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A trade mark search is a fundamental part of the trade mark application process. If you wish to increase your chances of getting your trade mark approved by the Intellectual Property Office of New Zealand (IPONZ), you should complete one. Notably, IPONZ provides various online tools to help you with your trade mark search, which you should take advantage of. However, your search should not stop at just using these tools, and you should prepare appropriately to ensure you get the most out of your search. Therefore, the following article details some steps that you should take as a part of your trade mark search.

Determine the Different Elements of Your Trade Mark

Before starting your search, you must have a clear idea of what parts of your proposed trade mark you will search for. Typically, the most common kinds of trade marks are:

  • word trade marks;
  • image trade marks; or
  • a combination of these.

Therefore, you need a clear idea of what words or images you will search for.

Your trade mark cannot be too generic, and it must be distinctive enough to stand out in the market.  As such, put in the effort to ensure your trade mark is unique. The trade mark search process may help you determine existing trade marks and alter your own trade mark to be unique.

Choose Goods and Services for Your Mark to Apply To

You only gain protective rights with your trade mark over the goods or services that you choose. Therefore, when doing your trade mark search, you need to include this specification.

For instance, if you run a makeup business, you would want your trade marks to apply to things like makeup, skincare goods, or wellness products. Therefore, you should search for trade marks in those categories.

Use the IPONZ Trade Mark Check

Once you have a clear idea of what you need to search and the goods/services that you need to cover, use IPONZ’s search tools. They provide multiple ways for you to search for existing trade marks, so pick one that works for you. For instance, you can search by:

  • words or phrases;
  • images;
  • trade mark case number, owner, or date;
  • goods or services filters; or
  • other specific search queries;

You can also use specific search/filter functions to better categorise your results, such as using ‘and’ between search terms to only return results containing both of those terms. If you find existing trade marks that are identical or similar to yours, you may need to change aspects of your trade mark.

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Search Online For Your Trade Mark

The IPONZ trade mark check is valuable, but you should not limit your search to that. You should also conduct various online searches to determine whether another party is already using your trade mark. A useful tool for this is ONECheck. Additionally, a simple Google search using keywords related to your trade mark will also be helpful.

If you do not locate any identical or similar hits on the NZ trade marks register, another business may still have unregistered rights to your trade mark. Further, you should avoid using specific words or images that others may use as generic or descriptive terms in your trade mark.

For instance, say that you want to use a specific word in your trade mark that users on Twitter use as a hashtag for their content. You may not want to associate your trade mark with this content, so it pays to do such research beforehand to avoid unwanted surprises.

A key aspect of this process is choosing the right terms to search for. For example, try to account for plurals, misspellings, or alternate spellings, so that you can see what your customers may find online in these cases.

Engage the Help of a Trade Mark Specialist

The previous steps are relatively straightforward and just take time. However, once you have narrowed down your search to a couple of different options, you should engage the help of a trade mark specialist or lawyer. They will have tools and search avenues available to them that you may not. They can also help you determine whether your trade mark would meet IPONZ’s registration criteria. In addition, they will have experience and useful resources, so take advantage of what is available to you where you can.

Additionally, IPONZ provides a service to create a search and preliminary advice report for you. This report details the result of a search from their end, as well as their advice around the registrability of your trade mark. 

Key Takeaways

At first, doing a trade mark search can seem straightforward. However, to get the most out of your search, you must invest effort appropriately and seek advice. 

If you need help with your trade mark search, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0800 005 570 or visit our membership page.

Frequently Asked Questions

What is a trade mark?

A trade mark is a unique sign that links your business to the goods or services it provides. Examples include your business name or logo.

Why do I need to complete a trade mark search?

If you wish to register a trade mark, your trade mark cannot be identical or confusingly similar to one that already exists. Therefore, you should complete a trade mark search to see what already exists in the market.

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