So you want to trade under a particular brand name in Australia, and you’ve done a trademark search in Australia and you’re confident that your use is not going to infringe somebody’s trademark in Australia. Does that mean that you should just go ahead and use it and you don’t actually have to register it as a trademark?
Theoretically, you can do that but there are some provisos. One is that your trademark search might not have revealed all of the relevant trademarks. Sometimes I have clients who do trademark searches and because of the way that trademarks are categorized, they might miss a relevant registration. Also, even if you’ve done the best job possible and nobody else has it at that date, this afternoon your competitor could go and follow that trademark application.
Which once they’ve registered, your use would be infringing their trademark registration, so the point really is the trademarks register can change at any time. New trademarks can be added and if you’re using but don’t have it registered and somebody else has it registered, they can sue you for trademark infringement, even though you used it first. There is a way, a method of getting their trademark removed, but it’s extremely expensive and most people don’t bother and they instead change their trademark.
So the answer to the question, if the search says nobody else has it, does it mean you’re safe to use it? Is no, it’s not going to necessarily mean you will never have a problem with trademark infringement. My name is Cathryn Warburton, and I am the Legal Lioness.
