How To Trademark Search Your Brand or Company Name

Are we running out of good trademarks and business names? A groundbreaking study reveals 81% of common words are registered marks and that three out of every four (74%) words you speak have been registered as trademarks.

A good brand name can make or break a business – NIKE would not be as successful and valuable if it was still named Blue Ribbon Sports, nor UBER if it was called Kalanick & Camp Taxi Company.

Successful entrepreneurs are constantly on the lookout for new names for budding business ideas.

Secure Your Business Idea

File applications for good brand names and other Intellectual Property assets often and early – things like names, logos, slogans, labels, colours, product and package shapes, patterns or textures, store layouts, even sounds, jingles, gestures, designs and, where possible, ideas.

Doing this secures and increase the value of the business idea. It gives you time to develop it without worrying about someone else beating you to it. It attracts investors and puts your stamp of ownership on the idea, which gives you leverage when canvassing partners and investors and prevents someone from shamelessly stealing it (a Non Disclosure Agreement may not be enough) – which happens all the time.

So, when developing a brand name, we go through the following steps to see if it might be available.

1. Brainstorm – good names are hybrid names (like APPLE COMPUTERS) and composite names (like AIRBUS);
2. Trademark Search – try our FREE SA Trademark Search at www.brandlaw.co.za/search
3. Google and Social Media Search – focus your search on South Africa
4. Domain Search – search for available .com and .co.za domains here
5. Company Name Search – do a company search for similar named companies

1: Brainstorm Names

Descriptive names might be good earlier in the business but over time a unique and distinctive name will be of more benefit.

PRO TIP: Use a hybrid name: a unique first word with descriptive wording that you shorten in time – like APPLE COMPUTERS becoming APPLE.

Your ideal brand name flows from on your vision, brand-values, the target consumer and the story you wish to communicate.

Some things to bear in mind: descriptive names might be good earlier in the business as they clearly communicate your company’s core competency and allow consumers interested in your goods or services easily find you and understand your offering. However, such descriptive names hamstring your brand as it grows and looks to diversify – as well as your ability to create a brand that is untarnished by associations that you have no control over.

Descriptive names are also notoriously difficult to trademark. By definition, they rely on common words or phrases and may not be registrable, struggle to distinguish your goods or service and/or limit the scope of your rights to the extent that others need to use words contained in your mark.

So over time a unique and distinctive name will be of more benefit.

Often companies will begin with a hybrid name, that has a distinctive or unique first word with descriptive wording trailing – like APPLE COMPUTERS – and over time the descriptive element is dropped and voila: APPLE.

Composite words, made up from descriptive elements, with or without novel spellings (like AIRBUS or NETFLIX) can make great brands. As can evocative words (like NIKE, JAGUAR, PATAGONIA, AMAZON) that use suggestion and metaphor to bring to mind brand experience and/or positioning.

2: Google and Social Media Search

Search for your chosen brand name on Google to see if it is already in use in South Africa.

A similar brand is only a problem if it’s used for related goods or services. In other words, brand names can co-exist if there is no risk of confusing consumers – take PUMA shoes and PUMA energy for example – they seem to co-exist without conflict because they target unrelated customers.

So, when googling your chosen brand name and you find a lot of similar brand, focus on relevant results by including some descriptive wording. In other words, search for:

(a) your brand name on its own (for example APPLE); and

(b) the brand name with descriptive wording (for example APPLE COMPUTERS or REVLON COSMETICS).

Also, remember that trade marks are jurisdictional. If you are solely aiming to trade in South Africa, then trade marks in other countries are not be a problem unless the marks are really well known even to a South African consumer. So if you are looking to protect your brand in South Africa search for (a) your brand name and (b) your brand name + descriptive wording and then focus your results by:

– adding “site:co.za” to your search terms;

– adding the phrase “SOUTH AFRICA“; and/or

– limiting the search results to the region “SOUTH AFRICA” in the advanced search settings – https://www.google.co.za/advanced_search

You should also search on Facebook, LinkedIn, Instagram and other relevant online platforms (for example Amazon marketplace) for your brand name to see if there are any similar brands marketed in South Africa for similar goods or services.

3: Trade Mark Search

You also need to check the Trade Marks Register – you can use our free online search.

Registration protects a trademark even if it does not appear in a Google or social media search.

A registered trademark provides 5 years of protection without having to show use in the market. Considering that it takes around two years in South Africa from filing to registration (when there are no significant obstacles) a trade mark applicant has around seven years of non-use protection from the filing date.

