Trade Mark Searches – Some Essential Questions Answered
I have done a trademark search. I have found the identical trademark that I want to use, but it is in a different trademark class to the one I want to register in. Am I safe to use the trademark?
NO!
You will infringe a registered trademark if you use the same or similar trademark on the same or similar goods or services. The trademark register is divided up into 45 different classes. Each type of goods or services are slotted into one of those 45 classes. For example, shoes are in class 25, while shoe store and business services are both in class 35.
As an example, “Nike” might be registered in class 25 for footwear, clothing and headgear. They might not have a registration in class 35 relating to retail outlets or online stores. However, if you filed a trademark application for “Nike” in class 35 for such services, you would be refused registration due to the Nike trademark registration in class 25. Also, if you decided to open up a store selling clothing and footwear, and you decided to call the store “Nike” this would amount to an infringement of the “Nike” trademark for footwear and clothing, even though you are using the name for services that would fall into a different class.
Watch a short video here, explaining the differences between trade mark classes and trade mark specifications – Difference Between Trade Mark Classification and Specifications
I have done a trademark search and did not find the identical trademark on the trademarks register. Does this mean that I can now use the trademark?
The mere fact that you have not found an identical trademark on the trademarks register does not mean that you can now use that particular trademark. Your search might not have revealed a trademark that is “confusingly similar” to your trademark. For example, if you want to register the name “bandages” as a trademark for business services, and you search for that name and did not find any registrations for bandage for any services relating to business services. Your trademark search could easily have missed similar trademarks that you could infringe by using the name “bandages”, and which would prevent you from registering that name, such as:
Bandage
B@andage
Band@ge
Blondage
Bandijiz
Drandage
Trandage
Plasters
When deciding whether or not trademarks can coexist on the trademarks register (or whether the trademark that you are using amounts to an infringement of an existing trademark), the following will be taken into account:
1. whether the trademarks look similar
2. whether the trademarks sound similar
3. whether the trademarks convey similar ideas
The intellectual property office or the court will consider three of these factors and decide whether they consider it is likely that there might be confusion between the respective trademarks. When these legal tests are applied, some trademarks which seem to be quite similar can sometimes be allowed to coexist, and some trademarks which seem at first glance to be quite different, can be considered to be “confusingly similar” and not allowed to coexist.
I want to register a trademark. It consists of two words. I have done a trademark search, and one of the two words is registered as a trademark. Can I use and register the two words as a trademark?
This is a tricky question to answer without a concrete example. The only answer that can be given in a vacuum, is that it depends on the circumstances, and the trademarks involved.
Most trademark cases have stated that if your trademark is a word that is contained within an already registered trademark, then your trademark is not registrable, and use of your trademark might infringe the prior trademark. For example, there was a case of VICKS VAPORUB. Someone wanted to register “Vaporub” either on its own, or with another distinctive name. The court held that the prior trademark registration of “VICKS VAPORUB” would stop anybody else from registering the word “vaporub” either on its own or with any other words.
Another example might be, if somebody else has registered “Yellow Horse” for business services, and you wish to register “Horse” for business services, you are unlikely to succeed, as the prior trademark is likely to prevent your trademark registration.
On the other hand, if you have “Horse Business Services” registered as a trademark, and somebody else wishes to register “Rabbit Business Services” they would be likely to succeed, because the overlapping words “Business Services” are common and descriptive in the business industry, and the distinctive part of the trademarks “Horse” and “Rabbit” are quite different from each other.
Assuming that there are no prior problematic trademarks, can I register my chosen name as a trademark. Can I register my trademark?
The answer to this question, unfortunately, is “maybe”.
When deciding whether a trademark can be registered, the intellectual property office will look at, not only whether or not there are prior trademarks which might block your current trademark application. That also look to see whether your trademark is “distinctive” of your particular goods or services. Non-distinctive names or phrases, are ones which tend to:
describe your goods or services (eg “gloss” describes the finish of a photograph, or type of paint)
be words or phrases that others in your industry might legitimately want to use (eg “we are the best cafe in town” or “our food is delicious”)
say something good about your goods or services (“we only serve vegetarian food” or “gluten-free”)
say something about the type, quality or quantity of your goods or services (eg 200ml describes the size of a fruit juice)
some surnames are difficult, if not impossible to register as trademarks. The more prevalent they are in Australia or New Zealand, the less likely you are to be able to get them registered.
real names or stage names or signatures can be registered, provided a letter of consent is supplied by the person of that name. Things become complicated where a famous person has registered their name as a trademark, and somebody else wishes to use their own name quite innocently in the same industry. If you trade under your own name, we recommend that you register it as a trademark.
Geographic or place names can also be problematic, unless they are unrelated to the goods. For example, “Arctic” might be registrable as a trademark for bananas, but Queensland would not be. This is because bananas are produced in Queensland and others might want to use that name in relation to their bananas, as an indication of where the bananas were produced. On the other hand, “Arctic” is what is called “fanciful” in relation to bananas, as no one producing bananas would need to use that name because bananas not produced in the Arctic.
The more distinctive your brand name is in relation to your goods or services, the easier it is to obtain trade mark registration protection for it. See a short video explanation here, explaining the essential difference between distinctive and descriptive brands.
The less the trademark relates to your industry, the easier it will be to register. A good example of a distinctive trade mark is “Apple” for computers. The word apple is totally unrelated to computers, and a competitor would not want to use that name, unless it was to trade off the reputation of Apple. On the other hand, a fruit stall would not be able to register the name Apple as a trademark, as other fruit stall owners would need to use the word apple in the ordinary course of the business.
Having said all of that, if you have a name which has some descriptive elements, you can sometimes get it registered if you are able to prove that it has actually become distinctive of your goods or services. This can be done by filing evidence of distinctiveness through use. This can be a somewhat complex process and has limited success.
Another alternative is to have a distinctive logo designed, and file a trademark for the words plus the logo. We do not generally advise that logos and words be registered together, because this limits the breadth of protection of the trademark to the combination of the logo and words. However, in cases where the words on their own are descriptive, we do sometimes suggest that a combination of logo and words are filed as a trademark. It is important that the logo should be distinctive. You should own copyright in the logo. You can do this by having it designed for you (make sure you get something in writing to say that you do own the copyright in the logo). Please note that if you license an image, you will not be permitted to register it as a trademark, even if the license entitles you to use it in a commercial manner.
Also, make sure that the logo is not one which is common in your industry. For example, logos of houses would be common in the real estate industry. Your logo would need to be something that sets it apart from others in the same industry, to be considered to be distinctive.
Distinctive trade marks (eg “Apple” for computers) are the easiest to register as trade marks and the easiest to enforce.
For more information please email tm@acacialaw.com
Cathryn Warburton
18 May 2015
