CHAPTER 2 – PRELIMINARY SEARCHES ARE THE GROUND WORK

FROM THE INITIAL IDEA TO A WELL KNOWN TRADE MARK- A LONG WAY TO GO

Before committing to protect your brand by registration of a particular trade mark it is important that you conduct a comprehensive search to make sure the trade mark you want to use is available. A trade mark search will disclose both registered trade marks and trade marks applied for.
Conducting a preliminary search for identical and deceptively similar registered trademarks in identical or similar classes of goods and services has benefits three ways in that it

  • identifies whether there is a risk of trade mark infringement associated with adopting the proposed mark and
  • a search provides an indication of the likelihood of being able to secure a trade mark registration for the proposed mark and
  • it gives you a comprehensive overview over the currently existing competitors in your field of business, as your competitors are likely to have registered trade marks as well.

It is self-evident that it is sensible to have an infringement/availability search conducted prior to a final decision about the implementation of a new business or company name are made or significant funds being expended on pre-launch marketing and labelling. If it is intended to export a product or service bearing a trade mark to another jurisdiction it is equally important to conduct an infringement/ availability search in that jurisdiction and to seek trade mark registration where available. One has to bear in mind that a company or business name registration with ASIC cannot replace a proper due diligence on the avoidance of any possible infringement of existing intellectual property of your competitors or other market players. The Australian Securities and Investment Commission will not allow for a business name or company name to be registered that is deceptively similar to a currently registered name. This is to avoid misconception in the relevant public about the identity of a particular business or company and its products or services. However, ASIC only looks at the existence of business or company registrations, but not at registered trade marks. It may well be that a company or business can obtain its registration in absence of similar or identical registered names. At the same time this gives no indication about the brand names that are used by other firms to market their goods and services. So, commence trading under a name that is not securely registered as a trade mark gives rise to the potential risk of infringing existing IP rights and this may lead to a liability for damages and thus to a serious harm to the business or company both in financial respect and in respect to the reputation amongst existing or potential new customers in the industry. Imagine, you have to tell all your clients that you have to change your name and have to provide detail with regard to sales made to them to your competitor because you have breached its trade mark rights.. This is not only embarrassing. It could also affect your future business, especially when your business is based on referrals

A preliminary check on existing trade mark rights is therefore crucial as it can avoid this scenario.

Once the results of a search indicate that a proposed mark is available to be used and registered it is then sensible to immediately file a trade mark application to ensure that another party does not file a conflicting application in the interim, an immediate application in the home country or surrounding key market regions should be filed. The validity of the outcome of a trade mark search last only 1-2 days. It is recommended to file in Australia and Internationally in all countries that you identify as your key markets. It is recommended to cover foreign countries by lodging a trade mark application with World Intellectual Property Organisation (WIPO) in Geneva under the Madrid Agreement Concerning the International Registration of Marks or the The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks — the Madrid Protocol. These two Agreements on trade mark protection are International treaties in the field of intellectual property comprising the Madrid System for international registration of trademarks. While an International Registration may be issued, it remains the right of each country or contracting party designated for protection to determine whether or not protection for a mark may be granted. Once the trademark office in a designated country grants protection, the mark is protected in that country just as if that office had registered it. The Madrid Protocol also simplifies the subsequent management of the mark, since a simple, single procedural step serves to record subsequent changes in ownership or in the name or address of the holder with World Intellectual Property Organization’s International Bureau. The International Bureau administers the Madrid System and coordinates the transmittal of requests for protection, renewals and other relevant documentation to all members.

Brands are usually protected via extensive marketing campaigns and it stands to reason that you would wish to protect that investment. From a trade mark perspective, this is
best done by:

  • ensuring that the trade mark does not conflict with the rights of other entities,
  • seeking and obtaining a trade mark registration as soon as possible,
  • correctly using a trade mark to ensure that it does not become recognised as the name of a product or service (ie become a generic term),
  • maintaining the trade mark’s reputation by maintaining the price and quality of the products or services in respect of which the trade mark is used,
  • preventing registration of identical or deceptively similar trade marks for the same or similar goods or services and
  • preventing use of identical or deceptively similar trade marks on the same or similar goods or services.

The prevention of use of identical or deceptively similar trade marks on the same or similar goods or services is most important because if another party adopts and uses an identical or similar trade mark and is permitted to use that mark, the party will gradually derive its own rights that, in time, will potentially permit the party to obtain its own trade mark registration. One option to obtain such rights is to rely on the “honest concurrent use” provisions of the Trade Marks Act 1995. The use of an identical or similar mark by another party will also potentially dilute the commercial power associated with the original trade mark and possibly lead to deception and confusion arising in the marketplace.
Once a party obtains a trade mark registration it has a statutory defence to infringement unless the mark has not been obtained in “bad faith” and thus may use the trade mark with impunity. Once a trade mark registration has been obtained, the only way of preventing ongoing use of the mark would be to seek cancellation of the registration via legal proceedings.

So prudent trade mark owners should take steps to prevent ongoing use and registration of identical or deceptively similar trade marks by other parties in respect of identical or similar goods or services. The best way to do this is to conduct a periodic watch of the Trade Marks Register for any applications which might potentially represent a conflict. Such a watch has
dual benefits in that it

  • potentially identifies at an early stage that a party has commenced use of a similar mark or is proposing to commence use in the future so that intervening steps may be taken by the trade mark owner and
  • places the trade mark owner in a position to file a Notice of Opposition in the event that the application is accepted during the examination process. While it is important to maintain a watch on the Australian Register, it is also desirable to maintain a watch in those countries where an Australian business has export interests.

The late is particularly important for countries and systems where examination does not include a search of the Register for prior conflicting applications/ registrations such as, for example, Germany, France and Italy, as well as the European Community Trade Mark system.

The renown and goodwill associated with a trade mark or a brand name, as it is often referred to, can represent a valuable asset within a business and thus contribute to the value of the
business or company.

It is important to keep your trade marks strong.