What is the best way to search trademarks? A competing trademark does not have to be identical to yours to create a problem for your use and registration of your trademark. A pre-filing trademark clearance search is a search of the government trade marks register (and other key databases) designed to locate trade marks which are similar to your proposed trade mark and may pose a possible threat to your use and registration. They are best conducted before you commence use of a trade mark or file a trademark application. A well conducted search report will identify any potential problems with registering your trade marks, possible infringement concerns with using your trade marks, and where available, provide strategies to get around those issues.
Our trademark clearance search and report typically cover the following registers:
- Australian Trade Marks Register: Identifies any pending or registered trade marks in Australia similar to your proposed trade mark;
- ASIC database: Identifies registered company names which are identical to your proposed trade mark;
- ASIC Business Register: Identifies registered business names which are identical to your proposed trade mark;
- Yellow Pages and White Pages index: Identifies trading names which are identical to your proposed trade marks.
If you are interested in launching your brand overseas, we may also recommend that we search trademarks in key overseas Trade Marks Registers to ensure that you are able to secure consistent trade mark rights worldwide rather than face the risk of having to rebrand in overseas markets or facing a trade mark contest due to previously registered trade marks in those jurisdictions.
Can you do a free preliminary search? We routinely will conduct an initial free identical hit search before commencing a paid search to ensure there aren’t any obvious obstacles which would prevent your mark from being registered or which might constitute an infringement concern. This is to ensure that you are not wasting time and money in chasing a rabbit down a hole where the concern is readily apparent. Our further more comprehensive search will then delve deeper to identify possible threats or concerns not just based on identical marks, but also substantially identical or deceptively similar trade marks which could still prevent registration.
Can I just search trademarks myself? Yes. However, whilst it is not difficult search trademarks yourself, you may not necessarily know what to look for or how to assess whether or not a trade mark would be regarded as being too close or far enough removed from your trade mark. Further, if there is a problem, you may not be able to identify possible ways to get around it. An experienced Trade Marks Attorney will have significant knowledge of how the rules are likely to be applied in various situations based on the large body of rules established in comparative trade marks opposition and Federal Court proceedings involving comparison of trade marks. If you’d like to test out the Trade Marks search database (it’s very user friendly and probably one of the best you’ll find in any country!), it can be found here.
What will the report tell me? Our reports are easy to understand and straightforward but also contain valuable information which other firms may not provide in their reports. The report will identify all identical, substantially identical or deceptively similar trade marks, the level of concern for your application in terms of registration and infringement risks and strategies to get around those issues if available. We will also identify any concerns with use based on unregistered use of your trade mark based on our company, business and phone directory searches. Some possible strategies to avoid registration or infringement concerns may include:
a. amending or tweeking your trade mark prior to filing;
b. filing for your trade mark in a different format;
c. carefully drafting your specification of goods and services to avoid similarity with other marks;
d. applying to remove possible citations from the Register where they appear to be in disuse;
e. approaching owners of cited trade marks for consent or co-existence.
If you would like to know whether your trade mark can be registered, please contact Andrew Petale at firstname.lastname@example.org or submit your enquiry through our online form on this page. We will come back to you promptly with a trademark clearance and filing strategy