Reading time: 6 minutes

Performing a thorough trade mark search before deciding on your company name can differentiate between establishing your unique successful brand and infringing upon someone else’s intellectual property rights. A trade mark search can help you make an informed choice about your branding. Therefore, you can confidently move forward with your chosen business or product name and minimise the risk of disputes with other companies. Trade mark registration takes place on a country-by-country basis. Therefore, if you have expansion plans, you should also consider searching the global marketplace and international databases to save time and money. This article will explain the importance of trade mark searches and why you should conduct one before registering a trade mark. 

Why Should I Perform a Trade Mark Search?

You have come up with a clever trading name. At this point, you are starting to engage manufacturers to produce your products, embossed with your new brand name. Maybe you have even hired a marketing team to start to develop your website and online presence. After investing time and resources into developing your brand, the last thing you want is to discover that trading name is already a registered trade mark held by another trader in your marketplace.

The Ultimate Guide for Startup Founders

The LegalVision Startup Manual provides guidance on a number of common challenges faced by startup founders including structuring, raising capital, building a team, dealing with customers and suppliers, and protecting intellectual property.

The guide includes 10 case studies featuring Australia’s top VC fund partners and leading Australian startups.

Download Now

To save you from going back to the drawing board at this stage, it can be a valuable investment to undertake thorough research and trade mark searches in your brand development phase. This will help you to:

  • secure an original name; 
  • discover whether the same name you had in mind, or a similar name, is already being used in your industry; and
  • minimise the risk of getting into an intellectual property dispute with another trader. 

You may expose yourself to significant liability if you adopt similar branding to another trader in your field. These risks include:

  • trade mark infringement, which is the unauthorised use of a registered trade mark. If you use a trade mark that is too similar to a registered trade mark, concerning the same kinds of goods or services, this is trade mark infringement. It is best to avoid this situation as much as possible, as infringement penalties can be substantial; and 
  • objection from IP Australia or opposition by a third party. IP Australia will reject your trade mark if it is too similar to one that exists. Additionally, if they own a similar trade mark, a third party may oppose your application during its formal examination.

When Should I Perform a Trade Mark Search?

You should undertake searches of the trade mark register and general marketplace at the infancy stages of your business. If you have decided on a name or are considering a few options, conducting a trade mark search can help you decide and determine whether to set up your business under this name and proceed with trade mark applications.

It is best practice to check whether a particular name is already on the trade marks register before registering your business name with ASIC. However, your business name and your trade mark are distinct. For example: 

  • registering a business name with ASIC allows you to trade under that name and comply with ASIC’s regulations. The business name registration itself does not prevent other traders from using this name as a trade mark; and 
  • registering a trade mark for your business name grants you an exclusive right to that name within the field of goods and services you provide. It restricts others from using your trade name, protecting the goodwill and hard work you put into establishing your brand.

What Happens if My Name is Already a Registered Trade Mark?

It depends. Suppose your search results show your chosen trading name is already a trade mark concerning similar goods and services. In that case, it may be advisable to rebrand to avoid trade mark infringement. However, if you have been trading for a while under this name and have built up a reputation in the market so much so that consumers recognise you, you may still have a valid claim to your own trade mark. You should speak with a trade mark attorney to discuss your options in this case. 

Identical trading names can coexist as long as you operate in different industries and provide different goods and services. For example, ‘ACME’ is the registered trade mark of both an architectural and design firm and another company selling essential oils and cleaning products. The risk of consumer confusion is minimal when you target different client bases.

What Does a Trade Mark Search Involve?

A trade mark search can involve a:

  • clearance search of the Australian trade marks register; and
  • search of the marketplace for the name. 

Limiting your search to only checking the trade marks register will risk not identifying unregistered trade marks that others may use in the marketplace. If you are aware of a competitor using the same or similar trade mark to the one you want to adopt, you should let your trade mark attorney know so that they can advise you further.

If you have any plans to expand your business internationally, it is worth searching the global brand database or trade mark registers in countries you may trade in. You do not want to be in the position of having built up a successful business and brand in Australia, only to find that your trade mark already exists in the USA, and you plan to start selling your goods there later this year. Diligent searches will help you secure a unique name and increase the longevity of your business venture. 

Key Takeaways 

The best time to perform a trade mark search is before commencing trade under your chosen business name. Conducting a trade mark search can help you strategically develop your brand name and reduce the risk of infringing upon anyone else’s intellectual property rights. However, if you find another trader using your intended name, or you are unsure whether it is possible to register your desired name as a trade mark, you should speak to a trade mark lawyer or attorney. To discuss your options, contact LegalVision’s intellectual property lawyers and attorneys on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

What is the difference between a business name and a trade mark?

A business name is a trading name registered with ASIC and the ATO. A trade mark is an intellectual property right registered with IP Australia that grants you an exclusive right to your brand name. 

Why should I perform a trade mark search?

You should perform a trade mark search if you want to secure the rights to a unique name, avoid trade mark infringement and minimise the risks of objection or opposition through the trade mark application process. 

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Get a Free Fixed-Fee Quote

If you would like to receive a free fixed-fee quote or get in touch with our team, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer