In today’s fast-paced and competitive market, your brand is more than just a name or a logo—it’s your identity, your reputation, and your most valuable business asset. That’s why securing it through a registered trade mark is not just a legal formality, but a crucial step in protecting the future of your business. However, before you can register your trade mark in Australia, conducting a comprehensive search is essential. This step ensures that your chosen brand won’t clash with any existing rights and prevents costly legal disputes or forced rebranding in the future.
At brandU Legal, we focus exclusively on intellectual property law. With decades of experience across boutique firms, top-tier practices, and in-house IP roles for global businesses, we’ve seen the IP landscape from every angle. We don’t do everything—we do IP, and we do it brilliantly. This deep expertise allows us to guide clients through trade mark registration with precision and strategy, starting with one of the most vital steps: a proper trade mark search.
Defining Your Trade Mark Clearly
The first step in a thorough trade mark search is to clearly define what you intend to register. This could be a name, phrase, logo, slogan, or even a combination of these. The clearer you are about what you’re claiming as your brand, the more accurate your search can be. Even small differences in spelling, pronunciation, or appearance may not be enough to avoid legal conflicts if the underlying idea is similar to an existing trade mark.
Searching the Australian Trade Mark Database (IP Australia database)
Once you’ve defined your trade mark, the next critical step is to search the IP Australia database. This is the official Australian government tool that allows users to search registered and pending trade marks. It’s important not just to search for exact matches but also for names and marks that sound alike or appear visually similar. A thorough search will help you assess whether your proposed trade mark is likely to be considered “confusingly similar” to one already in use—a common reason for trade mark objections and legal challenges.
Considering the Relevant Trade Mark Classes
Trade mark protection in Australia is granted within specific classes of goods or services. There are 45 trade mark classes under the NICE classification system, each covering different categories. Your trade mark must be filed in the appropriate class (or classes) that reflect what your business offers. When conducting your search, it’s not enough to look for similar names—you must also consider whether they are registered in the same class. Even if a similar name exists, if it’s in a completely unrelated class, you may still be able to register your mark, provided there’s no likelihood of consumer confusion.
Searching for Unregistered (Common Law) Trade Marks
Many businesses operate under unregistered trade marks, known as common law trade marks. Just because a name or logo isn’t registered doesn’t mean it’s safe to use. If someone else has been using a similar mark in commerce, especially in your industry or region, they could have established rights and take legal action against your use of the mark. This means you should go beyond the IP Australia database. Conduct online searches, check social media platforms, browse domain names, and explore business directories like the Australian Business Register or the Australian Securities and Investments Commission. This broader investigation helps you uncover potential common law rights that could impact your application.
Checking Domain Name and Social Media Availability
In today’s digital marketplace, your brand is closely tied to your online presence. After your initial trade mark search, check if the domain name associated with your proposed mark is available—particularly .com.au domains, which require a verified Australian presence. Similarly, check the availability of social media handles across platforms like Instagram, Facebook, LinkedIn, and TikTok. If someone else is using the name—even informally—it can lead to confusion or require you to make compromises when establishing your brand online.
Considering International Protection and Conflicts
If you have plans to expand your business internationally, it’s worth looking into potential conflicts beyond Australia. Use tools like the WIPO Global Brand Database or country-specific databases such as the USPTO (United States) or EUIPO (European Union) to search for trade marks registered in other jurisdictions. Even if your initial trade mark application is for the Australian market, future global expansion can be disrupted by trade mark conflicts overseas, making it wise to factor this in early.
Assessing the Distinctiveness of Your Trade Mark
Even if no one else is using your proposed trade mark, it still needs to meet the legal requirements for registration. One of the most important criteria is distinctiveness. Your trade mark must be unique and not merely descriptive of the goods or services you offer. For instance, trying to register a name like “Fresh Juice” for a beverage brand may be rejected because it lacks distinctiveness and directly describes the product. A strong trade mark is inventive, evocative, or abstract in relation to your offerings. Our team at brandU Legal can help assess and refine your mark to ensure it meets these legal standards.
Seeking Professional Legal Advice
While it’s possible to carry out a basic trade mark search on your own, there are many subtle risks and legal nuances that only a trained professional can identify. A misleadingly simple search might give you a false sense of security, only for your application to be challenged later. At brandU Legal, we provide smart, strategic IP legal advice to help you go beyond surface-level checks. Our team will guide you through the process, assess your trade mark’s viability, and help you navigate any legal or procedural complexities that arise along the way.
Keeping Records of Your Search
Finally, be sure to document your entire search process. Keep copies of your search results, notes on common law uses, domain and social media availability, and any legal advice you’ve received. This record-keeping will not only help you make an informed decision but can also serve as evidence if any disputes arise during or after the registration process.
Final Thoughts
A trade mark is not just a formality—it’s a foundation for your brand’s long-term identity and legal protection. Rushing through the search process or missing key steps can lead to objections, delays, or even loss of rights. A comprehensive, strategic search gives you the confidence to move forward with a brand that is legally secure and uniquely yours.
At brandU Legal, we’re here to help you do things right from the very beginning. Our dedicated focus on intellectual property law means we don’t just check boxes—we partner with you to protect your business with intelligence, clarity, and foresight. If you’re ready to take the next step in securing your trade mark, reach out to us. We’ll make sure your brand stands on solid ground.