Trade Mark Searches
As previously mentioned free trade mark searches are available online using the ATMOSS trade mark database and other official databases. Research should be performed not only with a view to selecting a distinctive name or brand with consumer appeal, but also to ensure there are no registered or unregistered marks similar to the trade mark you are contemplating using. A comprehensive search should be undertaken, at a minimum, of direct hits obtained via a search of the IP Australia online trade marks database and the ASIC database of company and business names.
It is recommended that a more comprehensive search of international databases, such as the USPTO database TESS (Trademarks Electronic Search System) and European Communities trade mark database is also undertaken. It is a good idea to search countries databases in the EU individually.
How exhaustively you search is a matter for your discretion, including how you formulate your search and what IP databases and other resources you consult in the screening process. Ideally a comprehensive trade mark availability search should be conducted to obtain the best intelligence.
The beauty of registered databases is that an applicant can conduct online searches for image or graphical features/design elements, business, company and surnames using similar tools, the operation of which may vary slightly from country to country.
Common law searches to detect unregistered trade marks extend beyond Government national and international databases. Applicants often search nationwide telephone directories, the internet and domain names using InterNIC or Thompson & Thompson’s SAEGIS domain name database for a small fee. Foreign language dictionaries, scientific and technical dictionaries, Electoral Rolls and proprietary trade indexes are other sources of information when searching for availability.
An infringement search entails an inspection of current marks that are identical to the proposed mark, synonyms or are of similar phonetic or visual appearance or have similar meaning, conducted across a range of classes. You may also wish to search for such variations of the proposed mark that may cause confusion or deception in the market place.
Industry specific publications, trade journals, dictionaries including geographic dictionaries are also valuable resources. The global nature of the Internet and the increasing prevalence of cross-border trade underscores the importance of conducting searches in major industrialised countries.
Considerable expenses may be incurred by you in developing stationary, business cards, and branding your business, only to discover that you are in violation of an unregistered trade mark, not to mention exposed to potential trade mark infringement proceedings.
Some applicants choose to use the services of professional search companies or Trade Mark Attorneys for the purpose of either conducting the searches and/or interpreting the results.
Systematic searches for trade marks being used anywhere in the world are useful in locating uses of the proposed trade mark. There are proprietary fee based services available with search engines that use analytical tools providing greater opportunities for searching.
You may consider searching for homonyms, synonyms, phonetic equivalents, acronyms and mis-spellings . Whilst this may seem expensive and time consuming, it should be balanced against the potential considerable cost savings in the long term.
Your search strategy depends on many variables such as the size of your business, your budget, your future goals and how you plan to use your mark. However, bear in mind that the advent of the internet has brought into conflict businesses and trade mark owners operating in different geographical territories which were formerly unaware of one another’s existence.
The frequency of these conflicts are increasing at a massive rate. Well resourced companies with strong brands have been known to employ aggressive strategies to protect their trade mark, launching litigation in several countries against a business, even where it only operates only in a local market.
Screening for potentially conflicting trade marks is far more than a mechanical task of typing in words or phrases and generating search results, and requires the application of judgement, experience and access to comprehensive and analytical searches with powerful proprietary tools.
It is important to bear in mind that registration under the Trade Marks Act 1995 (Cth) in Australia, there is a presumption of registrability only. There is no guarantee that having obtained your certificate of registration you will be invulnerable to having your trade mark challenged.
The Act provides for the voluntary recording of claims to interests in respect of trade marks, such as mortgages, security interests and licences. The national Personal Property Security Register (PPS) is now the only place to register claimed security interests, such as mortgages in trade marks
Whatever search strategy you select your search should aim to identify registered, pending, removed and lapsed marks that may be cited by the Trade Marks Office during examination if an application is made for the mark being searched, result in infringement proceedings, an action for passing off or a breach of the Consumer and Competition Act 2010 (Cth) if used.
Disclaimer: This site is intended to operate purely as an informational resource, a general overview of intellectual property and other related legal issues arising online. It isn’t a substitute for professional legal advice from a lawyer certified to provide legal advice in your jurisdiction. Neither is it intended to create an attorney-client relationship. The law varies in each jurisdiction and we do not warrant the accuracy, completeness or usefulness of any material you read here.