One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Trade Mark Search
Conducting a trade mark search
When introducing a new product into the market, the trade mark is one of the first aspects that is considered. After all, your trade mark represents your business identity, and thus, this intellectual property should be protected.
In the preliminary stages of developing a trade mark, you need to ensure that the mark you choose will not be infringing on somebody else’s earlier rights. If infringement is found, you may end up paying monetary compensation to the party being infringed and doing costly rebranding. You may also incur charges if your trade mark receives an Examination Report based on a prior trade mark application/registration and you require professional help to respond to this report. Alternatively, you may also end up having your resources drained if you have to go through an opposition process. Such occurrences may be avoided if a thorough trade mark check is conducted in the preliminary stages.
Whether to conduct a search prior to developing and applying for a trade mark by yourself or employing another party to do so is a question of a trade-off between cost reduction and risk. You may think that by conducting a D.I.Y. search you are saving some money, but lack of extensive knowledge of clearance searches, legislation, and practice may result in an ineffective search and offer virtually no assurance of filtering possible conflicting trade marks that are currently in the market.
Is it advisable for you to conduct your own trade mark search using free resources? The word “free” in this case is misleading; while the actual search engine may be free, the time, human resource, expertise, and analysis that such searches and their results require are not. Searches without a clear-cut direction can output thousands of entries, and sifting through all of these trade mark search results is time consuming, especially if you are unaware of what you’re looking for. One may end up going around in circles, and a wrong decision based on your search results may result in considerable financial loss on your end in terms of rebranding cost. Ultimately, you may end up losing far more than the cost of hiring a trade mark attorney in the first place.
A trade mark attorney can assist you by conducting trade mark searches in national and foreign trade mark registries and may provide guidance in relation to common-law marks in use in the market, which are not included in the government trade mark registers. As a part of their search, trade mark attorneys formulate query prompts utilising other possible forms of the trade marks, such as deliberately misspelled words, and can also check for linguistic suitability of your mark in foreign markets (like translations and transliterations for China). Of course, no system is 100% infallible, but these searches are typically customised to suit your proposed trade mark and can minimise the risk of your mark infringing on a registered trade mark or an established unregistered trade mark in the market.
Purposes of a trade mark search
Depending on the aim, trade mark searches can be conducted for different purposes.
Availability (clearance) search
This type of search is performed to see whether your trade mark is identical or deceptively similar to existing marks in the register; in this case, if your trade mark is found to be identical or deceptively similar to a previously registered/applied for mark, your trade mark may be infringing on prior rights and thus should not be adopted.
To check distinctiveness
Descriptive trade marks, which describe a particular good or service can be granted protection to a limited capacity (for example: soft in relation to cotton products are not registrable, whereas a “Soft” figurative trade mark is registered in relation to cosmetics). Meanwhile, generic trade marks, which use the actual product or service, cannot be protected at all. By conducting a search, a trade mark attorney will be able to assess the strength and level of distinctiveness of your mark.
Watching searches serve the opposite function as an availability search in that the expected outcome is to find other marks infringing on your registered mark. Regular monitoring of newly filed trade mark applications is needed to minimise the damage that possible trade mark infringement can cause your business.
Domain name search
While separate from availability searches, trade mark searches are also conducted to check the availability of domain names that are typically connected to the owned trade marks. The outcome of this searches may help the trade mark owner decide whether to purchase the domain or other course of action.
Alleged infringement needs to be investigated before your solicitor can issue a Cease and Desist letter to another party; otherwise, groundless threats may result in incurred damages payable to the accused party.
Response to adverse reports
When addressing an adverse report from an examiner, evidence of registration of a similar mark or case may support arguments in favour of your application. Of course, presenting such information does not guarantee that the current examiner would make the same decision regarding the relevant trade mark being registered.
Translations of your trade mark into other languages may result in infringement of registered brands in countries that you are considering trade mark registration for potential trading, production, and transport. In addition, the translation of your mark can be socially inappropriate or offensive. These types of searches require trade mark attorneys who are knowledgeable about the local market, cultural and linguistic nuances, and colloquialisms in target countries.
