Preliminary checks
Before committing to a new brand for your services or products, it is important to carry out some due diligence. You may have put together a shortlist of potential marks (as per our “Choosing a Trade Mark – Part 1” blog). In addition to making sure a trade mark is available, you should make sure that your preferred brand is not likely to encroach on any earlier common law rights. As a prospective trade mark applicant you should also consider whether your preferred domain, business name and social media handles are available. We recommend:
1. Seeking a preliminary opinion from an Attorney about whether the proposed trade mark is likely to be deemed distinctive in respect of the goods or services of interest;
2. Carrying out some general Google searches to see whether any other traders are using the same or a similar brand for their same or similar goods or services;
3. Check whether the preferred business name (or company name) is available for registration;
4. Check that the preferred domain is available; and
5. If there is an intention to market goods or services on social media, check whether the preferred handles are available on platforms such as Facebook, Instagram, Etsy, etc.
Trade Mark Searches
Specialist trade mark searches may be undertaken by your attorney to determine whether there is a likelihood of conflict before applying for registration. Deciding whether two marks conflict is a subjective question that considers the visual impression, sound and meaning of two marks. To gauge whether there is likely to be a potential conflict, a trade mark registrability search should be undertaken.
There are usually three search options available, depending on the budget available:
1. The cheapest search is an exact match search of the Trade Marks Office Register. This type of search will locate previous registrations or applications for trade marks containing an identical word or phrase, but may not identify all marks considered to be similar during examination.
2. At the next level, the Trade Marks Office Register is reviewed for marks including similar words or phrases which are potentially conflicting.
3. The most comprehensive registrability searches include searching the Register for identical and similar trade marks, and also searching for unregistered (common law) trade marks that are similar. Searching for unregistered trade marks involves general internet searches, searches for various other naming registrations such as business and company names, domains etc.
If the preliminary checks are favourable, it is advisable to get your business (or company) name registration and trade mark registration finalised as a matter of priority. After this, preferred domain names and social media handles should be secured.
If you have any questions or require assistance in relation to your trade mark, please contact the Trade Marks team on 07 3369 2226 or at mail@mbip.com.au.
