Trade mark clearance searches serve the purpose of (a) ensuring that your trade mark is available for registration and (b) that your use of the proposed trade mark will not potentially infringe the rights of other traders with existing and prior marketplace rights.

A properly conducted trade mark search will minimise the risk of objections being raised by IP Australia during the registration process.  More importantly, it minimises the possibility of a legal trade mark dispute arising, at a later stage, from another unrelated trader claiming prior rights to the same or similar trade mark.

Why are Trade Mark Searches Important?

Prevention is better than cure!

A trade mark clearance search will place your business in a position to make an informed decision regarding the eligibility of a trade mark, prior to committing valuable resources to a chosen brand name.  It will avoid placing your business in a position of investing time and money in a business or brand name, which later cannot be registered or is changed as a result of a disruptive trade mark dispute.

A trade mark will not be registered if it is either ‘substantially identical to’ or ‘deceptively similar with’ a prior trade mark registration or application.  These tests of similarity are governed by the Trade Marks Act 1995 (Cth) and Australian trade mark case law decisions.  Our attorneys have the expertise to understand these legal requirements and complexities and apply them to the benefit of your business.

Trade Mark Search Services

We provide a variety of structured trade mark searches tailored to your business’ needs.

1. Trade Marks Register Search

This search of the Australian Trade Marks Register is used to determine if your brand is available to use and register in Australia. It will identify any existing trade marks which may be similar to your brand. The limitation of this search is that it is only of the Trade Marks Register and will not identify any existing unregistered trade marks which may be in use within the Australian market place.  

2. Full Availability Search

As rights in a brand can also be developed through market place use, we recommend the Full Availability Search. This includes a search of the Australian Trade Marks Register as well as structured searches of other available databases for any market place use by other traders of your proposed brand.

Do you have your business name registered?  If so, why do you need a trade mark?

If you intend to trade under a name other than your own personal name, it is a requirement under state legislation that you register the business name with the relevant state authority. However, a business name does not provide legal rights to a name. Hence, registering your business name as a trade mark is also recommended.  

Indeed, it is possible to register a business name and still be infringing another trader’s rights by virtue of its prior trade mark registration.  It is therefore important to have trade mark searches conducted prior to registering your business name to avoid this potential conflict.

Can you conduct a trade mark search yourself? What are the benefits of having an attorney conduct a search?

It is possible to conduct your own search and this can often be a good starting point. However, it is advisable that ultimately a comprehensive search be conducted by a patent and/or trade mark attorney. This is particularly important as a similar, but not necessarily identical, trade mark can still be problematic to your use and registration of a brand. Searches require an in depth understanding of the law and legislation which applies to trade marks.

A trade mark search conducted by Actuate IP will be provided with a search report and advice, outlining short and long term strategies to secure registered rights and brand protection. Importantly, our advice will place you in a position to assess all commercial and legal risks and considerations prior to committing to a course of action.

Place an Online Enquiry  to contact a Trade Mark Attorney or call us on 1300 768 730.