FOR IP PROFESSIONALS

Information about searching

Searching is not as simple as it sounds

Trade mark searching requires skill and persistence. It is usually not enough to merely search for a trade mark identical to one you want to use.

For any thorough search you need to consider how trade marks might look and sound. If your proposed product name is 'Tomcat' you would need to know about trade mark registrations for 'tomkat' and 'thomcat' because they are pronounced exactly the same even though the spelling is different. Even the term 'tomrat' may sound too similar to 'tomcat' to be acceptable as a trade mark.

Determining who owns a trade mark

You may need to find out who owns a trade mark if you want to:

  1. obtain a licence to use that trade mark
  2. buy the trade mark
  3. loan money to the owner of a valuable trade mark and then take a mortgage over it.

The Trade Marks Register records the names of entities that own registered trade marks. If a third party with an unregistered interest owns or has an interest in a trade mark, it will not appear on the register.

Determining if a trade mark has been mortgaged

All security interests such as mortgages over a trade mark must be recorded by the secured party on the national Personal Property Securities Register. The PPS Register can be searched to determine whether there is a mortgage over a trade mark. As of 30 January 2012, the right of the registered owner to deal with the trade mark is limited only by those claimed interests that have been recorded in the PPS Register. Existing security interests recorded on the Trade Marks Register will remain but are of no legal effects. We will continue to record new claimed interests on the Trade Marks Register if claimants wish to receive certain notifications under the Trade Marks Act 1995. All interests currently on the Register of Trade Marks in a specific name can be identified by using the ATMOSS system.

If the trade mark owner is a company, the mortgage may also have been recorded on the Register of Company Changes. You may also wish to search this register to determine if a trade mark has been mortgaged.

Determining if a trade mark registration has lapsed

The Trade Marks Register records the status of each trade mark registration. A registration will lapse if the required maintenance fees are not paid.

Checking that your IP is not being infringed

You can conduct searches to see whether your IP is being misused or adversely affected in any way.

You can employ a watching service to carry out this type of search for you. It is a regular search of the Trade Marks Register that looks for applications to register trade marks similar to yours. If anyone intends to introduce a product name or logo that you believe may cause confusion with your trade mark, the watching service will alert you to the fact and give you time to protest that application.

Understanding what the trade mark covers

Just because someone has already registered a trade mark identical or similar to your proposed product name, it does not prevent you from using or registering it. This is because every trade mark registration and application has an associated description of the goods or services covered by the registration or application. Another name may be identical to yours but the product or service it is applied to may be totally different.

If your proposed product name is 'Tomcat' and your product is sleeping pills, a registration for 'Tomcat' that covers industrial air conditioners only, is unlikely to cause you concern.

If a conflicting registration has a broad description of goods or services similar to the description of your product or service, it does not necessarily mean that you cannot use the trade mark.

You can apply to have the trade marks register rectified and have the description of goods or services being limited changed to those actually provided under the trade mark. If a trade mark registration for 'Tomcat' covers 'computer equipment' but the trade mark owner only manufactures keyboards, you could apply to rectify the register by limiting the description of goods to 'computer keyboards'. By limiting the description of goods you may then be entitled to register 'Tomcat' as a trade mark for mouse mats.

Combination marks

You may want to register a trade mark that is a combination of words and a logo. This is known as a 'combination trade mark'. In this case you may choose to register the words as a separate word mark as well as the logo. This will give you the broadest possible protection for a combination trade mark. It also enables you to retain protection for the words in your combination trade mark even if you change your logo.

Common law exceptions

An owner may have a common law usage of the name or logo.  This means that you should conduct a common law search of names and logos actually used in Australia, in the relevant industry.

This may include searches of:

  • Business Names Registers
  • Company Names Registers
  • Internet Domain Names Databases
  • World-wide web search engines and directories
  • Product catalogues
  • Trade magazines.

Professional search companies can help you conduct common law searches and IP professionals can provide you with specific assistance or advice.

Note: A search of the Business Names Registers, rather than the Trade Marks Register, is not sufficient to determine whether or not a name is available for use as a product name.

Web addresses

Web addresses should be considered when branding. A professional adviser may need the following information to conduct a thorough search:

  • your proposed product name or logo
  • alternative names or logos
  • possible variations that you may use in the future
  • a list of all the goods or services that you intend to provide under that name or logo
  • whether you have already started using the name or logo, and if so, the date of first use, and
  • whether you want a register-only search or a full search including common law uses.

Choosing a new company or business name

To find out whether the company or business name you have selected is already being used by another business, you can search the company and business names register as a first step.

If you intend to use your company or business name as a trading name, you should also search the Trade Marks Register. Be aware that obtaining company or business name registration does not mean you are entitled to use it to market your products and services.

'Passing off' and misleading or deceptive conduct

Searching the trade mark register will not protect you from infringement under common law for 'passing off' or for misleading and deceptive conduct.

'Passing off' means to wrongfully use someone else's business reputation resulting in harm to their business or goodwill.

Note: If someone has been using an unregistered trade mark for a sufficient period and has built up a reputation in that trade mark, they may be able to prevent you from using the same trade mark, regardless of whether or not you have registered it.

Last Updated: 23/11/2013

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