When selecting a new business name or product name, it is important to ensure that the name you’re wanting to use is available and not likely to infringe upon other traders’ existing legal rights. A trade mark clearance search is the best way to determine this. This article will discuss what sort of trade mark clearance searches you should be carrying out, and what you should be looking for.
Register searches
A good place to start is with searches of the Australian Trade Mark Search online register, which is maintained by IP Australia. This online register lets you search for Australian trade mark applications and registrations. If you are planning to use your new trade mark overseas as well, then you should also carry out searches of the trade mark registers in all of your key overseas markets.
Searches of the online register should first of all identify if there are any existing trade mark applications or registrations for trade marks that are the same as your preferred trade mark (in relation to similar products or services). However, the searches shouldn’t stop there. An earlier trade mark can conflict with yours not only if it is the same as, but also if it is similar to, your preferred trade mark. This can include variations of the trade mark in terms of spelling, the inclusion of additional words, trade marks which look or sound similar or even trade marks which have a similar idea.
How similar is too similar?
The specific tests for what constitutes a conflicting trade mark differ from country to country. However, in Australia the applicable test is whether the two trade marks are ‘substantially identical’ (higher threshold) or ‘deceptively similar’ (lower threshold). The essence of the test for ‘deceptively similar’ is whether the trade marks are likely to be confused based on a reasonable consumer’s imperfect recollection, and importantly this is not based on a side-by-side comparison of the trade marks. Below are some examples of trade marks that have been found to be too similar by the Australian Trade Marks Office or the Courts in Australia:
| First Trade Mark | Second Trade Mark | Goods and Services |
| REVOLVO | VOLVO | motor vehicle bearings |
| SOUL BOARDWALK | SOUL | property services |
| computer software | ||
| EMOJI | computer services and online network services | |
| AQUA DENTAL | dental services | |
| PINQ | cosmetics | |
| skincare products | ||
| NUTRA LIFE | dietary supplements | |
| skin preparation products | ||
| SCREENTECH | electronic displays |
General internet searches
Not all businesses will have their trade marks registered with IP Australia. However, they may still have common law rights in their unregistered trade marks, which can potentially cause problems if you adopt a trade mark which is too similar. As a result, in addition to searches of the online register, you should also carry out general internet searches to see whether anyone is using a trade mark in Australia which is ‘substantially identical’ or ‘deceptively similar’ to your preferred trade mark.
What can happen if my trade mark is too similar?
There are a number of risks to using a trade mark which is too similar to an existing trade mark, including:
- IP Australia might raise the existing trade mark as a citation against your trade mark application at the examination stage;
- If your trade mark application passes the examination stage, the owner of the existing trade mark might oppose the registration of your trade mark (see our article on What is a Trade Mark Notice of Intention to Oppose and How Do I Respond?); and
- If your trade mark is registered, it might be vulnerable to removal (which will make it difficult to enforce against other traders); and
- The owner of the existing trade mark might send you a letter of demand (or even commence legal proceedings) alleging that you have infringed their legal rights.
Key takeaways
A great trade mark for your business or product can be a fantastic marketing tool. However, if your trade mark is too similar to an existing trade mark that someone else is already using, that can cause serious legal problems down the road. Therefore, it is important to carry out trade mark clearance searches as a first step. Having an experienced trade mark attorney or lawyer conduct these clearance searches is the best way to ensure that all relevant trade marks are considered and the appropriate tests of comparison are undertaken.
Actuate IP has a team of intellectual property experts who can assist with Trade Mark Searches, Filing & Prosecution. If you require assistance, you can contact our team on (03) 9098 0713 or info@actuateip.com.au and our friendly staff will make sure you are directed to the best person to assist you with your matter.
FAQs
What trade mark searches should I carry out?
You should carry out searches of the IP Australia Australian Trade Mark Search online register, as well as general internet searches. You should look for any trade marks are the same as, or similar to, your preferred trade mark (in relation to similar products or services).
How do I know if my trade mark is too similar to an existing trade mark?
In Australia, the test to be applied is whether the two trade marks are ‘substantially identical’ or ‘deceptively similar’. The essence of the test for ‘deceptively similar’ is whether the trade marks are likely to be confused based on a reasonable consumer’s imperfect recollection, and importantly this is not based on a side-by-side comparison of the trade marks.
