‘Exact Match’ vs ‘Similar’ Searches
When conducting trademark searches, you might decide to look only for names that are ‘exact matches’ of the one that you're considering using. Alternatively, you might choose to cast your net wider, and look for different names that are similar but not identical to your own. In this article, we consider the limitations of looking only for exact matches.
Imagine that you’re about to establish a new hairdressing salon, and you’re thinking about using the name ‘Styleworks for Hair’. You have a trademark search performed on that phrase which comes up ‘clear’, and then you lodge a trademark application with IP Australia. It’s only then that you discover two other traders with similar names already registered as trademarks: ‘Styleworx’ and ‘Style Work for Hair’. The existence of these names would probably prevent you from having your trademark registered, and if you decided to use your name, you may well be infringing these marks.
Trademark law isn’t just concerned with names and signs that are the same: it looks to whether things are ‘substantially identical or deceptively similar’. Two trademarks can be considered to be similar if they sound similar when spoken, look similar when written, or even if they are only slightly different in sound and look (e.g. Style Work vs Styleworks). Trademarks can even be considered to be deceptively similar if they convey a similar idea (e.g. the word ‘teddy’ might conflict with another trademark which uses a picture of a teddy bear in the logo).
So when you’re doing a trademark search, or ordering a professional search, it’s important to make sure that the search covers not just the exact name or sign that you’re considering using, but also likely variations of that name or sign.
It’s a good idea to sit down with a trademark attorney and discuss likely variations of your trademark before a search is performed.