Trade Mark Register Searches: No Longer Just a "Nice to Have"

Article  \  9 Oct 2023

As IP specialists, we often recommend conducting trade mark register and marketplace searches before adopting and using new brands.

We do this to avoid the risk of you starting to use a new brand, only to discover that a third party has rights to it. The cost of having to recall/re-brand products or services and the associated reputational damage, can far outweigh the minimal cost of conducting the search.

But a recent Federal Court of Australia ruling in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd has now provided us with another, even more compelling reason to advise you to “search first”.

In Australia it is a defence to trade mark infringement if your trade mark is being used in “good faith” to indicate the description of services provided. However, in The Agency Group the Judge noted that “There is also a requirement of reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark. The objective requirement of reasonable diligence would require a search of the Register of Trade Marks.

The Judge noted that if it was necessary for him to decide if the defendant had acted in good faith, he would have said no, because no search had been conducted.  

What can we learn from this?

It now appears more than ever that conducting a search of the trade mark register at least, prior to adopting a new mark, is a necessity, not the ideal. Without taking this simple, but key step, you run the risk of not being able to use your brand as anticipated, having to pay the associated costs of re-branding, and potentially being found guilty of trade mark infringement.

For help in ensuring your brand is properly used and protected, or for any other IP needs, don’t hesitate to reach out to one of our experts.

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