Author: David Durand

Too many times we have encountered a situation in which businesses’ have adopted a business, product or service name[1] (or logo) and then realized ‘oh-oh’ we can’t use it, either self-realized or by way of receipt of cease & desist letter, and even if the services of creative agencies were used. This ‘oh-oh’ moment (or pain) can be largely attenuated by conducting periodic clearance (or knock-out) searches and FTOs.  Why periodic? Because it allows you to know the landscape at different points in time.

A list of misnomers and tips:

  1. Even if your “registered” or reserved the business name on a business register, it does not mean you have the right to use it, as you may still be infringing someone else’s IP – better catch it sooner than later;
  2. Start searching and filing trademarks for potential names well in advance (ie., 12-18 months) before using the name so as to ensure its availability and be in an advanced phase of examination within the trade-mark registration process;
  3. Document the results of your searches, as it will allow you to also conduct competitor landscape reviews, especially if the industry in which you are operating is adopting ‘confusingly’ similar terms;
  4. The confusion test applied by corporations Canada may not be applied in the same way as the Registrar of trademarks during trade-mark examination;
  5. Verify availability of the domain name(s) and corresponding country code top level domains (ccTLDs)[2], as well as reserve them (as applicable), without parking them. Please note that it is difficult to have a domain name transferred to you within a UDPR proceeding [3] and may have to pay a premium under a mutually negotiated Domain Name Transfer Agreement (“DNTA”) [4]

For more information please contact us. 

NOT LEGAL ADVICE.
Information made available on this website in any form is for information purposes only. It is not, and should not be taken as legal advice. Should you have any questions, please do not hesitate to contact us (provided that there is no conflict of interest).


[1] https://www.wipo.int/edocs/pubdocs/en/wipo_pub_900_1.pdf and HIBIC, S. POTURAK, M. Impact of a Brand on Consumer Decision-making Process, European Journal of Economic Studies, 2016, Vol.(17), Is. 3., available at: http://ejournal2.com/journals_n/1475087585.pdf

[2] https://www.wipo.int/amc/en/domains/cctld/

[3] https://www.icann.org/en/help/dndr/udrp; – https://cyber.harvard.edu/udrp/analysis.html; https://www.wipo.int/amc/en/domains/guide/; https://www.wipo.int/export/sites/www/amc/en/docs/wipointaudrp.pdf; https://www.law.berkeley.edu/files/bclt_AnnualReview_ICANN_Final.PDF;

[4] DNTA – https://ca.practicallaw.thomsonreuters.com/0-507-8588?transitionType=Default&contextData=(sc.Default)&firstPage=true&bhcp=1; https://dnattorney.com/an-annotated-domain-name-purchase-agreement-explaining-the-key-provisions/ – & process https://m.wikihow.com/Transfer-a-Domain; https://www.icann.org/resources/pages/transferring-your-domain-name-2017-10-10-en.

Close Menu