Too many businesses launch new brands without first checking the trade mark register. Sometimes this results in disastrous (and expensive) consequences for the business.
A registered trade mark provides the exclusive right to use that mark in connection with specified goods and services. This includes the right to sue a competitor for trade mark infringement.
When starting a new business, or devising a new brand, it is imperative that you search the trade mark register for conflicting prior registrations.
The trade mark register is freely available online through IP Australia.
Failure to run searches can cause disputes, which often result in a total rebrand at significant cost.
However, running a search goes beyond merely inputting the name of your brand or business. Outlined below are some basic tips for running searches of the register.
Goods and services
The trade mark register allows users to search within specific classes of goods/services, or even search for specific goods/services (e.g. “coffee” or “engineering”).
It is worthwhile narrowing the scope of your search by specifying the relevant goods and services.
In particular, you are looking for prior marks registered in connection with similar goods and services to your own.
For example, the mark “COSMIC” may be separately registered in relation to “footwear” and “accounting services”. Although both examples feature the identical mark “COSMIC”, the goods and services are different; therefore, it is unlikely that a trade mark conflict will arise.
However, if a prior registration for “COSMIC” exists in relation to “accounting services”, and you intend to use the word “COSMIC” in relation to “banking and financial services”, then a conflict may arise. At this stage, you would reconsider using the brand “COSMIC” in light of the prior registration.
Failure to narrow your search parameters may cause you to end up with too many irrelevant results.
If you are uncertain whether goods and/or services are too similar, we recommend obtaining legal advice.
Deceptively similar
Trade mark infringement arises when (amongst others), the defendant’s mark is substantially identical or deceptively similar to the plaintiff’s.
Accordingly, it is not enough to search for only identical marks to your proposed brand or business name. Your search must also contemplate prior registrations that are merely similar. Therefore, you need to properly understand the advanced search features provided by IP Australia to cover all bases.
By way of example, if you merely search for “COSMIC”, you may miss prior registrations such as “KOSMIC” and “COSM1C”. These prior registrations, if filed in connection with similar goods/services, may be a substantial risk to your business.
Therefore, you ought to search for “fuzzy”, “phonetic” and pre/suffix” variations so that nothing is missed. Failure to search across all potential variations may leave your business vulnerable to an infringement claim in the future.
Images
The Australian trade mark register allows users to upload image files so that similar logos and stylised brands can be checked.
The register will identify the key features of your image and search across the register for similar marks. This feature is incredibly useful, given the usual difficulties in manually searching for similar images.
However, you should also take advantage of the advanced search features to narrow your search so that only relevant marks are displayed. This can include specifying relevant goods and/or services or even searching specific image tags and features (e.g. “ribbon", “dog” or “leaf”).
Lavan comment
Searching the trade mark register before launching a new brand or business is essential.
The relatively quick and simple process can identify risks well in advance.
The cost to rebrand upon discovering an issue can be significant. Prevention is the best cure in these circumstances, and searches of the register should be a routine step in any branding process.
However, there are various strategies one should employ when searching the register so that all potential conflicts are identified; merely searching the name of the proposed brand may not be enough.
If you require assistance in searching the trade mark register, do not hesitate to contact Iain Freeman or Andrew Sutton.
