If you’re in the process of starting a business or launching a product, registering your trade mark to protect your interests should be at the top of your to-do list. But where do you begin registering a trade mark and how do you ensure it doesn’t already belong to someone else?
In this guide, we’ll walk you through the basics of how to perform an international or Australian trade mark search, what to look out for and where to seek professional help if needed.
Why Register A Trademark?
We understand that the admin involved with performing an Australian trade mark search or an international trade mark search can seem overwhelming. However, it is vital that you take the time to properly search and register your trade mark.
Failure to register your trade mark puts your business, product or service at risk of infringement. This means, anyone can utilise your good name for their own ends and you’ll have no real legal means for stopping them. When you own a trade mark, copycats can be more easily stopped as you have indisputable proof that you own that trade mark.
Without this protection, your reputation can be irreversibly damaged and your business’s bottom line will undoubtedly suffer as a result.
The Importance Of A Trademark Search
Before you register your trade mark you must perform a trade mark search. The reason you must search trade marks first is to ensure that you yourself are not engaging in infringing behaviour.
If you search trade mark characteristics properly before pursuing registration you stand to avoid complications later and make the process much quicker. A proper search also ensures you don’t waste money by filing an application that would not be accepted.
It is only through performing a meticulous search that you can avoid conflicts such as:
- Infringement of existing trade marks or breaches of Intellectual Property Law which are costly and time consuming;
- Issues with availability or duplication; and
- Being too generic or failing to meet trade mark registration
How To Perform A Trademarks Search
The process for performing a trade mark search will vary depending on whether you are doing a trade mark search in Australia or an international trade mark search.
Trademark Search Australia
In Australia, you search for your trade mark via the Australia Trademarks Search Tool. Known colloquially as ATMOSS (Australian Trade Marks Online Search System) this system allows you to search for a specific business name, single word or image.
This trade mark Australia search tool then compares this search criterion against an extensive trade mark database, checking whether there is already any registered use, pending registration application, removals, refused applications and those that have never been registered.
Helpfully, this can then provide guidance not only about whether you are free to use this trade mark but whether it is considered acceptable. Use of ATMOSS and the resulting information, however, does not guarantee refusal or approval of the trade mark.
To ensure you are properly searching, it is recommended to:
Try different spellings of your trade mark. For instance, cookie could be spelt kookie, kooky, cooky or any number of other ways. While different spelling makes them different, they could still be viewed as being deceptively similar when viewed in context.
Search for various forms of the word. Consider the word barking, this could also be contracted to its origin work of bark or used in another tense such as barked. We suggest using the origin word in a search so that all variations appear.
Be descriptive. For example, don’t only search for flowers, look up specific flower names, this ensures you do not miss any creative use or interpretation by another entity.
Check the trade mark for both goods and services . We will go over this in detail further on, but always check your intended trade mark across both goods and services also. There are many classifications of trade marks and if you do not search all classes properly you could see yourself missing important details.
Keep in mind that registering a trade mark in Australia takes at least seven months and costs a minimum of $250 in govenment fees. This is yet another reason why you should perform due diligence and undertake an IP Australia trade mark search before submitting your application. Not doing so can cost you valuable time and money.
Trademark Search International
International trade mark searches are a little more complex; there are country-specific databases to wade through and variances in IP law to navigate. Thankfully, the World Intellectual Property Organisation (WIPO) makes it a little easier by delivering a global database for you to review.
You can search their global database easily online and review existing registered trade marks, applications for trade marks, brands appellations of origin, emblems and international nonproprietary names.
This vast database covers 52,710,430 records from 73 data sources for an in-depth search. WIPO’s Madrid Monitor also gives access to information about international applications for trade mark registration that have been received and from where these applications originate.
For more specific information on country-to-country trade mark registrations, you may also elect to perform additional searches in country-specific databases. This is helpful if you plan to market your goods or services within that location and can ensure you avoid infringing on another’s IP rights in that country.
These databases include but are not limited to:
- USA via the United States Patent and Trademark Office (USPTO)’s Trademark Electronic Search System;
- EU via the European Union Intellectual Property Office (EUIPO)’s eSearch Plus;
- UK via the United Kingdom Intellectual Property Office (IPO)’s Trademark Search;
- Canada via the Canadian Intellectual Property Office (CIPO)’s Canadian Trademarks Database;
- China via the Chinese Trademark Office’s trade mark search;
- Singapore via the IPOS Digital Hub offers a trade mark search tool; and
- New Zealand via their dedicated trade marks register (IPONZ).
Classes Of Trademark
Under IP law there are many classes of trade marks, in Australia, there are 45 classes which are then divided into 34 goods and 11 services. This classification system allows for similar trade marks to co-exist so long as their relevant classes of goods or services are completely separate.
As part of your search for registered trade marks, you will need to specify your class. Should you find a similar trade mark in an unrelated class, you may still be able to register it without issue.
Classes for international trade marks can vary, so be sure to check these thoroughly and the applicable IP laws for the country in which the competing trade mark is registered in to avoid issues.
Where To Find Help
If you’re feeling overwhelmed by the process of performing a trade mark search IP Australia, we understand. At IP Guardian, we have years of experience as patent and trade mark attorneys and understand how convoluted and nuanced the process can be.
We not only handle the entire process for performing an IP Australia trade mark search but the registration and defence of your trade mark also. We help you properly prepare your trade mark for optimal protection and less potential for issues caused by infringement.
With our support, you can have the utmost confidence that your trade mark has passed all the appropriate checks and is legally registered to you as the owner.
Offering cost-effective, fixed-price fees on several key services related to trade marks, IP Guardian simplifies and streamlines the process of searching for trade marks and securing them in your name.
To speak with one of our highly skilled patent and trade mark attorneys, call our office today at (02) 9071 0130.
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