Five Tips For Conducting a Trade Mark Search in Australia
Emily Young
Registering a trade mark is a great way to build your business and protect your brand. However, it is important that you research the market to ensure that your trade mark is unique. A trade mark search is essential to the success of your trade mark application. A thorough search will do more than help you determine whether your desired trade mark is available – it will also help you to minimise the chance of rejection during the registration process and save you time and money in the long run. This article will explore five tips for conducting a trade mark search in Australia to help you get the most out of your search.
1. Know Where To Look
The first step to a thorough trade mark search is to know where to look. IP Australia has designed their very own Australian Trade Mark Online Search System (ATMOSS). This tool gives you a free way to do a comprehensive search of existing trade marks.
ATMOSS has several search functions to make your search as thorough as possible. ATMOSS has a word search function as well as an image search function so you can search for trade marks with visual elements. ATMOSS’ advanced search function also allows you to do a combined image and word search, making sure you do not miss anything during your search.
2. Know What You Are Looking For
Before you begin your search, it is essential to know what you are searching for. The first step is to understand the basic rules of trade marks. For example, IP Australia will not register a trade mark that is the same or similar to an existing trade mark. It is also important to consider what category your product or service falls under. This is because two similar trade marks can exist if they belong to different categories of goods and services.
IP Australia’s trade marks classification search provides a list of classes of goods and services that you can choose from when classifying your trade mark.
3. Break It Down
When checking for similarities between your trade mark and others, you should consider several factors. For word searches, you should search for words that sound similar to those you want to trade mark. When searching the word ‘cookie’, you should also search for ‘kookie’, ‘cooky’ and ‘kooky’. For image searches, it is recommended you be as descriptive as possible. For example, if your graphic contains an animal, you should search the word ‘animal’ alongside more specific words like ‘tiger’ and ‘cat’.
Coming up with a list of as many variations of your trade mark and being as descriptive as possible in your search will help reduce your application’s chances of being rejected.
4. Expand Your Search
Knowing the features of ATMOSS will help you expand your search. For example, ATMOSS allows you to search for specific trade marks by number. You can also find who owns a trade mark you are interested in. This makes it possible for you to potentially buy or obtain a license to an already registered trade mark.
ATMOSS also gives you the option of creating an account instead of logging in as a guest. By creating an account with ATMOSS, you can save your searches and retrieve your previous search results, making it easier to conduct your search over several days.
5. Limit Your Search Results
The large number of search results on ATMOSS can be overwhelming. While it might seem counterintuitive to the tips listed above, setting parameters and limiting your search results can be a great way to reduce both the number of results and your frustration. Some ways you can limit your search results is to:
- search for only ‘pending and registered’ trade marks;
- combine your previous searches by using the ‘combine searches’ feature; and
- focus on the ‘exact-word’ and ‘part-word’ search functions when conducting word searches.
Key Takeaways
Conducting a trade mark search can be a complicated process. Knowing exactly what to search for can be time-consuming and stressful. If you need assistance doing a 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 cannot register a trade mark that is the same as or similar to an existing trade mark. Therefore, conducting a trade mark search is essential to your trade mark application’s success. A trade mark search is how you can check if your proposed trade mark is available for use, ensuring you do not infringe on someone else’s intellectual property rights.
Primarily, a trade mark search helps you determine whether your desired trade mark is available. It is also a great way to help you minimise the chance of objections during the registration process. A search will help you narrow your trade mark and prevent you from infringing on someone else’s trade mark.
IP Australia’s ATMOSS tool is a free way to do a comprehensive search of existing registered trade marks. ATMOSS is the best way to determine whether or not your proposed trade mark is available to register. However, it is important that you know how to use ATMOSS properly to get the most out of your search.
While your trade mark cannot be the same or similar to an existing trade mark, it depends on the trade mark classification. This is because two similar trade marks can exist if they belong to different categories of goods and services. If you find that somebody has registered the trade mark you want in the same category your business falls under, it is possible to ask if you can license the current owner’s trade mark.