Most businesses will invest significant time, effort and resources into creating a new brand or trade mark. This process usually includes engaging a designer, a marketing agency, manufacturers, snapping up the right domain name, and many more steps that can be time intensive and expensive. However, the legal aspect is often missed in the excitement and hype of launching new products and services. Before releasing a new brand onto the market, it is important to first consider the implications and risks that may be involved in using a new trade mark.
The most effective way to mitigate your risk in commencing use of a new trade mark is through conducting comprehensive trade mark clearance searches. Undertaking the appropriate investigations can significantly reduce your business’ exposure to legal disputes, rebranding expenses, and even unsuccessful applications before the Trade Marks Office.
Clearance Searches
Comprehensive clearance searches cover investigations into whether the proposed new brand/trade mark is:
- too similar to a trade mark application or registration already on the official Trade Marks Register. Appropriate searches of the Register go well beyond identical trade marks to comparing the aural, visual and conceptual similarities of trade marks, as well as whether there is sufficient similarity with the respectively claimed goods/services;
- sufficiently inherently adapted to distinguish (i.e. not descriptive) for the purposes of registration. This issue most commonly arises in relation to word or phrase marks, and the assessment of whether a word or phrase is descriptive of the claimed goods/services is far broader than just a direct correlation;
- too similar to an unregistered trade mark with a significant reputation. This is an important aspect of searches, as rights in a trade mark are not only obtained through registration, but also through reputation. These rights are also known as “common law” rights. The searches conducted, generally speaking, cover a variety of common online databases.
Avoid Breaching Trade Mark Rights
The results of comprehensive clearance searches should provide a clear picture of whether the proposed trade mark is too similar to another registered or unregistered trade mark. If so, being aware of this before launching your brand and choosing not to proceed will prevent you potentially infringing on the rights of a registered trade mark, being in breach of the misleading and deceptive provisions under the Australian Consumer Law, or passing off. Although having to adjust or rebrand is not the preferred outcome, doing so can avoid unnecessary and costly legal disputes.
How Clearance Searches Save Time and Resources
Trade marks are often one of a business’ most valuable assets. Therefore, conducting comprehensive clearance searches assists in ensuring that your proposed trade mark can provide your business with a distinctive and valuable asset from the outset. This will provide a greater level of commercial certainty and reduces risk for your partners and potential investors.
On the other hand, if use of a proposed trade mark carries significant risk of breaching another business’ trade mark rights, discovering this prior to launching your goods/services also means that you avoid wasted investment in advertising, packaging, etc.
Improving Prospects of Registration
Comprehensive clearance searches also significantly increase the likelihood of successful registration. You will become aware of any earlier conflicting trade marks or issues of distinctiveness before proceeding with an application for registration of your proposed trade mark. This can prevent significant obstacles your business may have encountered along the way, by, for example, allowing for sufficient modifications to your branding to avoid similarities with other trade marks.
Conclusion
Conducting comprehensive trade mark clearance searches before commencing use and/or seeking registration of a trade mark in Australia:
- protects against legal disputes;
- saves time and resources, providing a greater level of commercial certainty;
- improves the prospects of obtaining a registration; and
- prevents disruption to customer goodwill.
Comprehensive clearance searches are an essential foundation when building a valuable, lasting brand. Contact our trade marks team for more information on clearance searches and how MBIP can help you ensure smooth sailing for your brand.
