Don’t Ignore the Market Place

Registering a trademark is by far the easiest way to protect your brand. However, it is possible to acquire certain unregistered rights by merely using a brand in the market place over time. These rights include the right to prevent others from registering ‘substantially identical’ or ‘deceptively similar’ marks, and a right to sue unregistered trademark owners for something called ‘passing off’.

When it comes to trademark searches, a search of the trademark databases such as the one maintained by IP Australia (ATMOSS) or the international database (the Madrid Express) will only identify trademarks that are or have been registered, or applications that are pending or which have lapsed or been rejected. These trademark searches won’t identify trademarks which have never been the subject of a trademark application, even though their brands might be prominent in the market place.

It’s possible to purchase trademark searches that only cover registered trademark databases, and which ignore the market place completely. However, be careful about ordering such searches. You may well get an ‘all clear’ and then proceed to use your trademark only for someone to sue you for ‘passing off’. Alternatively, you might lodge a trademark application only to face an opposition from your competitor after IP Australia has accepted your application.

This is why we generally say that you should make sure you’ve got a very good reason for ordering ‘register only’ searches.