Trademark clearance and pre-filing searches
Clearance work is where the exam separates candidates who can run a database query from those who can give a defensible risk opinion. Questions test search design, source coverage, and the translation of results into a section 6(5) analysis.
What to search
- CIPO's Canadian Trademarks Database: word marks, phonetic equivalents, Vienna figurative codes, Nice classes, owner names, and status (pending, advertised, registered, expunged).
- Common-law sources: corporate and NUANS registries, trade directories, app stores, domain names, social media, industry publications.
- Bars that are not "trademarks" in the search sense: section 9 prohibited marks and official marks of public authorities, section 11 geographical indications, section 10.1 plant varieties.
- Blind spots: applications filed but not yet advertised cannot be found and can still block under s. 16.
Reading results
Assess confusion using s. 6(5): inherent distinctiveness and extent known, length of use, nature of the goods/services and trade, degree of resemblance. Apply the test - first impression of the casual consumer somewhat in a hurry, with imperfect recollection - then convert the analysis into a risk rating and a recommendation: proceed, modify, seek coexistence, or abandon.
Worked example
A client wants NORTHPEAK for backpacks (class 18). The search finds NORTH PEAK registered for clothing (class 25) and a pending NORTHPEAKS for tents (class 22). Resemblance in sound and idea is high; backpacks and clothing flow through the same retail channels to the same consumers; the registered mark has modest inherent distinctiveness but may be established. Conclusion: significant risk under s. 12(1)(d). Recommend adding a distinctive design element, narrowing the goods, or opening a coexistence discussion - remembering that a consent letter does not bind the Registrar, who gives such letters limited weight.
Traps that cost marks
- Delivering a search printout as a "clearance opinion" with no s. 6(5) reasoning.
- Ignoring prior users: an unregistered earlier user can oppose under s. 16.
- Overlooking section 9 marks, which are not limited by goods or services.