Search elements in trade mark searches
Trade mark attorneys use different information in forming queries in addition to identical words or devices in the registered and pending trade marks. Possible considered combinations of elements used in search queries include added prefixes and suffixes, irregularly pluralised forms, punctuations such as apostrophes, deliberate misspellings, similarities in phonetics and word play, names, abbreviations, synonyms, alternative spellings, and equivalents in other languages (transliteration), and equivalent visual devices.
Nice Classification (for Australian and international searches)
Trade marks are distinctly associated to the goods and services that they represent or are intended for use. In the Nice classification, trade marks are categorised into 45 classes, with classes 1 to 34 representing goods and classes 35 to 45 representing services. Trade marks may be registered under multiple classes. Infringement may occur when identical or confusingly similar marks are registered under the same or related classes, so searches targeted toward finding these marks are used to verify if your mark infringes on others or if other marks infringe on your registered marks.
Vienna Code (for international trade mark searches)
The Vienna code (design search code), which is shorthand for the International Classification of the Figurative Elements of Marks, was conceptualised to standardise the images in trade marks for the description and indexing purposes. This approach makes it easier for the one conducting the search to find similar marks by entering the code pertaining to the predominant figures in the trade mark. The figure elements are classified into 29 different categories, such as Category 1 for celestial bodies, Category 2 for human beings, and so on. Each category is further refined into several levels of subdivisions that most closely approximate the figurative element in the trade mark. The conventions and the descriptions of each class and subclass can be confusing, so the advice of a trade mark attorney specialising in international filing is invaluable in conducting trade mark searches using the Vienna code.
Trade mark search resources
In addition to the search engines of available government trade mark registers, such as that of IP Australia and WIPO Global Brand database, which reflect registered trade marks in Australia and worldwide, respectively, other resources should be used to ensure that the trade mark search is as comprehensive as possible. The trade mark registers of other countries are not available or may require certain fees or subscription. Other search tools utilise complicated query algorithms. Moreover, your trade mark attorney may use online search engines, domain directories, and social and business registries that are useful in identifying common-law marks being used in trade.
Searching trade marks
A trade mark search offers insight into the competitive brand space and can be helpful to conduct either at the time of deciding on a trademark or before filing a trade mark application. If your trade mark application is defined incorrectly, it may be rejected or if accepted, offer you inadequate protection. This could result in missed business opportunities and wasted money. A trade mark application should be carefully prepared before filing. A trade mark search can be used to identify and resolve potential issues in your trade mark application before you apply for registration. Based on the results of the search, you may wish to reconsider the trade mark or even the entire brand to be able to obtain trade mark registration.
A trade mark search can reveal:
- pending or registered trade marks that are identical or similar to the trade mark being applied for;
- whether the text or logo in your trade mark application is already being used;
- whether the text or logo in your trade mark application is eligible for protection; or
- possible trade mark infringement by the applicant if the trade mark is currently being used in commerce.
As trade marks can take many different forms (e.g. text, images, sounds or smell) an online search for pending or registered trade marks requires special techniques to conduct thoroughly. For example, if you wish to register a logo, a trade mark attorney will search for trade marks with image elements similar to those in the logo you wish to register.
A trade mark attorney will also be more familiar with common terms used in the description of marks within a trade mark application, thereby capturing more search results that you may miss in your own search.
More importantly, a trade mark attorney can analyze the search results, and provide recommendations on how to resolve issues discovered by the trade mark search.
We can carry out a trade mark search for you in order to advise on options for registration. Our experienced trade mark attorneys, based in Sydney and Melbourne, can:
- Perform a detailed trade mark search for you;
- Expertly analyze the results of the trade mark search;
- Provide recommendations for trade mark protection based on the results of the search; and
- Help you overcome/negotiate any potential issues discovered during the search.
Trade mark searches can serve multiple functions depending on the ultimate goal of the party conducting the search. However, without relevant experience and knowledge of the available resources, trade mark search can seem like a labyrinth with no way out. By contrast, trade mark attorneys have the training, experience, and resources to conduct relevant searches and suggest possible resolution approaches in the event of trade mark conflicts, thereby minimising your effort, the risk of missing out on other conflicting marks, and the potential cost of overlooking these marks down the line. With all factors considered, contacting trade mark attorneys may just be the more cost-effective and efficient approach in conducting your trade mark search.