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 respectively. Conducting a trade mark search before registering a trade mark enables you to determine whether similar or identical trade marks are already registered. Markings that are similar to yours may mean you cannot register your mark, so conducting a thorough search is vital. IP Australia’s Australian Trade Mark Search website has both ‘quick search’ and ‘advanced search’ functions. In this article, we 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 in relation to specific goods and services. For example, Coca-Cola’s has registered its trade mark “Mount Franklin” for mineral and aerated water and other non-alcoholic drinks. This gives Coca-Cola the exclusive right to use the words “Mount Franklin” for these types of products.

Once you have established the types of goods and services you wish to register, you will have to determine what “class” they fall under. Using IP Australia’s Trade Marks Classification Search will help you find the classes relevant to your goods and services. Type in the product 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. A good way to start a trade mark search is to type your trade mark into the search bar. For example, if your desired trade mark is “hilarious hats”, type exactly that 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 What it does Example Search Example Results
* The asterisk is replaced by various letters and characters. R*F

Reef, RAF, Riff, Relief

NOT: Reefs or Roofsafe

? The question mark is replaced by any single character. R?F

Raf, Ref, R&F

NOT: Reef, Fear

@ The @ is replaced with vowels (including Y and H). R@F

Reef, Roof, Reaf, Rhyf

NOT: RISF, Roofs

“” Using quotation marks yields results with the words in that order. “Harry Potter”

Harry Potter

NOT: 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. You can search for various combinations of the words in your trade mark and filter results according to classes of goods and status.

Searching for Images

The quick search and advanced search options both allow you to search for trade marked 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 in other search variables that narrow your results.

Similarity Between Trade Marks

Your trade mark cannot be substantially identical or deceptively similar to a trade mark another party has 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 be an obstacle to your application. Marks that have been removed or were never registered will still show up in your search results but are unlikely to affect your registration.

Classes

Trade marks that are registered for 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 registered for related products may prevent you from registering your trade mark.

For example, the word “diamond” is a registered trade mark for walnuts as well as clothing and cleaning products. These various trade marks can exist side by side because they affect entirely different products in separate classes (and, therefore, consumers won’t be confused because the trade marks don’t belong to direct competitors).

Substantially Identical

“Substantially identical” refers to how alike the trade marks actually 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.

For example, if a standout feature of both trade marks is a big red star, they might be considered substantially identical.

Deceptively Similar

Trade marks are deceptively similar when they leave the same overall impression on the consumer. This could take the form of similar shapes, colours or appearances of related products, which would lead to public confusion.

For example, two logos may not have substantially identical features but the combination of the colours, shapes and words in both logos leaves the same impression in consumers’ mind, causing customers to confuse the brands. This would make the marks deceptively similar.

Key Takeaways

Trade mark searches are essential to the success of your trade mark application. However, in order to get the most out of your trade mark search, you need to understand how to use the search functions and how to analyse the results. Look for similar and identical trade marks, as they may pose barriers to your trade mark application.

Determining whether you can register your trade mark is a challenging and complicated process. Therefore, if you need assistance registering your trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Eugenia Munoz
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