So you’ve launched an app for an interactive puzzle game named ‘Puzzler’. The app is starting to really gain traction and there are talks of expanding the platform. At this time, you realise you should protect your intellectual property. You’ve decided to apply for a trademark to protect your iconic name, but also the unique ‘PZ’ logo your users have grown to instantly recognise. 

Deciding to register a trademark means that you’ll not only have legal protection for your trademark, but it also signifies that value that you think it has. However, before registering it, you will need to undertake an online search to make sure something the same or similar hasn’t already been trademarked.

What is the Australian Trademark Search?

Part of the trademarking process includes running a trademark search before you submit your trademark to IP Australia for approval. The reason for the search is to make sure that no one has already trademarked the same or a similar ‘sign’ to yours.

Another trademark may be an obstacle if:

  • It is substantially identical or deceptively similar;
  • Covers goods and services that are similar; and
  • The trademark has an earlier application day than your application.

To avoid these issues, IP Australia has a tool which lets you search registered trademarks. Using this tool will show you what’s already registered so you can determine whether you can still register your trade mark. In November 2018, IP Australia launched a major upgrade to its site. Included in this was the search tool for trademarks. 

Formerly known as the Australian Trade Marks Online Search System (ATMOSS), this tool is now simply called the ‘Australian Trademark Search. The tool is more user friendly than before, and also allows for ABNs to be searched as well as providing more details about the status of the trademarks. 

In this guide, we’ll provide you will some tips to get the most out of this interactive tool so you can sleep easier knowing your trade mark is truly unique. 

1. Think about your trademark before you search

Trademarks need to both effectively represent your brand and be recognisable by customers. Before undertaking your search, think about what your trademark is trying to achieve.

Ask yourself the following questions and write down your answers:

  1. What’s the main idea behind my sign? 
  2. What makes it distinctive? 
  3. How would the name be pronounced? 
  4. Does it have the potential to cause confusion in consumers? 
  5. Could it be seen as a variation? 

Knowing your answers to these questions will put your trade mark in perspective and also help you come up with alternate options if the trade mark turns out to be unusable. 

2. Have variety in your search

It’s important when you undertake your search that you don’t limit your search to just your brand name. Search for misspellings, logos, images and anything else you want your brand to include. 

Example

You’ve commenced your search to check if you can register the name ‘Puzzler’. You only searched the name ‘Puzzler’, not any potential misspellings such as ‘Puzzlr’ or ‘Puzler’. You have registered your mark, but now a company which produces jigsaw puzzles for children, ‘Puzzlr’  is enforcing their trademark rights against you. 

To get the most accurate and comprehensive results, you may have to attempt a series of searches to ensure that an identical or deceptively similar image or name to your brand has not been previously trademarked.

3. Picking your class

There are 45 different classes that you may pick from. Classes 1-34 are goods; classes 34-45 are services. To determine what class your services or goods belong to, you may like to use IP Australia’s search engine or browse the list.

You should only pick the classes that refer to your core activity. For example, ‘Puzzler’ would not include class 35 for ‘advertising, business management, business administration, office functions’, although they may be part of its day to day workflow.

Following the ‘Class/es’ rubric, a drop down menu allows you to search either the ‘Single’ category you have selected or the ‘Associated’. An ‘Associated’ search may be more comprehensive although a ‘Single’ search would be an initial step if the number of results is too overwhelming.

4. Check the trademark status

For another trademark to be an obstacle, the trademark must still be valid. If the trademark’s status is registered or pending, it is likely to be an obstacle; if the trademark is refused, removed or never registered, it unlikely to be an obstacle.

You may like to use the ‘Trademark Status’ drop down menu to filter.

Keep in mind that even after conducting a thorough and comprehensive search, your trademark may still be rejected. IP Australia will still need to examine your application.You should consult a trademark lawyer to ensure your search is comprehensive.

5. Remember, it’s just a search

You could be forgiven for thinking that the tool may help you come up with an alternate name (if your original idea has been used). You may also assume that having a search come up ‘all clear’ means your application will be approved.  However, it’s important to bear in mind that the search tool offers no guarantees – it merely exists so you know what’s already out there. 

Remember, always try to have your trademark set you apart from your competitors. Finally, don’t be afraid to go back to the drawing board if there’s something similar already out there. 

Don’t know where to start? Contact a LawPath consultant on 1800 529 728 to learn more about customising legal documents and obtaining a fixed-fee quote from Australia’s largest legal marketplace.

Dominic Woolrych

Dominic is the CEO of LawPath, dedicating his days to making legal easier, faster and more accessible to businesses. Dominic is a recognised thought-leader in Australian legal disruption, and was recognised as a winner of the 2015 Australian Legal Innovation Index.