3 Mistakes to Avoid When Conducting a Free Trade Mark Search
Angus
Searching for registered trade marks online can be difficult if you are not familiar with the process. It is not enough to search for the exact word or image you are thinking of using in a trade mark application. These searches require talent and perseverance as search results vary widely based on small changes to your search parameters. This article will explore some of the key considerations to make before conducting a free trade mark search, to help you avoid mistakes.
Mistake #1: Not Using the Advanced Search Feature
You can find the free trade mark search tool on IP Australia’s website. It contains two search functions. The first search function is the general search option. This can be great for your initial search, as sometimes you will get lucky and find the result or information you are looking for using a general search. However, if you do not get a result from the general search, it is advised to use the advanced search function.
The advanced search function allows you to search for:
- full and partial words;
- full and partial images;
- phrases;
- classifications;
- lodgement dates;
- trade mark numbers;
- address for services; and
- various other identifiers.
Using the advanced search functions listed above is a great way to find similar trade marks, so that you can assess whether you will proceed with your application.
For example, if you search for ‘kickboxing’ you will return results relating directly to kickboxing. However, if you split up the words from ‘kickboxing’ to ‘kick’ and ‘boxing’ you will return more results. This is useful because there could be punctuation or a plural version of your desired trade mark that you would have missed if you had not expanded the search.
Mistake #2: Not Uploading an Image
You might be looking to trade mark an image, such as a logo. The free trade mark search function on the IP Australia website allows you to upload your image. It will then search your image against all of the images in the database and look for matches. If there is a match, it will let you know so you can review whether it is indeed a direct or very similar match. It is essential to recognise that a computer program matches the images, so there may be discrepancies between your image and the one IP Australia returns as a match. It is important to make a judgement call regarding the likeness of your image and the image that IP Australia suggests as a match.
If you use an image, you should refine the image results by classification. This way, you will not need to sift through thousands of results and will only need to review the images relevant to your potential trade mark image.
It is important to ensure you select the whole portion of the image you want to trade mark when you upload it. For example, if you upload an image of a cat with the words ‘clean catlike comfort’ and inadvertently crop out the words, the image search will not take your phrase into account and will return inaccurate results. This can then cause you trouble when you lodge a trade mark application, as you may believe your image is unique when it is not.
Mistake #3: Not Following the Reference Card
IP Australia has prepared a reference card that you can use to help refine your searches better. You can access it here.
The reference card sets out text and image search examples that are important to understand before using the free trade mark search function. For example, if you search for the words ‘Say Goodbye’ without putting quotation marks around the words, the search will return with results for ‘Say’ and ‘Goodbye’ in any order. The tips found in the reference card can also help you search for plurals of your words or phrases. These tips can help you determine if your trade mark is sufficiently unique.
Key Takeaways
Before deciding to conduct a free trade mark search, you should consider:
- reviewing the IP Australia reference card for searching tips;
- whether you need to upload an image as well as a word; and
- locating additional information of potentially similar trade marks so that you can better use the advanced search function.
If you have any questions about conducting a free trade mark search or applying for a trade mark in Australia, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.
Frequently Asked Questions
You can find the trade mark search on IP Australia’s website or here.
You can search for similar images on IP Australia by uploading an image in the trade mark search tool.
You can get the results for a trade mark search instantly.