Startups, Make Sure Your Trademark is Available!

May 25th, 2017

You’ve finally decided on a name! But are you sure it’s available?

Our intellectual property specialists, Johanne Auger and Chloé de Lorimier, weigh in.

You’ve carefully chosen a name for your start-up business or for the products and services you are getting ready to launch. It elicits exactly what you had in mind, and you are proud of it. Obviously, you researched this name online to make sure no one else was already using it. Now, you’re ready to launch! But are you really?

Although searching the Internet to make sure the name isn’t being used already is recommended, the fact that you have not found anyone else who is using that exact name does not suffice. To avoid infringing on third-party rights, you also need to check whether the name you’ve chosen is available.

In fact, the name with wich you choose to identify your business, products, or services is a trademark, and it can only be rightfully used if it is not at risk of being confused with third-party trademarks (registered or not) and business names that are already being used in the same line of business.

How Can You Assess the Potential for Confusion? The Main Factors.

It is simply not sufficient that the exact name you chose isn’t being used, or is spelled differently than a registered name. There are other factors to be considered when assessing the potential for confusion between the name you’ve chosen and existing business names or trademarks, including similarities in terms of visuals, phonetics, and suggested ideas, in addition to the activities, products, and services targeted by the business and any related businesses.

For instance, the MILLENIUM brand (fictitious example) can co-exist as both a door and window repair, as well as an accounting service, because these are completely different sectors. However, MILLENIUM, as an accounting service, would not be able to co-exist alongside MILEÜM, NULLEMIUN or MILLENAIRE for cloud computing services.

Check the Availability of the Name as Soon as Possible

It is important to make sure your name is available, ideally before you start to use it, but even after you’ve started using it if you neglected to do so earlier.

In fact, the more widespread a name’s use is, the more third parties are likely to hear of your existence and object to your use of the name, as it might infringe on their rights. Accordingly, these parties could initiate legal proceedings to force you to stop using the name, and they could also claim any damages you’ve caused or the profits you’ve generated.

Performing an availability search costs very little, especially compared to the costs and problems involved in having to change your name. Formal legal demands, legal proceedings, removal of all material in circulation, making changes to your website, choosing and rolling out a replacement name - not to mention the stress, time, effort, and needless expense associated with the entire process - these are the last things your start-up business needs while you’re trying to carve out your space in the market.

What Are Your Target Areas?

It is therefore paramount for any start-up, regardless of its size or line of business, to verify the availability of its trademark sooner rather than later. The start-up must act in accordance with its marketing strategy, both in terms of products and services to be offered, and in terms of the geographic area of its target market.

In fact, the rights to a business name or trademark are territorial in scope, that is to say, dépendent on country or jurisdiction (such as the European Union, which currently includes twenty-eight (28) member states). Indeed, your thought process and the steps you take to verify the availability of your trademark must necessarily consider your marketing plans over the short- and long-term (3 to 5 years) for the geographic markets where you expect to operate, because a name that’s available for use in Canada will not necessarily be available in the United States, the European Union, Mexico, China, or Russia. Determining the availability of your trademark abroad must, among other things, take into account the fact that each country or jurisdiction has different legal rules. For example, certain countries will grant trademark rights to the first user, while others will grant them to the first applicant.

It is also important to distinguish the act of registering a business name with the Quebec Enterprise Registrar from the concept of using and registering a trademark for the same name. Unfortunately, a business name registered with and authorized by the Quebec Enterprise Registrar provides no guarantee that you will be able to use the same name as a trademark. In fact, the legal effects and principles applicable in this situation are distinct and the searches performed by the Enterprise Registrar are cursory. Accordingly, a corporate or business name that has been registered in the Quebec Enterprise Register does not give you carte blanche to use that name in Canada in connection with all activities, products, and services the business intends to deal in.

Ultimately, you must exercise great caution. Among other things, this means verifying and making sure that the name you are hoping to use, and potentially register for your business, products or services, is available as a trademark.

Your Domain Name Guarantees Nothing!

Contrary to popular belief, registering a domain name for your business provides no right to the name as such. Although a domain name might be available to be registered, that does not mean that the name in question can be used freely in the marketplace without infringing on third-party rights.

Conclusion

In short, your start-up must verify the availability of its name and trademark as soon as possible. Performing this due diligence will spare you tremendous costs and inconveniences of all kinds. This verification must consider a range of factors that, once covered, will provide you with the level of comfort required to roll out the name you’ve chosen. It will also allow you to obtain the protection you want (and should have!) in accordance with your marketing and expansion plans.

Please do not hesitate to contact our team of trademark specialists who already assist a large number of start-up businesses across a wide range of business sectors. They will be more than happy to help you make sure your trademark is available to be used, and eventually registered.

Johanne Auger and Chloé de Lorimier