Trademark Searching

When you're deciding on a brand for your business it's important to consider if any other companies are already using that brand or have trademark rights that you might infringe by using that brand. It can be costly and disappointing to invest in branding only to find out later that you can't use that brand.

Spend a little time and money up front and you can save yourself a headache and a pile of money downstream.

To check if the brand you are considering is available there are a number of steps to take. Customers often think they can do trademark searches themselves. They can of course but there's a few caveats and many things they don't know that they don't know. We'll outline some methods and tools in this guide but it's important to recognise that searching trademarks is difficult and no searching is fool-proof.

We encourage our clients to do at least some basic searching themselves to identify existing trademarks that are the same or very similar to their trademark. We can then do a more comprehensive search if requested.

General Tips

Trademark searching involves looking for rival trademarks that may 'conflict' with your prospective brand. Whether a rival trademark conflicts or not is an expansive topic but at a basic level, consider each trademark and ask is:

1. the rival trademark the same or similar to your brand and for the same or similar goods or services?
2. it likely consumers would think there is a link between the rival trademark and your business if you used your brand?
3. the rival trademark a well-known trademark, e.g. Apple, Sony etc.?

If the answer to any of these questions is "yes" then there may be a conflict. You will need to check with us or another trademark attorney to determine the likelihood of conflict as it will depend on the specifics of the trademarks in question.

New Zealand

Searching New Zealand trademarks should involve searching using at least the following tools:

1. Google or other web search engine
2. Government Business One Check tool
3. IPONZ trademark search

Internationally

There are some great trademark searching tools, including the WIPO global brand database and TMView that can help you locate registered trademarks in various places around the world. Note that these databases may not contain all records from all countries and do not contain details of unregistered trademarks.

The world is a big place so it's likely that whatever trademark you have there will be at least a few trademarks that might be the same or similar.

‍