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What is the difference between a freedom to operate search and a register search?

When you choose a new brand, name, logo or other trade mark and you want to start using it as well as to register it it’s a good idea to conduct a trade mark search. There are two kinds of searches broadly speaking that you can conduct. One is a simple trade mark register search, and the other is what we called a freedom to operate or a full availability search.

A register search simply looks at the public trade marks database to see if there are existing identical or similar trade marks that are registered already in relation to the similar goods or related services to those you wish to promote under your new brand. That may be sufficient for some people or some brands, but if you’re about to launch a big business or something significant, it can be worthwhile conducting a full availability search or a freedom to operate search. This is because not all potentially conflicting prior rights are on the trade mark register. For example, in Australia, we recognise common law trade marks, so unregistered trade marks. An unregistered trade mark, if it has a significant reputation can be a real problem if you’re seeking to use the same or a similar mark for similar goods or services. You can find yourself in breach of an unregistered trade mark by way of what’s called passing off or misleading and deceptive conduct under the Australian Consumer Law.

You wouldn’t necessarily know of an unregistered trade mark if you just conducted a trade mark register search. If you haven’t heard of that unregistered mark, it could still have a reputation just unknown to you. So it is a good idea to conduct a more thorough search, and that would involve looking at trade directories, as well as conducting online searches using search engine tools. You can use key terms that describe both the mark you’ve chosen and also your goods and services of interest. You also want to look at business and company names to see if there’s any similar names in use. It’s also a good idea to conduct a search of international trade mark registrations that could in future designate Australia as a destination, because particularly if they’ve been filed recently, they could claim what’s called convention priority from the foreign filing date. So effectively they’re backdated if they file in Australia now.

You should also determine whether you will likely wish to use your proposed name outside of Australia, as you may need to conduct further international searches in that case.

You can do domain name searches when you do a freedom to operate search. So you can see if your chosen trade mark is taken across various domain name extensions, .com being the obvious most common one, but also .com.au, .org and so on and so forth. From there you can see which might be in use and determine if they overlap with your own plans.

Those are some ways that you can find out if there are unregistered trade marks that might conflict with the new trade mark that you’ve chosen for your business, just to see if you’re free to use it without infringing someone else’s rights or falling foul of the consumer laws. It’s important to conduct those searches before you launch, because once you’ve launched, obviously you’re at risk if you are infringing an unregistered or registered trade mark, and it would be better to avoid that. It’s also a good idea to do those searches before you invest in all your marketing collateral and so forth, because it can be a very expensive undertaking to prepare all of your branding and then find out that your trade mark isn’t available for use because there’s somebody else who’s got a prior similar mark, whether it’s registered or unregistered.

What if I wish to use a logo?

It’s important if you’re conducting a search for a logo to consider not just the word elements but also any distinctive graphical elements. If it’s a simple logo, it’s just stylisation of words and flourishes, then that’s not necessarily an issue, but if you have a very distinctive, graphical part of your logo, it could be helpful to search for that image, both on the register and in the marketplace to see if somebody else has a very similar logo, depending on how distinctive it is.

Also keep in mind graphics or images that are featured within logos or trade marks may attract copyright as ‘artistic works’. If you have used a logo creation platform, featuring the images provided by the platform their terms & conditions may prevent you from registering the finished logo. If you have engaged a graphic designer then by default they will be considered the copyright owner so you should also review their terms & conditions to see if they have agreed to assign copyright to you.

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