When finding out what you need to do to get your trade mark registered, you may have come across recommendations to do a trade mark search before anything else. Is a trade mark search necessary?
First, let’s go over what a trade mark search is. A trade mark search is a review of government’s official register of trade marks in order to check if there are any trade marks already on the register that are the same or similar to your trade mark. The trade mark search report, will explain to you how easy or difficult it is likely to be to register your trademark.
OK, so do I need a trade mark search? A search is not absolutely necessary. If you are just starting out then it will probably be the best options because it will be the quickest way to identify potential problems. On the other hand, ultimately the government will undertake their own searches. So if you are already using your trade mark or are fully committed to it such that an adverse search report would not alter your resolve to seek trade mark protection at any rate, then you may consider applying for your trade mark without a search.
So what’s the upside of getting a search? You will know very quickly if your trade mark is able to be easily registerable, or not. It may save you sinking money and time into a brand that cannot be protected by a trade mark.
So what’s the downside of getting a search? Paying for a search report that isn’t of much use as you will be trying to get your trade mark registered anyway.
Anything else I should know? Yes. In the case of Australia, if you need the examination report from IP Australia quickly, we’d recommend paying the expediting fee so you know in around 2 weeks if your mark is likely to be accepted. In New Zealand, the government will examine your application within 3 weeks. In the United States, you will have to wait a full 4 months for government examination and it is not possible to expedite this process.