Search and preliminary advice reports provide you with an assessment of whether your desired trade mark is likely to comply with two important areas examined under the Trade Marks Act 2002.
Types of report:
- Search report (S)
Our examiners will search the register for you, to see if the trade mark you want is already being used by somebody else.
This service costs $40 per class, excluding GST.
- Preliminary advice report (PA)
We'll tell you whether your proposed trade mark is unique enough to your industry that it can act as a trade mark.
This service costs $40 per class, excluding GST.
- A combined search and preliminary advice report (S&PA)
This service costs $80 per class, excluding GST.
After receiving the report from us, you can then decide whether you’d like to stop, change or proceed with your trade mark application. We'll hold to our decision for 3 months from the filing of the search and preliminary advice.
Note: A search and preliminary advice report will only provide you with advice for the trade mark as represented, and only for the specified goods and services as listed and paid for.
The term BUDGET SUPERMARKET for retail services in relation to food and household items is unlikely to distinguish one particular trader from any other in that trade channel. The term could be used by many traders in describing the nature of their business, and as a consequence the ordinary shopper would not associate the term with any one trader.
Marks that simply describe the goods or services or characteristics of goods or services to which they relate will also often not be distinctive. For example, the word APPLE cannot be registered as a trade mark for fruit. This is because APPLE does not distinguish the goods of one trader from another, as it is a generic name for a particular type of fruit. However, APPLE® is distinctive in relation to computers.
Marks that are commonly used in relation to the goods or services for which the mark is being applied for, may also not be distinctive under section 18 of the Trade Marks Act 2002. For example, a colloquial or generic term that has been commonly used to describe a characteristic of the goods or services may not be registrable. The term EXTRA SUPREME is commonly used to describe a pizza with many toppings, and would not be registrable as a trade mark in relation to pizza.
Before you apply
You will need to supply the following information to make sure you receive an accurate assessment in your search and preliminary advice report:
1. Clear description of your trade mark
Prepare a clear description of your trade mark. The list below can help you identify the nature of the mark and a suitable method of representation:
- Word - any combination of words, letters or numbers in normal type script
- Image - a picture or images only
- Combined - a combination of words and pictures
- 3D - images showing the different angles of the mark, labelled with the perspective from which they are taken (ie top, side, etc.)
- Animation - a graphic representation and a written description
- Colour – for example the colour “red”, not an image which is in colour; you must supply a specific description by reference to a recognised colour system, eg “the trade mark consists of the colour yellow (Pantone® 111C)”
- Sound - a score for a tune, a piece of music or a description of the sound
- Smell - a written description of the smell and how it will be applied.
Note: A plain word mark is generally seen as preferable, because it protects your business name or brand no matter how the words are presented, whereas a logo only protects the words in their stylised form.
2. Suitable image
If your mark has a special font, layout, image or colour (eg a business logo), make sure you have a suitable image to accompany your application. You can attach a representation of your mark saved as a JPEG or GIF.
Note: In one upload window you can upload up to three files with a total of 60MB. However each document has a maximum file size of 21MB per document. If your document is larger, you’ll need to upload it as multiple files.
It is important that you include a list of the goods and/or services you market, or intend to market, under the proposed trade mark. This is called a specification of goods or services.
You will also need to list the class or classes that the goods or services fall in. This is referred to as the classification of your goods or services. See more information about classifying your goods and/or services.
Correct classification is important, because a single application for a search and preliminary advice can only cover one class of goods or services. If you want a search and preliminary advice in more than one class, there is a fee for each class.
Our classification search tool helps you describe your goods and services and classify your mark.
4. Name and address details
If you're the applicant, you'll need to supply your name and address details. If you're applying for a business or for someone else, then have these name and address details ready.
5. Translation or transliteration of foreign words/characters
If your mark contains foreign words or characters, you should enter a translation and/or transliteration of the words or characters. A transliteration is a transcription indicating how the characters are pronounced in the language they originate from, and a translation is the meaning of the word in English.
For example, for the mark 日本語, a transliteration of the Japanese characters is NIHONGO, and the translation into English is `Japanese’.
Apply for a search and/or preliminary advice
To apply for a search and/or preliminary advice report:
- Log on as a registered user of the website.
- In your Inbox, select Apply for a Search and/or Preliminary Advice from the Trade Mark menu. The Apply for a Search and Preliminary Advice page displays.
- Under Type of application, use the radio buttons to indicate whether you want a search report, preliminary advice report, or both.
- Enter a Client Reference. This should be something you’ll recognise, such as ‘MyCompanyName S&PA’.
- If you’re a first time applicant, you are probably going through this process for yourself or your company, so select Acting in own right.
- Enter your Goods and services classification (see Classifying your goods and/or services).
- Enter your Type of Mark:
- Word trade mark – in the Mark Name field enter the words of the trade mark.
- Combined trade mark – enter the words appearing in the image in the Mark Name field and upload your image (this option is for images or words that are in a special font).
- Image – upload the GIF or JPG file of the image/logo.
- More complicated trade mark – list any additional details.
- If your trade mark is not in English or Latin letters, you must provide a transliteration and English translation.
- Make sure you've entered all your details correctly. Click Submit to complete your application, or Save if you want to come back and finish it later - it will be attached to your profile. If you select Submit you'll need to pay for your application.
We'll produce the report within five working days, and send you an email notification when it's ready. You'll need to log in to view the report.
You’ll be told if your trade mark is registrable under the two sections that the search and/or preliminary advice cover. This will help you decide whether you want to:
- continue with a formal trade mark application
- start again with a new trade mark
- amend your application
- take no further action.
If we tell you your mark is not distinctive enough for registration, you could consider requesting another search and preliminary advice for a stylised logo version of your desired mark. A logo with a reasonable amount of stylisation has a better chance of being seen as more distinctive, and therefore more eligible for registration.