In Short
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Conduct a trade mark search to identify similar or identical marks before applying for registration.
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Use the quick search and advanced search tools to explore potential conflicts, including variations in names and logos.
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Consider classes of goods and services to ensure your trade mark is appropriately protected.
Tips for Businesses
Before registering your trade mark, perform a thorough search to ensure there are no conflicts with existing marks. Use both quick and advanced search tools to check for phonetic, visual, and text-based similarities. Periodically monitor trade marks to protect your rights and avoid potential issues down the line.
Trade marks are the parts of your brand that customers identify with you and your products. For example, the yellow “M” logo and the slogan “the burgers are better at Hungry Jack’s” are trade marks for McDonald’s and Hungry Jack’s. Before you register a trade mark, you should conduct a trade mark search. This allows you to determine if a similar or identical trade mark has already been registered. Trade marks similar to yours may mean you cannot register your trade mark, so conducting a thorough search is vital. This article will set out the basics of how to get the most out of your trade mark search.
Classes of Goods and Services
You will always register your trade mark with specific goods and services.
Once you have established the types of goods and services you wish to register, you must determine what “class” they fall under. Goods and services are divided into 45 different classes. Specifically, goods fall into classes 1 to 34, while services fall into classes 35 to 45.
Using IP Australia’s Trade Marks Classification Search will help you find the classes relevant to your goods and services. Type in the product or service you are selling and it will show you possible classifications for your trade mark.
Quick Search
The ‘quick search’ option of the online trade mark search consists of a single search bar. An excellent way to start a trade mark search is to type your trade mark into the search bar.
Even if the search doesn’t show any matching results, you should continue searching for similar trade marks. Use the following tools to find possibly conflicting trade marks:
| Tool | Role | Example Search | Example Results |
| * | The asterisk is replaced by various letters and characters. | R*F | Reef, RAF, Riff, ReliefNOT: Reefs or Roofsafe |
| ? | Any single character replaces the question mark. | R?F | Raf, Ref, R&FNOT: Reef, Fear |
| @ | The @ is replaced with vowels (including Y and H). | R@F | Reef, Roof, Reaf, RhyfNOT: RISF, Roofs |
| “” | Using quotation marks yields results with the words in that order. | “Harry Potter” | Harry PotterNOT: Potter Harry |
Advanced Search
The trade mark search also includes an advanced search option. This option allows you to conduct a more thorough search by experimenting with different search variables and filters. You can search for various combinations of the words in your trade mark and filter results according to classes of goods and status, the status of the mark (i.e., whether it is pending, registered or expired), and the type of mark (word, logo, etc.).
Using the advanced search tool to conduct a comprehensive search is important, as you want to uncover all similar trade marks (such as phonetic matches) to your own and not just obvious text matches.
Searching for Images
The quick search and advanced search options allow you to search for images similar to your logo. You can upload the picture, and the site will yield results based on similar visual aspects. Image searches usually produce large results, so it is a good idea to add other search variables that narrow your results. You can use variables such as classes for your goods and services, keywords, and image descriptions to refine your search.
Similarity Between Trade Marks
Your trade mark cannot be substantially identical or deceptively similar to a trade mark another party has filed or registered, for goods and services related to your products.
Therefore, when you come across trade marks that are similar to yours, consider:
- the status of the trade mark;
- the classes of goods and services applying to the trade mark;
- whether the trade marks are substantially identical; and
- whether the trade marks are deceptively similar.
Status
Trade marks with a “registered” or “pending” status can hinder your application. Marks removed or never registered will still appear in your search results but are unlikely to affect your registration.
Classes
Trade marks that cover classes of goods and services unrelated to yours are unlikely to be a problem for your application. However, brandings that are similar to yours and cover related products or services may prevent you from registering your trade mark.
Substantially Identical
“Substantially identical” refers to how alike the trade marks look. Firstly, put the trade marks side by side and compare their similarities and differences. Next, consider how prominent the similarities are. If they are central features of the trade mark, the trade marks are likely to conflict. However, if the similarity lies in a secondary aspect of the branding, they may be able to coexist.
Deceptively Similar
Trade marks are deceptively similar when they leave the same impression on the consumer. Similar shapes, colours, or appearances of related products could lead to public confusion.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Trade mark searches are essential to the success of your trade mark application. However, to get the most out of your trade mark search, you need to understand how to use the search functions and analyse the results. Look for similar and identical trade marks, as they may hinder your trade mark application. Determining whether you can register your trade mark is challenging and complicated.
If you need assistance registering your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Before filing your application, conduct a comprehensive trade mark search to identify any issues or conflicts that may arise during registration. Periodically run searches to check for potentially conflicting trade marks, as they can be filed at any time. Additionally, ongoing monitoring after registration is essential to protect your trade mark from potential infringement.
Even if a conflicting trade mark has lapsed, been abandoned, or cancelled, you may still face challenges when registering the same or a deceptively similar mark. Owners can potentially revive these trade marks. However, you have the option to apply for the removal of inactive registered trade marks from the register due to extended non-use.
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