Guide to Australian trade mark searching

In considering whether to use or register a trade mark, it is not only necessary to search the IP Australia Trade Mark Register (database), but a number of other sources of information should be consulted. The following is a simple step by step guide to conducting a basic Australian search using the internet.

Step 1 - Search the IP Australia Trade Mark Register

It is necessary to search the IP Australia Trade Mark Register for the same or similar marks. The Australian Trade Mark On-line Search System (ATMOSS), allows searching of the IP Australia Trade Mark Register. Both words and images can be searched and various limitations selected. For example, usually only pending or registered marks need to be retrieved. An ATMOSS search can be set up to retrieve only these. Also, since trade marks are registered in classes representing their related goods and/or services, an ATMOSS search can be restricted to a select group of relevant classes.

Step 2 - Search for relevant applications/registrations made under the Madrid Protocol

The Madrid Protocol allows, via a single application, the possibility of having a trade mark protected in several countries. It is possible that a relevant trade mark may, under this Protocol, originate in an overseas country and designate Australia. Such a designation may, after some time, appear in the IP Australia Trade Mark Register.

The World Intellectual Property Organisation (WIPO) maintains a database of certain Madrid Protocol Applications/Registrations. This database (called the Madrid Express Database) should be checked along with the IP Australia Trade Mark Register to discover any relevant trade marks that designate Australia, but have not yet appeared in the IP Australia Trade Mark Register.

Step 3 - Search Australian company and business name registrations

It is often necessary to search Australian company and business name registrations for any registrations that use the same or similar words to a proposed trade mark in their name, and which offer similar goods and/or services. Australian company and business name registrations can be searched on the Australian Securities & Investments Commission website. However, it should be noted that information about the goods and/or services offered by these companies and businesses is not freely available on this site. This needs to be determined by other means. For example, the Australian Yellow Pages can be searched, or a company or business name extract can be obtained, at a cost, from the relevant Australian authority.

Step 4 - Search place names

Place names can also be checked to locate any cities, towns, rivers or other geographical features that have the same word or words, to the proposed trade mark, in their name. Australian place names can be searched on the Geoscience Australia website. If international place names need to be reviewed, international gazetteers should be consulted.

Step 5 - Search for trade usage

A broad search for existing use of a proposed trade mark, in a relevant goods and/or service area, is important. Such a search can be conducted by checking for business names in the Australian Yellow Pages and in the Australian White Pages. A general search of internet websites using search engines (for example Google) can also be conducted. The internet can be searched for the names of goods and/or services that are the same or similar to the proposed trade mark. Something to remember here is that the internet covers the whole world. You may only need to check for relevant goods and/or services that are available in Australia.

Other things to search

The search areas mentioned previously are by no means comprehensive. Depending on the specific nature of a proposed trade mark, other things may need to be checked. For example, a proposed mark may need to be checked to see if it is a common surname. IP Australia maintains a database of Australian surname numbers, which is available via their website.

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