Benefits of Conducting a Trade Mark Search
George Raptis
It is likely that you will conduct trade mark searches before, during and after applying for a registered trade mark. The Australian Trade Mark Search is a publicly available registry that allows you to search trade marks registered in Australia and their corresponding owner. This article outlines the benefits of conducting a trade mark search and provides some tips for navigating the Trade Mark Search.
1. Avoid Rejection and Opposition
Conducting a trade mark search is an important step in ensuring that the trade mark you intend to register has not already been registered by someone else. IP Australia can reject a trade mark application because it is similar or identical to an already registered trade mark concerning the same goods or services. A trade mark search can identify already registered trade marks that are:
- similar to the trade mark you intend to register; and
- sound or look similar to the trade mark you intend to register.
It can also provide you with well-known trade marks that are similar to the trade mark you intend to register.
To increase your chances of having your application accepted, you should conduct a trade mark search to ensure that you are not applying for a trade mark that someone already owns.
Even if IP Australia accepts your application, other trade mark owners can oppose your application. There is a two-month window after IP Australia accepts your application in which third parties can file a notice of intention to oppose your application. Others can make this opposition on the basis that a similar trade mark already exists. You can decrease your chances of facing opposition by undertaking a trade mark search before applying for a registered trade mark.
2. Choose a Strong Trade Mark
Given the cost and time involved in applying for a registered trade mark, you want to make sure that you apply for a strong trade mark capable of protecting your business’ brand. Conducting a trade mark search before you decide to register your intended mark can help you identify whether your intended trade mark is not capable of the protection you desire. A search will refine your idea for a trade mark depending on its availability.
A search can also help you assess the different classes of goods or services for your trade mark. You should note that some goods fall under more than one class. For example, a beverage product falls under roughly 19 categories of classes. When searching, you can both search through trade mark classifications as well as assess the classes that your competitors have chosen their trade marks to protect. If you fail to include all the classes you wish your trade mark to protect in your application, you will likely have to resubmit another application at your own expense.
3. Obtain a Licence
If you have discovered that somebody has already registered your desired trade mark, you may be able to obtain a licence from the trade mark owner. Licensing refers to the agreement between the licensor (in this instance, the trade mark owner) and the licensee (you or any other person), allowing the licensee to use the licensor’s trade mark over a specified period of time for an agreed price. By conducting a trade mark search, you can identify the contact information of the trade mark owner and begin negotiating a licensing agreement.
Tips for Conducting a Trade Mark Search
The Australian Trade Mark Search is fairly easy to navigate. However, you should keep in mind the following tips to ensure that you are searching properly.
1. Conduct Different Searches
There are certain features of the Australian Trade Mark Search that you should be aware of. This will ensure that your search is comprehensive. You can conduct a quick word search to help you identify a broad range of trade marks. You can then refine this search by limiting the search terms by opting for the advanced search. When undergoing an advanced search, you also can upload a photo. You can also search for a trade mark number directly if you have the relevant information.
2. Seek Legal Advice
Before and during your application for a registered trade mark, it would be wise to seek legal advice. A lawyer specialising in trade marks would be well-equipped to undergo a comprehensive trade mark search. Additionally, they can provide you with further direction when conducting your search.
Obtaining the advice of a lawyer during the early stages of trade mark registration will also assist you with managing your trade mark in the long term. In addition, the knowledge and resources compiled by the lawyer can assist you in developing an enforcement strategy in the instance where someone infringes on your registered trade mark in the future.
Key Takeaways
Conducting a trade mark search is an essential part of applying for a registered trade mark. You can avoid IP Australia rejecting your application or any third party opposing your application by identifying already registered trade marks similar to what you intend to register and changing your idea for a trade mark accordingly. A trade mark search can also help you choose a strong trade mark that comprehensively protects your desired goods or services and assist you in contacting trade mark owners if you wish to obtain a trade mark licence. If you need help with conducting a trade mark search, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
A trade mark application can cost anywhere between $250 and $600, depending on the features of the trade mark you are applying for. You can find a comprehensive breakdown of IP Australia’s registration costs here.
A TM Headstart application includes a pre-assessment of your application by a specialist at IP Australia before submission for approval. During the pre-assessment stage, the specialist can identify any issues in your application that you can amend. On the other hand, a standard application bypasses the pre-assessment stage, and IP Australia will review it.