What is a trade mark search?
IP Australia maintains a database of all trade mark applications and registrations in Australia. You cannot register the same or similar trade mark which is either ‘substantially identical to’ or ‘deceptively similar with’ a prior trade mark application or registration. These tests are governed by the Trade Marks Act 1995 and Australian trade mark case law decisions. A properly conducted trade mark search will identify any of these types of prior trade marks which might be an obstacle to your use and registration of a proposed new brand name. Once identified, a strategy can be developed to overcome any such issues.
Why should I conduct a trade mark search?
A trade mark clearance search enables your business to make informed decisions about trade mark eligibility prior to committing valuable resources to a chosen brand name. By conducting a clearance search it will assist to minimise the risk exposure to your business when investing time and money in a business or brand name which cannot be subsequently registered or must be changed as the result of a trade mark dispute. Trade mark clearance searches will:
- determine whether your trade mark is available for registration
- identify whether your trade mark will infringe the rights of other traders
- minimise objections being raised during the registration process
- minimise the risk of a trade mark dispute arising later.
What type of trade mark search do I need?
There are two trademark search options available:
- Trade marks register search.
- Full availability search.
Trade Marks Register Search
A search of the Australian Trade Marks Register will determine whether you can use and register your brand in Australia and whether any similar trade marks exist. The limitation of this search is that it will not identify any existing unregistered trade marks which may be in use in the Australian market place.
A search of the Australian Trade Marks Register will determine whether you can use and register your brand in Australia and whether any similar trade marks exist. The limitation of this search is that it will not identify any existing unregistered trade marks which may be in use in the Australian market place.
Full Availability Search
Brand rights can be developed through market place use (even if they are not registered), so the full availability search includes structured searches of other available databases in addition to the Australian Trade Marks Register. This comprehensive search identifies and assesses any existing use of your proposed brand, and is recommended as the best way to fully protect your company against potential trade mark disputes.
Can I conduct a trade mark search myself?
Trade mark searches require an in-depth understanding of trade mark legislation. While conducting your own search is a good starting point, a comprehensive search should ultimately be conducted by an experienced trade mark attorney. A particularly problematic area is trade marks which are similar but not necessarily identical. In such cases, a detailed understanding of trade mark law is critical in protecting your business from potential trade mark disputes. When Actuate IP conducts a trade mark search, we provide you with a search report as well as advice outlining short-term and long-term strategies appropriate to secure the brand protection your company requires. Our expert, comprehensive advice clearly presents the commercial and legal risks and considerations you need to be aware of.
HOW CAN ACTUATE IP ASSIST?
Actuate IP’s qualified trade mark attorneys provide an expert and tailored approach to assisting with the implementation of trade mark strategies, clearance search and trade mark protection for businesses. We work with a close network of overseas trade mark attorneys in all key jurisdictions meaning we can assist you with any international trade mark protection in an efficient way with a clear focus on achieving the right outcome.