Searching trade marks before you choose a name

IP Australia says registering a business name doesn’t give you exclusive rights to it, while registering a trade mark “puts you in a strong position to protect your name and stop others from using it.” A search shows whether someone else already holds that position for a name close to yours.

IP Australia puts the stakes plainly: launching a new brand “can involve a significant investment of time and money.” It also points out that an application fee isn’t refunded if a mistake means you have to re-submit, which is one more reason to look before filing.

IP Australia offers two search options. TM Checker gives more feedback about the likely success of an application; Australian Trade Mark Search, known as ATMS, lets you search registered and pending trade marks.

Neither tool settles the question. IP Australia says TM Checker’s results “can’t guarantee an outcome” if you go on to apply. If you do decide to apply, it points first-time applicants to TM Headstart, the pre-application service covered in registering a trade mark.

A search is most useful when it looks for the things an examiner will. IP Australia says its examiners check many things, including your legal identity and whether your classifications are correct, and that similarity and distinctiveness are among them.

Similarity

A trade mark is generally considered too similar to another, for example “deceptively similar”, if it is used for the same or similar goods or services and may cause confusion. For each application, IP Australia says, examiners look at whether there is “a real tangible danger of confusion” between existing marks and yours.

That test turns on goods and services as much as on spelling. A search is narrower or wider depending on the classes you look in, and ATMS shows the classes each mark is registered in. How classes work is in the classes section of the registering guide.

Distinctiveness

Examiners also ask whether other traders may have a legitimate desire to use your mark, for instance because it is descriptive. IP Australia’s example is whether “4x4” for vehicles is a non-distinctive trade mark. It says some words, phrases or images can’t be trade marked because they are common words that should be available to everyone, and that a business name built from commonly used words or phrases might not qualify for a trade mark.

The two tools search registered and pending marks. Trade marks can be unregistered as well, and IP Australia says a registered mark generally gives stronger legal protection than an unregistered one. For more certainty that a chosen mark is available and likely to be registrable, IP Australia suggests professional advice may be worth seeking: it says a trade marks attorney or lawyer can run comprehensive searches for prior registered or unregistered marks that might pose a risk, and advise on how those risks might be reduced.

After you’ve chosen

Searching isn’t a one-off. IP Australia calls it “a good idea to keep watch of new IP entering the market,” and lists the Australian Trade Marks Search among the registers to check regularly. That watch is also how an owner notices a mark that looks like infringement, which is the subject of when someone uses your name.