Trademark Searching: Know Your Objective
Before conducting any trademark search, it’s important to know the reason for your search. It’s only then that you’ll be able to work out whether the particular searches that you’re planning to do will be adequate for your needs. This post identifies the two main reasons for searching, and what kinds of searches you should be thinking about doing.
Different objectives for searching
There are traditionally two objectives for doing a trademark search: (a) to work out whether using a trademark will be infringing anyone else’s rights, and (b) to work out whether you’d be able to register your trademark if you were to make an application.
There is quite a bit of overlap between what is required for each objective, but they definitely need different types of searches to be performed.
To be sure that you’ll avoid infringing anyone else’s rights, you need to search official trademark registers for both pending and current trademark registrations. In our view you also need to conduct market-based searches for competitors who are using similar (but unregistered) trademarks.
Coming up with a ‘clear’ infringement search means it’s unlikely that there are competitors who are using similar branding. This is great news because you can be confident that you won’t be exposing yourself to a law suit in the future, and that your branding is truly unique.
Similarly, if you want to understand whether your trademark is registrable, you also need to know whether there are any ‘deceptively similar’ or ‘substantially identical’ trademarks in existence. For that reason, you should make the same enquiries as required for infringement searching. In addition, to be registerable, you need to identify whether your trademark incorporates any:
- geographical name;
- known meaning related to kind, quality, quantity, value or intended purpose of the goods or services;
- scandalous/illegal meanings or connotations; or
- confusing or deceptive elements,
that could prevent the registration of the trademark. In addition, the searcher should be aware of specialist legislation that can affect the registrability, including the Flags Act 1953, and the Australian Wine and Brandy Corporation Act 1980 etc.
Searching is a tricky business, but getting your objectives straight before you start will make sure that you’re off on the right foot.