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Trade Marks are an important consideration for businesses. They serve to protect your valuable intellectual property.
For instance, your slogan might be a popular and successful part of your business. Whenever someone hears the slogan, they associate it with your business. It’s an essential part of your brand, so naturally, you’d want to take steps to ensure it’s protected. This is where you’d Register A Trade Mark.
However, not everything can be trademarked. Before applying for one, it’s important to conduct a detailed search to make sure there are no similar trademarks already pending or registered.
A trade mark can be removed where it is too similar to another existing one, or it is likely to cause confusion with another registered trade mark, thereby affecting reputation and brand association in that market. There are many examples of this occurring in practice.
What Is The Australian Trademark Search Tool?
Your first step is to conduct a search to check that the IP you intend to register does not already exist. In Australia, this can easily be done by using the Australian Trademark Search Tool (ATST). This tool will allow you to find out whether:
- The name or logo you want to register is already in use
- Your new product name or logo can be protected by trademark registration
- A similar registered trademarks in the market, or pending applications, that may conflict with yours
This comprehensive search tool has several functions.
Word Search
Firstly, it can search for words used in a trade mark. It is important to note that this function is very precise. So, for instance, if you searched ‘Cat’, it would find any trademarks containing the word Cat or Cats separated by spaces or punctuation (e.g. Cat-Food). But it would not find variations like ‘Cats’ or ‘Kat’.
Thus, it is essential to search a variety of variations on the trade mark you want to register to make sure similarities are avoided.
Images
Secondly, it can search for image elements of a trademark. You can upload an image of your logo for example, and the search will return results based on the visual similarity of the images. When you upload your photo, you should upload several different iterations of different parts of the image, as well as one photo of the whole image. This is to make sure parts of the image are not duplicated in another trademark.
Combination
Thirdly, it can be used to search for a combination of words and image elements. This creates a very specific and narrow search range, so it might be better done initially, before searching each memorable and important part of your trademark separately.
Ownership
Fourthly, it can search for trademarks owned by a particular person or entity. So, you could search for a name (for example ‘John Edwards’), or a company (for example ‘Coles’). You will then see any trademarks in the names of these persons/entities.
Trade Mark Number
Lastly, you can search for a specific trademark number. This can be done individually (for example ‘1701795’), or in a range ( for example ‘1700000-1700010’).
For more information on the ATST, IP Australia provides a reference card and information sheet with handy tips.
Before You Use The Australian Trade Mark Search Tool
But before you conduct an Australian Trade Mark search, there are a few things you should be aware of. Firstly, you need to have an idea of what you want to trademark.
As the prior mentioned ATST functions show, if you do not know what you want to trademark, it will be impossible to find out if something similar has already been registered. Our expert intellectual property lawyers can assist you with understanding what is worth protecting in your business.
Another crucial step is thinking about what goods and services you intend to use your trade mark in. When you apply to register a trade mark, you must provide a description of these potential goods or services. It is worth having a look through IP Australia’s Trade Marks Classification Search to help figure this out.
At first glance it might appear obvious, but there are around 45 classes of goods and services. Once you file a trade mark application, you will not be able to expand your list of goods or services.
In working this out, it is a good idea to ask yourself 4 key questions:
- Where do you derive your business income?
- What is the nature of your business?
- What are you known for by your customers/clients?
- What products or services does your business provide?
The answers to these questions should give you a general idea of what goods and services your application should cover. Trademark Assist can also help in identifying recommended goods and/or services specifically for your business.
Furthermore, these questions will help guide how the trade mark search results impact your potential trademark.
Understanding The Trade Mark Search Results
The mere fact that someone has already registered a trademark identical or similar to your potential one does not prevent you from using or registering it for your own purposes. This is because every trade mark registration and application includes a description of the goods or services covered by it.
The trademark may be identical or similar, but the product or service it is applied to may be totally different.
To illustrate this, an example is useful.
| Example For example, let’s use the example of ‘Dove’ on soap. This is classified as a Class 3 good. ‘Dove’ being used on chocolate would be placed in Class 30. Although both trade marks would be registered for the same word, ‘soap’ and ‘chocolate’ are considered to be different goods, with a different purpose and sold through different trade channels. So, in this particular example, there is no real tangible danger of confusion. This is a primary concern of the trade mark system. If there is little to no risk of confusing the two brands, then a trade mark opposition is unlikely to be successful. |
If there is a conflict, you can apply to have the trade marks register changed to limit the description of goods or services. Say for instance the ‘Dove’ trademark was registered by one company for class 3 and class 30 items (soap and chocolate), but only being used to manufacture soap. If you wanted to trademark ‘Dove’ to be used in the manufacturing of chocolate, you could apply to rectify the register by limiting the description of goods to ‘soap’.
Through this limitation, you may then be able to register ‘Dove’ as a trademark for chocolate.
Limitations
As a final point, it is crucial that you remember that this is only the starting point for the registration of your trade mark. The Australian Trade Mark Search offers no concrete guarantees as to the availability of a trade mark. It only offers broad guidance as to what may or may not be available.
More specifically, some existing trade marks similar to your prospective trade mark may not be picked up in the search. With this in mind, it is always advisable to seek legal assistance throughout the registration process.
Key Takeaways
Trademarks are important for the protection of your intellectual property. But they aren’t the only way to ensure this protection.
Our expert lawyers can help your business with a range of legals:
- Copyright Consult
- Register An International Trade Mark
- Register A Design
- Register A Security Interest
- IP Health Check
- IP Licence
- IP Assignment
If you’d like further advice, or have any questions for our expert intellectual property lawyers, you can reach out to our legal consultants for a free, no-obligations chat at team@sprintlaw.com.au or 1800 730 617.
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