IPHQ: Is this still available? The importance of trade mark clearance searching

In the suite of IP protection, trade marks are a valuable and commercially visible asset for businesses, establishing a distinct and unique brand and fostering customer loyalty. Trade marks set products apart in the broader market, allowing consumers to distinguish between the products and services of one business and those of another.  

However, the value of a trade mark is closely connected to its uniqueness. The level of uniqueness in a trade mark dictates the extent to which an owner can claim exclusivity over the mark – or leave them exposed to litigation. 

Adopting and using a trade mark that is identical or confusingly similar to that of another entity may potentially expose a business to significant liability.

Therein lies a crucial step in the formation of a trade mark – trade mark clearance searches. These searches allow businesses to establish with full confidence that their trade marks are available for use and registration, and avoid exposure to litigation. 

Across the globe, IP systems offer various types of trade mark searches. Here, Smart & Biggar Principal Jamie-Lynn Kraft and Associate Francesca Roy outline the benefits of searching, and provide an overview of the various types that can be conducted in Canada.  

Spruson & Ferguson has published the “2023 Pharmaceutical Patent Review”, an overview of Australia’s most notable developments in pharmaceutical patent law, including pharmaceutical cases making their way to trial, key legal issues, hot topics and important Federal Court decisions. Read the report to catch up on the latest developments in the space, with contributions from a cross-practice group team including Head of Spruson & Ferguson Lawyers, Katrina Crooks , Principals, Michael Christie , Elizabeth Barrett , Andrew Rankine , Daniel Sieveking and Duncan Longstaff , Special Counsel, Lucy Hartland , Lawyer, Fiona Deng and Patent Attorney, James Beckett .  

The fashion industry is an endless trend machine, which has only sped up with the rise of social media, Instagram and TikTok introducing consumers to a constant stream of micro-trends. Keeping up with these trends is an expensive and time-consuming task – it's a lot easier to copy. AJ Park Principal Thomas Huthwaite , Special Counsel Kate Giddens and Solicitor Rumbie Mutanga discuss all things “dupes”, and the IP considerations around duplicate products.

Australia 

For a patent to be granted in Australia, it must fulfil a number of requirements. Utility is one of these requirements – simply put, the invention claimed and described must be useful. Griffith Hack Patent Attorney Arun Nagasubramanian and Principal Robert Wulff discuss the requirements a patent must meet to demonstrate utility. 

On the evening of 26 March 2024, IP Australia replaced its current list of goods and services for trade mark applications with the Madrid Goods and Services list. AJ Park Special Counsel Kate Giddens unpacks what this means moving forward. 

From 2019, the Australian Therapeutic Goods Administration began conducting consultations into a patent notification scheme proposal, aiming to address issues with Australia’s current pharmaceutical regulatory framework. In 2023, it was announced that due to the impact of the COVID-19 pandemic, implementation had been delayed. Griffith Hack Principal Gavin Adkins provides an overview of the progression and published updates on the proposed patent notification scheme. 

The recently announced ‘Future Made in Australia Act’ aims to introduce a number of measures to boost investment in green energy projects, local manufacturing and sustainability. Spruson & Ferguson Principal Gareth Dixon discusses whether this new Act could be the boost that the Australian cleantech sector needs to incentivise its growth.  

Australian design law has its own complexities and traps to watch out for, and unintentional disclosure of a design can create huge challenges to securing protection. However, as AJ Park design expert Sarah Barclay explains, whether through an enthusiastic early reveal on social media or an unintended leak, these disclosures may not be fatal. 

Griffith Hack has shared their new series, Tips and tricks for prosecuting patents in Australia and New Zealand. In part 1 of the series, ChemLife Practice Group Leader, Amanda Stark , and Patent Attorney, Megan Cole discuss examination wait times, providing an overview of wait times in various technology classes, and their best advice for navigating these periods.  

Canada 

Following amendments to the Canadian Charter of the French Language, there is a lot to learn about rapidly evolving legislative changes, and how they can impact businesses in Quebec. ROBIC has launched a new webpage dedicated to the Charter, offering fresh resources and information on how to navigate these changes. Visit the page here.  

To keep you up to date on the latest changes as they occur, ROBIC has also launched a newsletter dedicated to the Charter.

China and Hong Kong SAR 

The Intellectual Property Department of the Government of Hong Kong SAR (HKIPD) has announced that official design fees have been reduced, effective from 1 March 2024. Spruson & Ferguson Patent Engineer Charles Wang and Principal Robert Jackson unpack the fee reductions.  

Smart & Biggar is pleased to offer a fresh take on their popular Canadian trademark webinar series. On 25 April, Mark Biernacki and Tierney GB Deluzio will be discussing their best tips & tricks on Canadian & US trademark protection. Register now! 

AJ Park 

AJ Park has been ranked as Tier 1 for intellectual property law in New Zealand by the Legal 500 Asia Pacific. Congratulations to Jonathan Aumonier-Ward who has been recognised as a Next Generation Partner, Amanda Griffiths, Anton Blijlevens and Penelope (Penny) Coles Catley who have been recognised as Leading Individuals and Duncan de Geest and Michael Brown who have been recognised as Recommended Lawyers.   

28 intellectual property experts have also been recognised in the 2025 edition of the Best Lawyers in New Zealand. A special congratulations to Tim Jackson , who has been identified as a “Lawyer of the Year” awardee for IP in New Zealand.   

Griffith Hack 

Congratulations to Griffith Hack Practice Group Leader (Law & Trade Marks) Kellie Stonier and Principal Derek Baigent for being recognised in the Best Lawyers in Australia 2025 edition. Kellie has also received the “Lawyer of the Year” accolade for IP Law in Brisbane, awarded to individual lawyers who received the highest overall peer-feedback for a specific practice area.  

Griffith Hack Senior Associate Sara P. and Associate Rachael Lopez have been included on Australasian Lawyer’s Rising Stars list for 2024.  

ROBIC 

ROBIC has been selected as one of the Top 10 Patent Firms and Intellectual Property Practices in Canada in the 2024 ranking of the Patent Lawyer Magazine.  

Smart & Biggar 

Congratulations to the 35 Smart & Biggar lawyers who were recognised in this year’s Best Lawyers in Canada list, in the areas of intellectual property law, advertising and marketing law and biotechnology and life sciences practice.  

Spruson & Ferguson 

Congratulations to Head of Spruson & Ferguson Lawyers Katrina Crooks, and Principals Duncan Longstaff, Andrew Rankine and Sylvie Tso for being recognised in the Best Lawyers in Australia 2025.

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