How to conduct a trademark name search
To be registrable, your trademark must be original and distinctive and unlikely to be confused with pre-existing identical or similar registered trademarks covering similar goods or services. During the examination process, if the Trademark Office identifies a pre-existing mark that it believes conflicts with yours, it will raise an objection. So it’s a good idea to carry out some trademark searches before you submit your trademark application.
Essentially, you need to make sure that your intended trademark (or one confusingly similar to it) is not
already applied for as a trademark (registry search); or
in use by someone else in your industry (marketplace search)
Bear in mind that similar trademarks owned by different parties can coexist where the risk of consumer confusion is unlikely, for example where they are used to market different goods or services.
For example, a NATURE FRESH (word) trademark has been registered in Australia in class 11 for refrigerators, NATURES FRESH is registered for bread (as a word mark and a logo) by a separate company, and yet another enterprise has registered NATURE’S FRESH in word and logo forms for fresh meat.
These same words, NATURE and FRESH are also used and registered in combination with other words and images by numerous other companies covering a range of different classes, such as fruit juices, mushrooms and cleaning products.
How to do a trademark search
You have a number of various options for conducting trademark searches:
1. Search the Australian Trademark Office Yourself (free - registry search)
You can search on the Australian Trademark Office website for trademarks and pending trademark registrations which might be the identical or very similar to your mark. Be sure to also search for creative variations, such as misspellings or phonetic deviations that could be confused with your trademark. For example, if you were looking to trademark the words EASY CASH for financial loan and credit services, you might find there is already an existing trademark for EZI KASH which would be likely to be considered confusingly similar.
2. Pay for a Trademark Office Search ($ - registry search)
To be more meticulous, you can use a paid search service. The Australian Trademark Office, IP Australia, offers a paid search service called TM Headstart. Trademark examiners will quickly assess your trademark to determine whether it is likely to be registrable or if there are any problems with it before you submit your application. Using the TM Headstart service helps you identify any potential obstacles your trademark could face. The service does not guarantee registration but the examiners can clarify your options.
3. Engage a Lawyer ($$ - registry and marketplace search)
You can appoint a lawyer to carry out a trademark availability search for you - which typically involves searching both trademark registers and the relevant marketplace. These searches can be expensive, but if you’re launching a new product, rebranding or planning to use your trademark internationally, you might want to consider taking advice from a trademark professional.
4. Search the Internet (free - marketplace search)
Your competitors might also be using unregistered trademarks or ‘common law’ trademarks. When a business has been using a brand for a significant amount of time, they may build up a reputation or “unregistered” trademark rights in that brand. You will want to avoid being seen as an imitator and the risk of legal action being taken against you for using the same or a deceptively similar brand.
It’s advisable to search the internet (using Google for example) and country-specific business directories, like the Yellow Pages, for example, to check that no confusingly similar names or trademarks are already in use in your industry.
5. Research your Competitors (free - marketplace search)
Carry out a competitive analysis in your market. You should already be aware of the other contenders in your industry. Examine their trading names, logos and catchphrases to ensure that you don’t mimic them. You should clearly distinguish your products and services from theirs by choosing a unique word, logo and slogan.
By conducting a comprehensive trademark search you can reduce the risk of adopting a trademark that potentially conflicts with an existing one. While no search will guarantee that your proposed mark is available and registrable or that you will not incur liability, it’s worth investing time and effort to try to ensure you avoid problems down the line.
