1. Will your brand name infringe someone else’s registered trade mark?
2. Is your brand name already being used by someone else?
To get the answer to these two questions, you need to do some searching. You’ll find a quick and dirty guide to DIY clearance searches after the jump.
Why searches matter
The importance of conducting clearance searches is neatly illustrated in this case study.
Briefly, it’s the story of how the very successful launch of a startup came to a grinding halt because of a potential infringement claim. A claim that would have been avoided had the right searches been carried out.
A preliminary point: I recommend that you get a professional to conduct clearance searches on your behalf. A trade marks attorney or IP lawyer will know how to search, what to search for and how to analyse search results. Obviously there’s a cost for this, but it’s money well spent.
DIY searching
Ok, so you want to go down the DIY path. What are you looking for and where will you find it?
Searching for registered marks
First, you’ll need to make sure your name doesn’t infringe a registered trade mark.
You can search the Australian Trade Marks register online for free at: http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start. IP Australia publishes some basic tips on using the search facility here.
What you need to check is whether your brand name closely resembles a trade mark that is already on the register and is for similar goods and services.
Remember that marks don’t need to be identical to infringe. So you should search for things that look or sound similar to y0ur brand (e.g. “Easy-buy”, “Ezi Buy”, “Easy-Bi”, etc).
Common law searches
If you do nothing else, you should search the trade marks register. But be aware that searching the register is only half the story.
The other half of the story involves searching for marks that are not registered but are in use in the market that you’ll be operating in. This is often referred to as a “common law search”.
If your brand name (or something similar) is already being used by a business selling similar goods and services, they could make a claim against you for misleading and deceptive conduct or passing-off. They can do this even if they haven’t got a registered trade mark.
Here are some free search tools for a DIY common law search:
The ASIC National Names Index will return company names, business names and association names. Very limited information is provided using this free search however.
The Australian Business Register at www.abr.business.gov.au allows you to search business names and names attached to ABNs. A little bit more information is available through an ABR search compared with the free ASIC search.
Finally, a common law search should include a general internet search using Google or your preferred search engine. Check out the first 100 results of your search. Limit your search to geographic location if you’re pulling up too many irrelevant pages.
A search in time …
My regular advice to clients is that putting in the hard work at the brand design stage is the key to building a solid legal foundation for your brand.
Conducting comprehensive register and common law searches before launching a new brand can avoid a lot of hassle, wasted money and potential court action down the track.
Tags: ATMOSS, clearance search, trade mark searches
