In today’s dynamic market landscape, safeguarding your brand is more important than ever. Registering a trademark in Australia can provide you with exclusive rights to your brand name, logo, or any other unique identifier associated with your products or services. Before applying for a trademark, conducting a thorough search is crucial to ensure your proposed mark is unique and doesn’t conflict with any existing trademarks.
What is a Trademark?
A trademark is any sign, symbol, term, phrase, logo, or combination of these that serves to identify and set one party’s products or services apart from those of other parties.
The Trademarks Act 1995 (Cth) governs trademarks in Australia and obtaining legal protection for a trademark through registration enables its owner to pursue legal action against any unauthorized use of the mark.
Why Conduct a Trademark Search?
Before filing a trademark application, it is essential to search for existing trademarks to avoid potential conflicts. A trademark search helps determine if your proposed mark is the same or deceptively similar to existing ones and this can be crucial because:
- Avoiding Rejection: If a trademark already exists that is identical or too similar to your proposed mark, your application may be rejected.
- Preventing Infringement: Using a trademark that is too similar to an existing one can lead to legal disputes and potential infringement claims.
- Saving Time and Money: Conducting a search beforehand can save you the cost and effort of filing an application that is likely to be opposed or rejected.
Tools for Searching Trademarks in Australia
To conduct a trademark search in Australia, you can use several tools provided by IP Australia and other databases:
- data-ps2id-offset=””>TM Checker: This is a preliminary tool offered by IP Australia to help applicants check their proposed trademark against existing registered or pending trademarks. It uses artificial intelligence (AI) to compare your mark with others and provides a quick overview of potential conflicts.
- data-ps2id-offset=””>Australian Trademark Search: This is the main resource for carrying out an exhaustive search of Australian trademarks that are currently in use. It gives information on the types of goods and services covered by registered and pending trademarks, as well as their specifics. The Australian Trademark Search offers two types of search options:
- Quick Search: This is a general search that allows you to look for trademark words, owner names, trademark numbers, and international registration numbers. You can also perform an image comparison search by uploading an image file.
- Advanced Search: This allows for a more detailed search using complex search queries. It is suitable for experienced users or those who require a more refined search.
Steps to Conduct a Trademark Search
- Search by Different Spellings- Consider alternative spellings or phonetic equivalents of your proposed trademark. For example, if your proposed trademark is “easy,” you should also search for variations like “ezy,” “eezy,” or “eezee.” This will help identify marks that sound similar or could be confused with your proposed mark.
- Search Various Forms of Words- Use the ‘part word’ option to cover plurals, suffixes, prefixes, and other variations. For example, a search for “bark” should also return results for “barks” and “barking.” It is essential to check for phonetic variations, such as “pelican” and “pelikan.”
- Break Up Elements for Separate Searches- If your proposed trademark includes both word and image components, search these elements separately. For example, if your trademark includes the word “tree” and an image of a tree, you should conduct separate searches for the word and the image.
- Use Image Terms for Trademark Searches- Trademarks that contain images can be searched using the Image Terms glossary. For example, a search for the term “TREE” as a part image will return results of trademarks including images of trees. If you are looking for specific images, like “TREE, PALM,” this search will be more focused and provide relevant results.
- Check Goods and Services- It’s possible for identical or similar trademarks to co-exist in different classes of goods and services. Therefore, you must search not only by the trademark itself but also by the classes of goods or services it covers, and this ensures that your trademark is unique within its specific category.
Key Considerations When Searching for a Trademark
- Cover All Bases: Ensure your search is broad enough to capture not just exact matches but also marks that are similar in sound, appearance, or meaning.
- Include Phonetic and Visual Variations: Trademarks are often compared based on phonetic or visual similarity, so it’s crucial to include these variations in your search.
- Review Search Results Carefully: Even if your search returns potential conflicts, it doesn’t always mean your trademark cannot be registered. It’s important to consult a trademark attorney to assess the results and provide guidance.
What Happens After the Search?
After completing a trademark search, you should have a better idea of whether your proposed trademark is likely to be accepted. If no identical or deceptively similar trademarks are found, you can proceed with filing your application. However, even if you find similar trademarks, you might still have grounds to register your mark, depending on factors like the distinctiveness of your mark and the classes of goods or services.
Filing a Trademark Application
If your search indicates that your trademark is unique, you can file an application with IP Australia. The application process involves:
- Submitting the Application: Fill out the application form online through IP Australia’s website, providing all necessary details about your trademark, including its appearance, associated goods or services, and relevant classes.
- Examination by IP Australia: Once your application is submitted, it undergoes examination to check for compliance with the Trademarks Act 1995 (Cth). IP Australia will check for distinctiveness, similarity to existing marks, and any statutory objections.
- Publication and Opposition: If the application passes the examination, it is published in the Australian Official Journal of Trademarks. Third parties have a specified period to oppose the registration if they believe it conflicts with their rights.
- Registration and Renewal: If no opposition is filed, or any opposition is resolved in your favor, your trademark will be registered, granting you exclusive rights for ten years, with the option to renew it indefinitely.
Conclusion
Conducting a thorough trademark search in Australia is a vital step in the registration process. It helps ensure that your proposed mark is unique and reduces the risk of rejection or legal disputes. By utilizing tools like TM Checker and Australian Trademark Search and following best practices for searching, you can safeguard your brand and move forward confidently with your trademark application.
Why Choose LexGeneris?
At LexGeneris, our patent and trademark attorneys have backgrounds in engineering, science, and law. We specialize in creating, registering, and protecting intellectual property across various technologies. Our expertise includes comprehensive services surrounding patents, trademarks, and designs. With offices in Perth, Australia, and Bangalore, India, we are well-equipped to meet with clients worldwide.
Contact Us
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
Together, we can safeguard and enhance the value of your innovations. Our dedicated team of Patent Attorney Australia, and Trademark Attorney Australia specialists can provide expert guidance and support, helping you navigate the complexities of intellectual property law in Australia, New Zealand, India, and beyond.
