A guide on how to avoid trademark infringement

31 03 2016

You can spend a lot of time and money on developing a business name and branding, only to discover that someone else has a similar registered trademark. Infringing another’s intellectual property (IP) can be costly, not to mention time consuming. Here’s a guide on how to avoid trademark infringement.

Trademark search

First things first, you need to establish if the trademark you wish to register is available. You can do this by searching IP Australia’s Australian Trade Marks Online Search System (ATMOSS). This database will search both registered trademarks and trademarks with registration pending. A search of ATMOSS can tell you if the name or logo you wish to use is already in use, of comparable trademarks, if your new logo or product name can be registered and finally, if you will be infringing another person’s rights by registering your new logo or product name.

Unfortunately, a search of ATMOSS is not as easy as it appears. In fact, simply searching for an identical trademark to the one you are proposing to use is usually not sufficient. For instance, if your proposed brand name is ‘Phone Fotos’ you would need to determine if there are any trademark registrations for ‘Fone Fotos’ and ‘Fone Photos’. Despite being spelt differently; they are pronounced exactly the same way and therefore confuse consumers. This is where a trademark lawyer or trademark attorney can provide you comprehensive trademark searching and clearance options.

Avoid intentionally misleading trademarks

One of the primary aims of a trademark is to avoid customer confusion, and distinguish one traders goods and services from other traders goods and services. Sight, sound and meaning are essential elements in deciding if two marks are similar. You’ll find names that are not identical can still infringe another trademark. For this reason, it is not a good idea to name your new hamburger business ‘Hungry Joes’. Likewise, simply pluralising or adding descriptive words to the end of your trademark doesn’t make it sufficiently different.

IP maintenance

Once you have registered trademarks, it is essential that you ensure your contact details are up to date on all registers in Australia and any overseas registers you have trademarks with. Even more importantly is knowing when the renewals are due and paying these by the due date.

In addition to maintaining up to date records with external registers, you should also keep accurate records of material sourced from third parties. That includes keeping track of any permission or ‘clearances’ granted by the owner of the material as well as any action taken in attempting to obtain permission to use third party material. Keeping accurate and up to date records may assist in proving that you didn’t infringe, if action were taken against you.

Talk with a trademark lawyer

Above all, talk with an experienced trademark lawyer or trademark attorney when you are contemplating your proposed trademarks. They can help analyse any potential risks and determine the best strategy forward to ensure a successful trademark registration. And thus help avoid expensive and lengthy legal proceedings if you were found to be infringing another’s trademark.

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