Before you start using a trade mark you need to check to make sure that it is available for your use and that you are not infringing someone else's registered trade mark.

You should instruct a proper Trade Mark Lawyer or Registered Trade Mark Attorney to check to see if the trade mark is available for you to use. A check of both the Official Trade Marks database and marketplace searches should be done. A proper search can be complicated and should be done by a professional. This is because the Trade Marks Office database should be checked not only for identical trade marks but substantially similar trade marks such as phonetic equivalents or substantially identical marks.

While the identical trade mark may not be registered there may be a substantially similar trade mark registered or in use as an unregistered trade mark that may prevent your use and registration of the trade mark.

A search of the Trade Marks office database depends on the following factors:

• The trade mark itself – i.e. is the mark an ordinary English word or an invented term;
• The nature of the goods and services and the classes involved. For instance just because you are only focused on clothing doesn't mean you should limit the search o this one class. A cross-class search should be adopted to check for any identical or similar trade marks registered for similar or associated goods or services such as the retail of clothing over the internet which would fall into another class. The Trade Marks Database is divided into 45 classes of goods and services. It is important to be familiar with cross-class relationships when searching.
• Is the word adopted commonly known in the industry?

Because trade mark rights can be acquired through use it is important to also check relevant marketplace databases to see if someone else is using an unregistered trade mark or similar trade mark for your goods or services of interest. If someone is using the identical or similar trade mark this may prevent you from using the trade mark.

The effects of not checking properly to see if the trade mark is available can be severe. You could be sued for infringement; forced to stop using the trade mark; and even hand over the infringing product to the third party; and forced to pay damages, accounts of profits and/or damages.

It makes sense that if you are investing significant time, money and resources in a new brand that the proper checks are made to check the availability of the trade mark and to secure registration of the trade mark as soon as possible.

Obtaining a trade mark registration creates value for your business and even creates a tangible business asset that may be licensed, sold, or collateralised.

The risk of not doing the right and proper checks could be catastrophic for your business.