How to Conduct a Trade Mark Search: A Comprehensive Guide

A trade mark is your brand's identity and helps identify and differentiate your products or services from those of other businesses. Securing your trade mark is essential to protecting your brand and ensuring its success in the marketplace.

​This article provides key steps and helpful tips for a comprehensive search. With the right knowlege and tools, you can ensure that you will have a brand stands out and avoid infringing the intellectual property rights of others.

A crucial step to protecting your brand is to first ensure your brand is in fact unique. So many times businesses launch their brand without conducting a search, only to later discover that an identical or similar one is already in use. Conducting a thorough trade mark availability search at the outset can save you time, money, and potential legal trouble.

A trade mark search can help you:

• Avoid infringement by ensuring your mark doesn’t clash with existing ones, preventing costly legal issues and rebranding.
• Protect your brand identity by ensuring your brand is unique and capable of registration.
• Save time and money by spotting likely conflicts early to make informed decisions before investing in marketing expenses.
• Increase your chance of trade mark registration by identifying and addressing possible hurdles early.

STEPS TO CONDUCT A TRADE MARK SEARCH

1. DEFINE YOUR TRADE MARK AND SEARCH STRATEGY
The first step of the search is to clearly define the elements of your mark. Knowing exactly what you are searching will provide a more focused search and produce more relevant results. Think about the following elements of your mark:

• Name - Aside from the exact spelling, also consider and search for phonetic or other variations and possible misspellings of the name.
• Logo - Search for key elements and unique features of the design and colours (if applicable)
• Slogan -  Search for the exact wording and possible variations of word phrases. 
• Class of Goods or Services - Goods and services fall within a specific class according to the international NICE Classification of Goods and Services, which defines your scope of protection for your registration. For example, class 25 covers clothing and class 9 covers computers and software.

TIP: It’s important to cover all bases and search broadly beyond your exact mark. Search word and image components separately.

2. SEARCH TRADE MARK DATABASES
A trade mark needs to be registered in each country of interest. Start with an initial search using online national trade mark databases and search tools to find identical or similar registered trade marks.

In Australia, it is possible to search for registered and pending trade marks using IP Australia's Australian Trade Mark Search. It is also possible to use TM Checker, an AI-assisted trade mark tool that checks the registrability of a mark and gives an indication of the cost and timeframe for an application.

Some other common national trade mark databases are listed below:
Europe - https://www.tmdn.org/tmview/
United States - https://tmsearch.uspto.gov/search/

​TIP: Think about the countries where you will commercialise your product.

3. COMMON LAW SEARCH
Search for unregistered marks that common law protects due to their commercial use. Finding these can be tricky because official databases do not list them. You can conduct the following searches to uncover unregistered trade marks:

• Business Name Search - Check State business name registries for conflicts with existing businesses.
• Domain Name Search - Use domain name search tools to check for conflicts with existing business websites.
• Google Search - Perform a basic internet search to identify existing businesses or products with similar names or logos.
• Social Media - Check major social media platforms for similar brands.

TIP: Think of relevant media and sales channels for the goods or services and where businesses may promote their brand.

4. REVIEW SEARCH RESULTS
Carefully review the search results to identify conflicts or similarities with registered or unregistered marks. Pay attention to marks that are identical or similar in sound, appearance and meaning. Consider the following:

• Appearance - Look at the visual elements to assess similarity.
• Sound - Consider how the marks sound when spoken.
• Meaning - Consider if the marks convey similar meanings or ideas.
• Industry and Class - Check if the marks are in the same classes of goods and services. Consider if they are used for the same or similar products or services which, may confuse consumers. 

TIP: Consider the geographic scope of where the trade mark is used and registered.

5. DOCUMENT YOUR SEARCH
Keeping a detailed record of all the details of your search is highly recommended. This can be helpful in case of future disputes to show evidence of your due diligence. You should include the following:

• Search Strategy - Document the specific search terms used for official database searches and online searches.
• Search Results - Keep electronic or hard copies of any relevant search results
• Search Analysis - Highlight any potential conflicts and make note of your interpretation of the results

TIP: Professional searches conducted by a trade mark attorney will include a written search report with these details.

6. CONSULT A TRADE MARK ATTORNEY
When in doubt, it is best to seek professional advice. A trade mark attorney or lawyer has the knowledge and expertise in case law to provide a professional opinion on your chances of successful registration. Understanding the law and infringement standards between countries is particularly beneficial when seeking international protection. They will also be familiar with navigating different databases and search tools across countries. 

CONCLUSION

A thorough trademark search is essential for safeguarding your brand, ensuring a smooth registration process, and avoiding legal complications. Please take note of the key considerations for conducting a comprehensive search outlined in this article before you launch your brand or apply for a trademark in Australia, New Zealand, or globally. If you have any questions, seek professional advice for guidance on legal issues and minimising risk.

Our experienced trade mark attorneys will protect your brand's identity and secure its value with the right preparation and strategy. Contact us today at [email protected] or 1300 781 618.