Why you must do these searches before your register your Australian trademark
Why searching for your trademark can be key to your business success
You’ve spent hours dreaming about and planning your business. From a new product or service to a rebranded logo. The time, money and effort invested into this have been considerable.
But before you go ahead and launch, there’s one more thing you must do – conduct a trademark search. Ideally, trademark searches should be conducted before registering a new business/company name, domain name or the like.
To register a trademark in Australia your trademark must be able to distinguish your product or service from the similar goods or services of other traders.
If your trademark is not initially viewed as capable of this distinction but it’s been used and has developed a reputation it may still be possible to register the mark on the basis of your ‘evidence of use’ over that time.
Conducting a trademark search can seem cumbersome and complicated. But it’s doesn’t have to be.
A trademark search is important to your business.
It can identify any potential liabilities and risks arising from similar or identical brands that are already registered or used by others.
This search will also determine whether it is distinctive enough to be distinguished from other competing businesses in your market. Completing a trademark search gives you knowledge about how likely it will be that you will be granted exclusive rights to use your brand in connection with your services or products.
A detailed trademark search can also alleviate the risk of infringing another business’s trademark law rights.
The difference between the Australian Business Register and the Trademarks Register
The Australian Business and Company Register and the Trademarks Register are not the same register. They do not reflect the same registrations.
Business owners can register their name as a trademark and not as an Australian business or company name and vice versa.
If the name you want is available on the Australian Business Register, you must also check the Trademarks Register. We suggest that business owners need to search the trademarks register as a priority.
A registered trademark gives the owner an exclusive right to use a name, logo or other ‘sign’ for nominated goods and services. They also have the power to stop another person from using their name (or a confusingly similar name) for those sorts of goods and services.
A registered business name will not necessarily give its owner the right to stop others from using the same or similar name in relation to their business.
How to ensure your trademark is a trademark
In Australia, the definition of a trademark is a sign that one trader uses to distinguish their goods and/or services from similar goods or services of other traders. A sign, is considered to be a:
- Aspect of packaging, or
- A combination of the above.
If you are considering registering a trademark by yourself, it’s important to register the trademark that gives your brand and business the highest level of protection possible.
Obtaining advice from a trademark law specialist can help ensure that in the future, the trademark you registered continues to protect your brand and your business in the way that you need.
Why performing extra searches for your trademark is important
Registering your business name and domain name does not give you automatic rights to the other. We suggest you check the availability of both and if available register them as soon as possible. Otherwise, someone else may take them. In our experience, if another person registers your domain name, it can be a lengthy and costly process to obtain it from them.
We suggest you check the trademarks register to see whether your desired mark is available. This is only the first place to search.
Also use the Internet to conduct common law searches, as Australian common law does provide some protection for unregistered trademarks (although trademark registration can often be the greater or stronger protection for a brand).
Google searches can unearth businesses that use brands and names that are similar to yours but have not registered a trademark. They could potentially hinder your trademark process and prevent you from gaining truly exclusive rights to a name.
We also suggest you search on social media sites such as LinkedIn, Twitter, Facebook and YouTube to ensure your desired name (or a suitable variation thereof) is available to use as a profile or account name.
Registering a trademark in Australia does not give you worldwide trademark rights
Registering a trademark in Australia will not give you the right to use it exclusively worldwide. If you want protection in a country other than Australia, you will need to file an application in that country or file an international trademark application. You can read more about international trademark facts here.
It’s also important to know that you won’t necessarily be able to enforce your registered trade mark rights against a person or business that is operating in an industry that is very different to the sorts of goods and services your trademark covers
The best way to register your trademark in Australia
Quick Off the Mark’s owners (Mark My Words Trademark Services) have helped register thousands of trademarks in Australia. We suggest you use the following process as an easy guide to register your trademark.
1 Determining the availability of a mark
This is the most important reason to conduct a trademark search. You will be determining if your proposed mark is available to use and register. If you’ve got an existing registered trademark this step will also help you determine if you can expand your mark into further categories of product or service. (Owning a trademark already does not guarantee your trademark is available to register for different products or services to those of your original registration).
One of the tests of mark availability is whether the proposed trademark is likely to cause confusion with a mark that has been filed and published on the trademarks register earlier than yours.
Should confusion be found as likely, use of your proposed mark could also be deemed as infringing the pre-existing mark and in that case it may be that you cannot use that brand in the marketplace.. If the mark is not likely to infringe it is encouraged that you register your trademark to ensure your rights. By determining the availability of your proposed trademark you can decide if your mark is protectable and whether it is registrable.
2 Protectable & Registrable
If your proposed mark is distinctive, then it will be normally be protectable as a registered trademark. However, sometimes a thorough trademark search will uncover that the wording of your mark will be considered generic or descriptive should a trademark application be filed.
This will determine the potential for the registration of your mark. If your mark is found incapable of distinguishing your goods/services in some cases it is impossible to register that generic trademark.
In other cases, the mark may be found to have limited ability to distinguish the goods/services but you may be in a position to demonstrate, through evidence of use, that the mark has (or will) acquire the level of distinctiveness to be approved for trademark registration.
While it is not obligatory that a trademark be registered to have legal protection, it’s important to understand the benefits of having a registered trademark. A registered trademark carries with it a statutory right nationwide, effective as at the date the application is filed. A valid common law trademark only has rights that begin upon the use of the mark and generally requires a substantial reputation attached to the mark in order to enforce those rights. There is no requirement of reputation when enforcing registered trademark rights and you do not necessarily need to have commenced use of your brand to enjoy those registered trademark rights.
Further, registration of a trademark can prevent the headache and cost of learning another person has registered a trademark similar to yours after you commenced use.
Deregistering another person’s trademark in the future is a challenging and costly exercise – certainly registering your trademark following a thorough trademark search is the less costly avenue for protecting your brand and certainly less costly that having to rebrand in the event your use without registration infringes an existing trademark.
We can help you search for your trademark – for free. Find out more here.
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
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 17 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.