The recently published Australian IP Report 2025 discusses the importance that trade mark registrations play in businesses attracting investment, particularly for small and medium enterprises in Australia. It notes a rise in trade mark ownership among SMEs and emphasises the need to assess registrability and infringement risks early, especially when launching a new business, products or service.
IP Australia now offers a free digital tool, TM Checker, providing guidance on filing trade mark applications. Is this a helpful shortcut or does it confer a false sense of security?
To ensure broad access to the tool, IP Australia has partnered with other service providers (such as domain registration websites) which provide a link to the tool. The tool uses artificial intelligence (AI) to deliver customised information which assists with checking whether your new trade mark is similar to existing marks, to avoid costly mistakes and save time. Use of the tool requires the following details:
word(s) or logo
any non-English characters
goods and/or services which the trade mark is/will be used on.
IP Australia does not guarantee the accuracy of the search results. Further, IP Australia’s disclaimer regarding the TM Checker tool notes that users are required to exercise their own skill, care and judgement to its use and carefully evaluate the accuracy, currency, completeness and relevance of the search results. It also contains a recommendation that users consult an IP professional for specific advice in relation to registering a trade mark.
Comparing the TM Checker with a full clearance search
The following table compares the benefits of the AI generated TM Checker with a professional comprehensive trade mark clearance search.
Comparison points | TM Checker | Full clearance search | |
Cost and timeframe | Free Immediate | Approximately $2,000-3,000* five to seven business days (can be expedited if urgent). | |
Coverage | Covers prior pending and registered TMs only | Covers prior pending and registered TMs, unregistered (common law) trade marks revealed by Google searches, domain names, company and business names as well as social media. | |
Availability assessment | No assessment of level of risk – list of disclosed marks is provided | Expert analysis of legal risks posed by search results, together with percentage assessment of availability of mark for use and registration. | |
Distinctiveness | A distinctiveness warning may be generated | Distinctiveness advice provided, together with recommendations on how to overcome any distinctiveness objection. | |
Ambit | Australia | Australia as well as foreign markets of interest (knockout or full searches) can be added for additional cost as required. | |
Filing TM application | No filing advice | Smart filing strategies will be formulated to ensure that the TM application is filed in the correct name, for the correct trade mark for the correct goods and/or services (as additional goods and services cannot be added later) and followed up with timely international filings as required. | |
Prosecution advice | No advice regarding post-filing steps | Advice and assistance provided regarding post-filing steps necessary to successfully register the mark | |
Oppositions | No advice about potential risk of third-party oppositions | Advice will be provided regarding potential risk of third-party oppositions (including by competitors). | |
Conflict advice | No advice regarding infringement risks | Advice and commercially focused recommendations provided in the event of infringement allegations including conducting negotiations and drafting settlement/co-existence agreements | |
Additional ongoing support | N/A | Ongoing portfolio management services including:
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*indicative cost only, varies from firm to firm, TM search costs will depend upon number of classes to be searched and urgency.
Our assessment of the TM Checker
The TM Checker can be helpful when conducting a preliminary check on the registrability of a trade mark and can be used to identify immediate blocks to registration. While the tool offers a convenient starting point, it is important to recognise its limitations, particularly in relation to more descriptive marks or where there is crowding around use of marks. We recommend businesses consider obtaining a comprehensive trade mark clearance search before adopting a new brand. It will:
Properly assess the legal and commercial risks of using and seeking to register a new trade mark.
Where possible, suggest steps to reduce any risks identified by the search results.
The cost of a clearance search will generally be a small percentage of the trade mark design costs and is a worthwhile investment to avoid the high cost and stress of dealing with registration and infringement issues. At worst, the failure to clear a new brand may result in an expensive and inconvenient rebrand and associated damage to the reputation of the business.