Performing a trademark search Australia and New Zealand is not an easy thing to do. A comprehensive search requires both expertise and persistence. This is because your search must reveal not only identical marks, but also marks that are similar to your proposed mark.
In order to perform a thorough trademark search Australia, you need to contemplate how trademarks might look or sound in order to be similar to your own. For example, if your own trademark was ‘FLOWERPOTS’, you would need to search for marks such as ‘FLOURPOTS’, ‘FLOWER POTZ’ and other similar sounding marks or marks with similar spelling. Your mark must look and sound unique to be eligible for registration.
You can buy, sell, or license registered trademarks and so you will need to find out who owns a specific mark should you wish to:
- Obtain a license to use that mark
- Purchase a mark
- Loan to the owner of a valuable mark in order to take a mortgage over it
IP Australia’s Trademark Register has a record of all of the names of entities that own registered marks in Australia. However, if an entity has an unregistered interest owns or has interest in a mark, this will not appear on the register.
Trademark Search Australia Coverage
Even if another party has previously registered a mark that is identical or similar to your own proposed mark, you might still be able to use or register it. This is because each trademark only covers a specific range of goods and services. When you file for registration, you must include a description of the goods and services that you intend to associate with your mark. If your trademark search Australia results reveal trademarks that are similar to your own, take care to notice the description of goods and services covered by this mark.
If your proposed name is ‘FLOWERPOTS’ and your products are a range of hats, a registration for ‘FLOWERPOTS’ that covers a range of power tools only, should not cause you any issue.
Bear in mind that if a conflicting registration includes a broad description of products and services similar to your own description, this might not mean that you cannot use your proposed mark.
You can submit an application to have the register corrected and to have the broad description of products or services narrowed to include those actually supplied under the trademark. If that registered mark for ‘FLOWERPOTS’ covers trade tools but only supplies hammers, you can apply to correct the register by narrowing the description to ‘hammers’. By narrowing the description, you might be able to register ‘FLOWERPOTS’ as a trademark for drills.
Exceptions in Trademark Search Australia
When you are conducting a trademark search Australia, you will need to include a search to uncover marks that are currently in use but are not registered. Your search should include unregistered names and logos currently used in Australia within your relevant industry. This might include searches of:
- Business name registries
- Company name registries
- Internet domain name databases
- Internet search engines and directories
- Product catalogues
- Trade magazines
Conducting a search is difficult for beginners: you will need to be incredibly thorough in order to find every single conflicting mark. You should consider electing a trademark professional to conduct this comprehensive trademark search Australia on your behalf. A trademark professional can identify exactly where and what to search, and can better interpret the results to determine whether or not your mark is eligible for registration.
Searching for Lapsed Trademarks Australia
You can use the Trade Marks Register to access the records of all Australian registered trademarks. These records contain the current status of each mark. You can search for lapsed trademarks that you wish to use as your own. Trademark registration is considered lapsed if the trademark owner does not pay the required maintenance fees.
Search for Infringing Parties
Once you own a registered mark, you can continue to perform a trademark search Australia to seek out potential infringers. These searches will reveal instances of your mark being misused or replicated by other companies.
You can employ a professional ‘watching service’ to perform regular infringement searches on your behalf. Should another party attempt to register a mark or a logo that is similar to your own, the watching service will alert you to this attempt and allow you time to object that application.
Search for Web Addresses
You can perform a trademark search Australia to identify web addresses that are not currently in use. You should consider using an online address for your company to bolster your brand image and web presence. You will need to provide a professional with the following information:
- Your intended name or logo
- An alternative name or logo
- A list of variations that could be used
- A list of the products and services that you market under that name or logo
- Information on your current or future use of that name or logo
- Information on the type of search you intend: be that a register-only search or a full common law search
Searching for Company or Business Names
If you are a business that is just starting out and you need to think of a new company or business name, conduct a trademark search in Australia to determine whether your intended name is already in use. You can use the company and business names register as a starting point.
If you plan to use your new company or business name as your trading name, you can also search the Trade Marks Register. When you register your company or business name with ASIC (Australian Securities and Investments Commission), you do not have the automatic right to use that name as your trademark. The only way to officially secure your exclusive rights to your company or business name is to register that name as a trademark with IP Australia.
Avoid ‘Passing Off’ and Misleading or Deceptive Conduct
The purpose of performing a trademark search in Australia is to avoid infringing on the rights of other parties and to therefore protect your business against legal ramifications. Simply performing a trademark search will not protect you against this legal action, however. If you attempt to ‘pass off’ another mark or if you undertake any misleading or deceptive conduct, you cannot use the fact that you performed a search as a legal defence.
Contact a trademark professional for further information on trademark searches, infringement, deceptive conduct, or for other queries concerning intellectual property.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.