How do I know if my trade mark is free to use and register?

How do I know if my trade mark is free to use and register?

Selecting a new trade mark can be a difficult decision but it is only part of the branding process. You need to determine if the selected trade mark is available for you to use and register, and the only way to do that is by clearance searching. A clearance search will tell you if the trade mark is already being used or registered by someone else. This is important to ensure you are not infringing other’s rights.

To determine if a mark is already registered involves searching the official trade mark register. In New Zealand, this will involve searching the Intellectual Property Office of New Zealand database. In Australia, it is the IP Australia database. As trade marks are national rights, separate register searches are required for each country of interest.

In most countries, unregistered trade marks rights are recognised. So, a search of the marketplace is also required to ensure your trade mark is not the same as someone who may be using a mark but has never registered it.

Searching options

There are a number of different searching options. They are:

    • Full availability search - this is a search for identical and similar marks on the register as well as a cursory marketplace search. This is always the preferred option particularly if you are looking at launching a new brand.
    • Register only search - this is a search for identical or similar marks on the register. This will not pick up if someone has unregistered rights.
    • Knockout search - a search for identical or near identical marks. This will determine if there are any red flags which will be a complete block to your use and registration. Other marks may be located which will require further searching. This option is often useful for those who have a list of potential trade marks and are looking for the mark which will encounter the least issues. It can also be used when wanting to carry out a worldwide search and a full availability search in all countries is not cost effective.

MoranLaw has access to registry databases in New Zealand, Australia and globally.

The benefits of searching

It’s important to search because:

    • It helps you avoid infringing another’s trade mark and being involved in lengthy and costly legal proceedings; and
    • If issues are flagged in the search, it gives you the opportunity to re-brand or alter your mark to avoid objections by the examiner or a third party; and
    • If no issues are flagged in the search, you can start using and investing in the mark confidently without waiting for the trade mark registration process to be completed.

The limitations of DIY searching

When a trade mark owner carries out their own searching, they often fail to do a register search. A Google search is a start, but the most important part is the register search because this is what will tell you if are at risk of infringement.

You can infringe a similar mark as well as an identical one. When carrying out a register search, finding those similar marks is valuable but also tricky. Some registers contain over one million marks. Using the right search strategies is key to ensuring you find the most relevant marks.

Registers vary country to country, so you need to be aware of the differences and shortfalls of the register being searched.

Our trade mark experts are trained in search strategies, including finding all phonetic variations, searching in the right classes of goods and services and being aware of how different databases work.

MoranLaw can advise on which search option is best for you and devise an appropriate search strategy.

Let’s work together