March 30 2015 Importance of trademark clearance searches in brand development Smart & Biggar | Intellectual Property - Canada Intellectual Property A cautionary taleTools availableGet advice earlyDecide who is responsible for the searchCommentA recent news story involving an advertising campaign to promote tourism in the Yukon territory illustrates the importance of integrating experienced trademark counsel early in the brand development process.A cautionary taleIn February 2015 the Yukon government launched a new advertising campaign to promote tourism in the territory. The campaign was developed by an advertising agency and featured a television commercial with the slogan "We'll leave a light on for you", in reference to the famous Northern Lights. However, shortly after the commercial aired, viewers took to social media noting the similarity between the slogan and that used by the Motel 6 chain of hotels in its advertising: "We'll leave the light on for you." Only then did the agency discover that Motel 6 in fact owns a registered trademark in Canada for "We'll leave the light on for you"; consequently, the slogan in the Yukon tourism commercials was quickly changed to "Come to my Yukon – We'll light the way".A search of the Canadian Trademarks Office online database had been conducted for the phrases 'We'll leave a light on' and 'We'll leave a light on for you' – a seemingly reasonable step – and yielded no conflicting results. However, if a search is limited to identical or virtually identical marks, it is possible to miss relevant confusingly similar marks. For example, even marks that differ by as little as a single letter, or marks which are spelled differently but are otherwise identical in meaning or when sounded, will not necessarily be captured by such a search. In this case the difference was between the words 'a' and 'the' – "We'll leave a light on for you" versus "We'll leave the light on for you".Tools availableBy comparison, experienced trademark counsel have tools at their disposal which facilitate a much more sophisticated and comprehensive search of the Trademarks Office database, as well as the marketplace more generally, than is available on the Trademarks Office website. Two types of search are typically offered.The first is a search for potentially confusing marks on the Canadian Trademarks Office database. This search will identify trademark registrations, pending trademark applications and official marks (a special type of mark which could block third parties) that could pose an obstacle to the use and registration of the proposed trademark. This search is structured to identify much more than identical trademarks. A skilled searcher can identify pre-existing trademark registrations, applications and official marks which could be construed as confusing with the proposed trademark by reason of appearance, sound or idea conveyed.The second type of search is known as a 'common law' search. Since it is possible to acquire trademark rights in Canada simply through use of a trademark, without having applied to register the mark, unregistered rights may exist which will not be identified by the Canadian Trademarks Office database search. These unregistered rights owned by a third party can similarly pose an obstacle to the use and registration of the proposed trademark. The common law search typically involves a search of websites, domain names, Canadian corporate and trade name directories, as well as business directories for potentially confusing trademarks and trade names that might not appear on the Canadian Trademarks Office database, but could nevertheless pose an obstacle.Accordingly, companies considering adopting a new trademark in Canada may wish to ensure that they have an experienced trademark practitioner conduct a search of the Canadian Trademarks Office database. For new trademarks in which a significant investment will be made, such as the launch of a new product or major advertising campaign, companies may also wish to conduct a common law search in addition to a search of the Canadian Trademarks Office database to provide greater certainty that problems will not arise with the new mark.Get advice earlyThe Yukon example illustrates the benefit of incorporating a trademark clearance search early in the brand development process – and the potential cost of not doing so.While conducting a trademark clearance search involves an investment at the outset, a search of the records of the Canadian Trademarks Office and a legal opinion on the availability of the mark are typically reasonably inexpensive. When this is weighed against the potential cost of having to change a trademark after a product or campaign has already been launched in the marketplace, the benefit of clearing the mark early becomes clear. Depending on the industry, having to remove or modify a trademark after use has already commenced can involve recalling existing products, changing all product packaging and printed materials, as well as modifying or removing television, online and print advertising.The best practice is to involve trademark counsel early in the brand development process to clear potential trademark candidates that the business would like to use. This will ensure that creative energy is not wasted on designing a campaign around a trademark which is not available.Decide who is responsible for the searchFor companies working with external advertising agencies to develop a brand, it is important to establish at the outset which party is responsible for arranging the clearance search. A major pitfall to avoid is a situation where each party assumes that the other is responsible for the search and a significant investment is made in developing the brand without a search being conductedCommentA trademark clearance search is a good example of a relatively inexpensive step that brand owners can take to ensure that costly surprises are avoided when launching a new brand, and of the value that a skilled trademark practitioner can bring to the brand development process.For further information on this topic please contact Timothy Stevenson at Smart & Biggar/Fetherstonhaugh by telephone (+1 613 232 2486) or email ([email protected]). The Smart & Biggar/Fetherstonhaugh website can be accessed atwww.smart-biggar.ca.