A SEARCH IN TIME

If you are selecting a trade mark for a new business or product, making sure that the trade mark is available for you to use is paramount.

From experience we find that one of the most common errors people make is not conducting a search of the Australian Trade Mark Register before adopting a new mark. The search is done to ensure that the mark selected is available for use and registration and does not infringe any existing third party trade mark registrations or pending applications upon registration. Failure to do so can lead to dire consequences.

There are many stories of businesses who adopt a new mark expending significant resources and dollars on artwork, smart packaging, advertising materials, signage and excitedly launching the business or product only to be later hit with a nasty letter threatening legal action from the registered owner of the same or very similar mark. Often in such cases, the only option for the business is to stop use of the mark immediately or after an agreed period of time. Either way, the impact on the business, especially a small or start-up business, is usually significant and can be fatal to its survival.

Since exclusive rights to a trade mark can also be acquired at common law through use without registration, it is important to also check the relevant marketplace to make sure no party is out there using the same or very similar mark for the same or very similar products or activities.

Many people assume that registering a business name or company provides exclusive trade mark rights and is the official tick that a name is available for use as the name of a business or product. Unfortunately, it does not. A company or business name registration does not provide the same exclusive rights as a registered trade mark. In addition, when ASIC or the state Fair Trading offices register a company or business, they do not cross check the Australian Trade Marks Register to see if someone else has registered trade mark rights to the name in question. That is completely left up to the individuals or entities registering the name.

If you are providing your goods or services in an overseas country, you should ensure that your trade mark does not infringe upon the trade mark rights of third parties in that country before any sale or offer for sale occurs. Failure to do so can lead to loss of business reputation, not to mention financial loss, if products or services have to be recalled or withdrawn from a market because of pre existing rights.

At EKM we recommend that a trade mark availability search be conducted before any use, even preliminary use, or artwork for the mark commences. If you have any queries in relation to trade mark searches, please contact us.

If you would like any further information in relation to this article, please do not hesitate to contact Jennifer McEwan