating at worst. If you’d like help navigating through the confusion conundrum, please contact us for a no-obligation consultation.
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