Securing your unique brand: A quick guide to trade mark searches

Some things never go out of fashion, and the old saying that a stitch in time saves nine is as relevant today as it was when it was first coined hundreds of years ago. Solving problems preemptively is always the best approach, and if you are embarking on an entrepreneurial journey, you’ll be well-served to apply this principle to your distinguishing identity for your new business—your trade mark.

A ‘search in time’ could result in significant cost savings which is why experienced trade marks attorney, Jacqui Pryor is such a firm advocate for trade mark searches to be the starting point for any start-up or new brand launch. Further, recent case law is telling us that the failure to conduct appropriate trade mark searches at the time of adopting a new name/brand can trigger consequences in the future when a business may need to prove they chose a name honestly.

In this article, Jacqui provides a quick guide to trade mark searches to help solopreneurs find their unique brand.

Why a trade mark search should be a high priority for a solopreneur

I’ve witnessed far too many businesses being compromised because the owner didn’t do a trade mark search.

In some instances, the business owner had their application to register a trade mark rejected because their proposed brand name was too similar to an existing one.  In other cases, the business owner was forced to undertake a costly rebrand because they were infringing on another trade mark owner’s rights.  Some only learned that they were infringing another person’s rights they received a nasty cease and desist letter.  For some, the cost and resources involved in the rebrand or the legal defence were onerous and they were forced to abandon their investment.

A trade mark search at the early stage of starting a new business or launching a new product or service can be the difference between make or break.  It can ensure that your brand becomes a valuable asset on your balance sheet and it can mean you avoid the risk of stepping on another trade mark owner’s toes and infringing their rights.  Ultimately, a trade mark search early on will help you avoid financial losses.

A quick guide to trade mark searches

There are a number of different search options available when it comes to trade marks in Australia, namely:

• An identical search which investigates if any identical trade mark has already been registered in Australia.
• A register search which looks for any absolutely identical – or deceptively similar – trade mark that has been registered in Australia (or for which registration is pending) which may be deemed as ‘too similar’ to yours.
• A full availability and infringement search which investigates a number of scenarios, including if any trade marks could conflict with yours, whether there are any other areas of the Trade Marks Act that could prevent your mark from being registered and whether the same name has been used for a period of time by any existing businesses in Australia, giving them ‘prior’ or common law rights.

What does it cost to do a trade mark search?

The Australian Trade Mark Search System (ATMOSS) from IP Australia (the governing body for trade mark registration) is a free tool which anyone can use.

IP Australia’s database contains details of registered trade marks as well as pending applications and a search using ATMOSS will give you an idea of:

• Whether your intended trade mark is available in Australia
• Whether your trade mark can be used in the class/es of Goods and Services you propose

You can also choose to do an advanced trade mark search using ATMOSS.  Thorough searches conducted by a trade marks professional are likely to incur fees.

Why a comprehensive search can be the right option

If you haven’t started using your trade mark, the free trade mark search tool from IP Australia is a good starting point.

However, it’s a good idea to enlist specialist assistance to do a more advanced search if your intended trade mark contains a couple of different elements or if your brand is already established, or if you are unsure how to interpret the results of your own trade mark search.

A trade marks expert can do a detailed search to identify any conflicting trade marks and ensure that your chosen sign meets IP Australia’s registration requirements.  An common law search will also reveal if any other party already has unregistered rights over the same, or a very similar, mark that could pose some problems for you.

Some key points about trade mark searches:

• You need to search different variations of your proposed trade mark to ensure there aren’t any similarities with an existing brand. Trade mark infringements occur when there are deceptive similarities between different trade marks that can lead to customer confusion.
• You should also search for misspellings of names as well as different iterations of any logo, image, tag line etc that you intend using with your brand identity.
• Using a search tool doesn’t offer any guarantees in terms of trade mark registration. It’s there for guidance only.  To secure watertight legal protections for your trade mark, you would still need to go through the registration process with IP Australia which considers each application on its merits.
• You can also search for a combination of words and images. If your intended trade mark is to be a combination of different elements, it’s a good idea to search each element to ensure no part of the proposed brand conflicts with others
• Two different parties can register the same trade mark provided that it is going to be used for a different class of goods and services and for a different purpose. The two marks would also have to be marketed through different trade channels. In certain circumstances, it is also possible for two different parties to own trade marks that are the same or similar in the same category of product or service.
• Searches can appear deceptively simple. It may be in your best interests to do an advanced search with the help of a trade marks expert who is experienced with search terms and the nuances of the various classifications of goods and services.
• If you intend marketing your brand outside of Australia, you will need to do a trade mark search in the countries where you intend trading.

Finding your unique brand through trade mark searches

I know how challenging it is to start a business and build a reputation for a product or service.  The very last thing you need is to discover that the business name or brand image that you thought was unique and distinct, already exists and belongs exclusively to someone else.

That’s why a trade mark search should be your launchpad for brand development because it’ll reveal whether or not your intended brand is available.  If you skip this step before choosing new names, creating logos or filing your application to register your trade mark, you could end up wasting both time and money.

Over the years, I’ve seen many small businesses pay the price for omitting to do a trade mark search to find their unique brand.  On the other hand, I’ve also seen just how crucial a comprehensive trade mark investigation from the get-go can be to a business’s growth and success.

If you’re thinking of starting a new business, extending your product range or wanting to formalise your IP into a valuable balance sheet asset, a trade mark ‘search in time’ will save you time, money and a whole lot more.

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