A trade mark is a sign that a trader uses to distinguish their goods or services from another. It can be a word, phrase, letter, number, logo, picture, an aspect of packaging or combination of the above. Clients typically use their trade mark as their business or company name, branding, product name or slogan.
If you are thinking of using a particular sign as a trade mark, there are two questions you should ask:
- Are you using a sign that is the same or similar to somebody else’s trade mark and possibly exposing yourself to a trade mark infringement claim?
- Is your trade mark available to register in Australia?
To answer these questions, you will have to do a search of ATMOSS. ATMOSS is one of the best trade mark search systems in the world, but for a novice searcher, it can be quite confusing. Below are five ATMOSS advanced search hacks I have learned as a former senior trade mark examiner at IP Australia and now, as a lawyer.
1. Log on with a Name and a Password instead of Entering as a Guest
On the ATMOSS homepage, a user has the option of logging on with a name and password or entering as a guest. I recommend logging on with a name and password. You should keep this simple as you do not want to provide any confidential information when searching ATMOSS. Entering with a name and password allows you to retrieve your search results in future ATMOSS sessions for up to 20 days from your last login.
2. Searching Images
Every time IP Australia receives a trade mark application, an indexing team identifies the word and image components that make up the trade mark. If you do not use the correct image component when undertaking your search, you will not get results. You can access a tool to assist with your search called the Trade Marks Image Descriptors Search.
To use the Trade Marks Image Descriptors Search, just type in the name of the graphic elements in your trade mark. If your image is that of an elephant on a chair, type the following and find out what image components you should use on ATMOSS:
3. Search for Phonetically Similar and Misspelt Trade Marks
Remember that the test for trade mark infringement is whether “the trade marks are substantially identical or deceptively similar”. For this reason, it is important not to limit your search to identical trade marks. Your strategy should include a search for phonetically similar or misspelt trade marks, for example:
- When searching for COOL, consider searching for KOOL;
- When searching for QUICK, consider searching for KWIK;
- When searching for the word LOVE, consider searching for LUV and a heart image;
- When searching for the popular prefix ECO, consider searching for EKO; and
- When searching for PHONE, consider searching FONE.
4. Use Wildcards
For searching purposes, a wildcard character is a single character used to replace or represent one or more characters. When using ATMOSS, a WILDCARD is a good way to search for trade marks that are phonetically similar or misspelt.
The ATMOSS wildcard characters are:
- “%” or “*” to replace one or more characters; and
- “?” or “_”to replace a single character.
If you are searching for the word BRILLIANCE, your search strategy may include the following:
- Part word search of BRILLIANCE;
- Part word search for BR_L%NC or BR?L*NC (this will come up with the same results).
If you are searching for the word LOVE, your search strategy may include the following:
- Part word search for LOVE;
- Part word search for LUV;
- Part word search for L_V or L?V;
- Part word search for L%V or L*V;
- Part image or exact image search for HEART; and
- Part image or exact image search for HEART+.
5. Limiting Search Results
One of the things that seem to frustrate users the most is when a search parameter produces too many search results. You can limit your search results in the following ways:
- Changing the status field to only search for “Pending and Registered” trade marks;
- Consider changing Part Word searches to either Prefix, Suffix or Exact Word searches;
- Consider changing Part Image searches to Exact Image searches;
- Combine trade mark searches. You can do this after you have executed a few search parameters. On the left-hand side of ATMOSS, you will see a few links which include Search List. Click on Search List, and it will show your previous searches. Below your list of searches, there are several fields which will allow you to combine searches by number. You can then decide to combine your first and second search by choosing search 1 and 2 and then clicking Combine Searches.
If you have any questions or need assistance registering your trade mark, get in touch with IP lawyers on 1300 544 755.