- An Australian Trade Mark Search is a evaluation of a variety of different sources of information, including trademark databases and common law resources.
- A trademark search has the intention of deciding whether a mark is available for use without infringement on the rights of third parties; and protection by registration.
- By ensuring that your mark does not infringe on the rights of other parties, you are reducing your risk of those parties challenging your use or issuing a lawsuit.
- A trade mark search can also be used to determine whether your proposed mark is ‘strong’ or ‘weak’, and which trade marks are owned by other companies.
- While your mark might be registrable, it might also qualify as a weak mark due to the popularity of similar marks within the market.
- Bear in mind that the more unique your mark is, the more distinguishable and defendable it will be.
An Australian trade mark search also ensures that your mark is eligible for registration by assessing whether there are previous applications or granted registrations that might result in your own application being blocked. Your search can also uncover trends operating within the market, resulting in particular words, symbols, or other marks that will not be eligible for registration. Essentially, a trade mark search will ensure that you avoid unnecessary expenditure; reduce your risk of incurring legal action; and assist you in drafting your application.
How to Conduct an Australian Trade Mark Search
An Australian trade mark search generally begins with a quick review of all trademarks currently recorded in Australian databases. This initial search is used to uncover marks that are visually, conceptually, or phonetically similar or identical to your proposed mark. You cannot successfully register a mark that is the same as, or confusingly similar to, another registered mark.
This initial search is designed to reveal any conflicting marks: should you find marks that conflict with your own, you should redesign your mark before you attempt to further your registration attempts. If your initial search does not yield any conflicting results, you will need to proceed to a comprehensive search of common law resources. Trade marks protected under common law are not officially registered, but the creators of these marks might still have a case against you if they can prove extended and consistent use. Your comprehensive search should include all commercial and marketplace resources, including:
- Business or trade name databases;
- Trade directory databases;
- Domain name register searches;
- The Internet;
- Telephone directories;
- Financial status checks; and
- Discreet market investigations
Essentially, your Australian trade mark search will need to be conducted on a number of different levels. Generally, the more comprehensive the search, the more expensive it is. At Quick off the Mark, we can offer you both initial and comprehensive searches at no cost.
Australian Trade Mark Search Factors to Consider
There are a number of factors that you should consider during your trade mark search:
- The nature of your mark. Is your mark a logo, graphic, sound, image, scent, or some combination of these?
- The meaning of your mark. Does your mark translate badly within certain dialects or cultures?
- Acronyms. What does your trade mark stand for?
- Trade mark uses. How will your mark be used?
- Classification. Which goods and services will your register under your trade mark?
- Deadline. Will the scope of your search affect your deadlines? Will you need to conduct follow-up investigations?
Australian Trade Mark Registrability
There are a number of criteria that your mark must fill before it can be eligible for registration. These criteria include:
- Your mark does not conflict with other marks registered to the same goods and services
- Your mark does not cause consumer confusion due to its similarity to another mark
- Your mark is not merely ‘descriptive’ i.e. it does not merely name the goods and services registered to it
- Your mark is not a generic word
- Your mark is distinctive
- Your mark is not offensive or scandalous
Dealing with Adverse Australian Trade Mark Search Results
Should you uncover conflicting marks during your Australian trade mark search, you should redesign your own mark before going ahead with registration. The use of an identical or confusingly similar mark can result in legal action being taken against you. Similarly, attempting to register a previously registered mark, or a mark filed by your opposition, might result in the prevention against registration of that mark. You may simply have to adopt a different mark to the one that you intended. Before you do so, however, you can investigate whether any prior marks blocking your own are available for cancellation due to lack of use.
What Can You Expect?
Trade mark registration can be complicated. You may need to adopt an alternative mark in order to achieve registration. You can speak with a trade mark professional in order to gain assistance in choosing a new mark. A trade mark professional can also provide you with clearance of your mark to ensure that your strategic and commercial goals are met.