Australia: What is a trademark search?
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Doing thorough trademark research before choosing your business name can help you avoid infringing on someone else’s intellectual property rights. A brand search can help you make an informed choice about your brand image. Therefore, you can confidently continue with your company or product name and minimize the risk of disputes with other companies. Trademarks are registered country by country. So, if you have expansion plans, you should also consider searching the global market and international databases to save time and money. This article explains the importance of trademark searches and why you should do one before registering a trademark.
Why should I perform a trademark search?
You found a clever business name. At this point, you start hiring manufacturers to produce your products, embossed with your new brand name. Maybe you’ve even hired a marketing team to start building your website and online presence. After investing time and resources into developing your brand, the last thing you want is to find out that the business name is already a registered trademark owned by another merchant in your market.
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To save you from going back to the drawing board at this stage, it can be a valuable investment to undertake extensive research and brand research in the development phase of your brand. It will help you:
- obtain an original name;
- find out if the same name you had in mind, or a similar one, is already being used in your industry; and
- minimize the risk of getting into an intellectual property dispute with another merchant.
You can expose yourself to significant liability if you adopt a brand image similar to that of another marketer in your field. These risks include:
- trademark infringement, which is the unauthorized use of a registered trademark. If you use a trademark that is too similar to a registered trademark, relating to the same types of goods or services, it is trademark infringement. It is best to avoid this situation as much as possible, as the penalties for violations can be substantial; and
- objection from IP Australia or opposition from a third party. IP Australia will reject your mark if it is too similar to an existing mark. Also, if they own a similar trademark, a third party may object to your application during its formal review.
When should I carry out a trademark search?
You should undertake Trademark Registry and general market research in the early stages of your business. If you’ve decided on a name or are considering a few options, doing a trademark search can help you decide and determine if you should start your business under that name and proceed with trademark applications.
It is recommended that you check whether a particular name is already in the Trademark Registry before registering your business name with ASIC. However, your business name and trademark are separate. For example:
- registering a trade name with ASIC allows you to trade under that name and comply with ASIC regulations. Registration of the trade name itself does not prevent other traders from using that name as a trademark; and
- registering a trademark for your business name grants you exclusive right to this name in the field of the goods and services that you provide. This prevents others from using your business name, thereby protecting the goodwill and hard work you put into establishing your brand.
What if my name is already a registered trademark?
It depends. Suppose your search results indicate that the trade name you have chosen is already a trademark for similar goods and services. In this case, it may be advisable to change brands to avoid trademark infringement. However, if you have been trading under this name for some time and have built up a reputation in the market to the point that consumers recognize you, you may still have a valid right to your own trademark. You should speak with a trademark attorney to discuss your options in this case.
Identical business names can co-exist as long as you operate in different industries and provide different goods and services. For example, “ACME” is the trademark of both an architecture and design firm and another company selling essential oils and cleaning products. The risk of consumer confusion is minimal when you target different clienteles.
What is a trademark search?
A trademark search may involve:
- seeking clearance from the Australian Trademark Registry; and
- market research for the name.
If you limit your search to only checking the trademark registry, you may not identify unregistered trademarks that others may use in the marketplace. If you know that a competitor is using the same mark or a similar mark to the one you wish to adopt, you should inform your trademark attorney so that they can advise you further.
If you are considering expanding your business internationally, it is worth researching the Global Trademark Database or trademark registers in the countries in which you can trade. You don’t want to be in the position of having built a successful business and brand in Australia, only to find that your brand already exists in the US and you plan to start selling your products there later this year. Diligent research will help you achieve a unique name and increase the longevity of your business.
Key points to remember
The best time to do a trademark search is before you start trading under your chosen business name. Conducting a trademark search can help you strategically develop your brand name and reduce the risk of infringing on someone else’s intellectual property rights. However, if you find another merchant using your intended name or if you are unsure whether it is possible to register your desired name as a trademark, you should consult a trademark attorney or attorney.
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