Before you settle on a name it’s very important to check that no one else already has rights to the name, in particular, registered trade mark rights. Be sure to check that the name you have in mind won’t conflict with some one else’s trade mark registration, or existing trade mark application, before you go to the trouble and expense of paying for signage, stationery, website development etc for your new business. Searches of the IP Australia trade mark database can be performed to gauge the risk of an infringement arising. Working out whether or not there is a risk of infringement arising can be difficult and you should seriously consider having a trade mark attorney advise you.
The consequences of not performing preliminary clearance searching can be very serious. If you go ahead with the name without checking and it turns out that you do infringe someone’s pre-existing trade mark rights then you may end up having to pulp your stationery, take down your signage and possibly even give up your domain name.
It’s also possible to infringe other people’s unregistered trade marks under the common law tort of Passing Off and to fall foul of the Competition and Consumer Act 2010 (which has replaced the old Trade Practices Act 1974) if you choose a name that causes customers to be mislead into thinking that you’re associated with another business of the same name. Searches of the Yellow Pages and Internet search engines, for example, can help to gauge whether or not there are other businesses trading with the same name in the same goods or services.
You should also be aware that not every name or logo is registrable as a trade mark even if no one else has already registered it in their own name. In particular, if your name or logo is directly descriptive of the services or goods that you trade in , then it’s likely to be difficult, if not impossible to obtain trade mark registration. I have written an article about selecting distinctive trade marks to help people understand and avoid this problem.
Unless you will be trading under your full name, your name including middle initials or your registered company name, then you must register your business name with ASIC. If someone else already has the trading name registered as a business name then ASIC may decide not to register it, in which case you won’t be able to legally trade under the name whether or not you have a trade mark registration.
So, before investing in signage, domain names, websites, stationery etc, based on your new business name:
1. Check if the name you’re considering would be at risk of infringing anyone else’s pre-existing trade mark rights.
2. Apply for business name registration with ASIC and wait to see if it is accepted before adopting the name.
3. Choose a name that has good prospects for being registered as a trade mark.
4. Perform searches, including Yellow Pages, ASIC company name and Internet searches to gauge if the name you’re considering would conflict with someone else’s unregistered trade mark rights.
5. Assuming that you have selected a distinctive name, which is recommended, then seek trade mark registration.
A trade marks attorney is a specialised intellectual property professional who is qualified to represent applicants in front of the Australian Trade Marks Office (IP Australia).
In Australia, a trade marks attorney is a separate qualification to being a lawyer or solicitor. IP protection can be quite complicated and a trade mark application must be prepared correctly in order to protect your brand and to allow you to enforce your rights, if necessary.
In addition to trade mark clearance searches, drafting, lodgment, examination, opposition and enforcement matters across all local and international jurisdictions, a registered Trade Marks Attorney can advise on what aspect of a trade mark would be best registered to maximise the effectiveness of the registration.
Due diligence and clearance searches
Prior to filing a trade mark and before committing to a new brand, we recommend investigation as your first step to determine whether a trade mark is available to use. To avoid infringement, we recommend conducting specialist clearance searches which cover identical and similar trade marks filed with IP Australia. Specialist trade mark searches may 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. There are three main search options, depending on the budget available:
$ 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.
$$ At the next level, the Trade Marks Office Register is reviewed for marks including similar words or phrases which are potentially conflicting.
$$$ 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 outcome of these searches are favourable, we advise clients to attend to business (or company) name registration and trade mark registration as a matter of priority. After this, domain names and social media handles of interest should be secured.
In Australia, there is a five to seven month delay between the filing of an application and the examination of same. After examination has been completed, the Examiner will either issue an Examination Report or a Notice of Acceptance. If a Notice of Acceptance issues, the application will be advertised as accepted and third parties will have two months from the date of advertisement to oppose registration of the trade mark. If registration is not opposed, the trade mark will proceed to registration.
Accordingly, provided an adverse Examination Report is not issued and registration of the trade mark is not opposed, a trade mark may proceed to registration in approximately nine months.
Trade Mark Oppositions are not court proceedings, but are dispute proceedings conducted by the Trade Marks Office (IP Australia). There are several evidentiary stages whereby each party is able to support their case by submitting written evidence.Many oppositions are resolved during the process and the disputing parties reach a settlement. If settlement is not reached the opposition will be resolved with a Hearing, and a Hearings Officer makes a decision as to whether or not the opposition has been successful.
When a trade mark application is accepted by IP Australia, it becomes open to opposition by third parties/a competitor, for a two month period
The third party needs to have solid grounds/reasons for opposing your mark – for example they may allege that you are not the true owner of the trade mark or, if they have a similar mark, they may allege that consumer confusion will arise if you are allowed to register your mark due to their reputation in their similar mark.
You may only use the “R” symbol when your trade mark is registered. For trade marks you are using that are not registered, you are not legally required to use a symbol. However, we strongly recommend that owners use the “TM” symbol in this instance, to put the public on notice that you have some proprietary interest in the trade mark in relation to your goods and services. This may assist your case if you need to enforce unregistered rights against a copycat.