This means that your brand may not be available even if nothing similar appears on Google Search, Social Media sites or the South African Company Register.

So a search of the South African Trade Marks Register in essential

CIPC Search

You can go to CIPC’s Trade Mark Register website to do searches there but the free search functionality is limited to searching one class of goods or services at a time and you need to know which classes are relevant – there are 45 classes. You also need to sign up and for broader search across classes you have to pay R15-30 Rand per query.

Searching in your exact class is not enough. Search in related classes as well.

Goods and services are lumped together in 45 different classes of goods or services (you can read a list of the classes here). However, these classes are not strict categories. Goods or services in the same class are not necessarily related (for example sunglasses and downloadable software both fall in class 9) – on the other hand some goods or services in separate classes are. For example, fashion items like clothing in class 25, handbags and leather belts in class 18, cosmetics in class 3 as well as class 35 retail services for selling such goods are considered to be related.

How to know if goods or services are related?

The test is to consider similarities and differences between (1) users (consumers), (2) uses, (3) physical natures; (4) marketing, advertising, supply and trade channels; (5) would they be found close to each other (eg. in a supermarket); and finally (6) to what degree they could compete with each other.

FREE Search at BrandLaw

We made searching for trademark and company names easier.

Search all classes at the same time and easily find your class of interest by goods or service name.

Try our FREE public search to search in all classes at the same time and easily find your class of interest by goods or service name. You can also search by trade mark owner. The search is fast and shows you up to 20 results per query.

However, it is not ‘live’ and not always up to date – it also does not let you access the complete records (such as the exact details of which goods or services are covered, nor any Logo designs).

While this search is not meant to confirm availability of a mark (you should get a professional search before investing time and money in your brand) it is great for finding problems while brainstorming.

Instructions

1. Go to www.brandlaw.co.za/search.
2. Select your search type: the default is the trade mark or brand name, but you can also choose to search by owner or by application number.
3. Enter the name of your goods or services you are using your brand name in relation to find your class of interest.
4. Enter your chosen trade mark or brand name and press search.

Do you see any results for your brand name or something that looks, sounds or means something similar? No?

1. Expand your search by selecting “also search in related classes” to search for the brand in classes that contain goods or services that may be similar.
2. Expand your search to find similar marks, for example, search for the different elements in your name (eg AIR and BUS in AIRBUS) variations in spelling (eg. AIRBUZ), same meaning (eg SKYBUS), same sounding (eg HEIR BUZZ) or appearance (eg A1RBU5).

If you see anything similar in the same or a related class you may be a problem. If you open the record and add it to you cart we can get the full record for you for R90 and give you advice what to do about it.

If you do not find anything your brand could be available.

However, before investing time and money or trying to register your brand as a trade mark you should instruct a professional trade mark attorney to conduct an availability search and use their expertise to confirm your results. Most ‘free’ or ‘low cost’ online services only conduct exact match searches or very narrow searches in a single class – which can be very costly if a undiscovered competitor’s or big corporate’s brand blocks your trade mark registration or forces you to rebrand a few months or years down the line.

We can conduct a recommended full expert search of all relevant marks in all classes for R2990 or a limited search of the most similar marks in the most similar classes for R1990. Our leading search is very thorough yet cost-effective.

4: Domain Name Search

Your website is often a consumer’s first stop when seeking information about you. A respectable and memorable domain name will increase your visibility, SEO rankings and professionalism. Clients perceive emails from @yourbrand.co.za as more trustworthy and professional than a @gmail.com address.

It is generally first prize to obtain a .com and/or a .co.za domain name for your bare brand – (eg nike.com) and ideally both (and potentially other extensions like .africa, .org, .io, .net depending on your specific case and the common practice in your industry). Purchasing reserved domain names for common names can cost a fortune – especially true for .com domains.

If the first prize domain name consisting of the bare brand name with your desired extension is not available then a secondary domain name containing the brand name plus descriptive wording may suffice – as long as the bare branded domain is not used by someone offering related goods or services in South Africa or somewhere else you may trade.

Search for available domain names here.

5: Company Name Search

Lastly, you should also check the Company Register for similar company names.

You can search for company names here but you will need to register and provide your South African ID or CIPC Customer Code.

Bear in mind that a registered Company Name does not provide any exclusive rights in the name unless a trade mark was also registered or the name has been widely marketed and used. A lot of people are not aware of this.

A registered company does not provide any trade mark rights. You have to register a trade mark or extensively market the name to get rights.

Also remember that an existing company with the same or a similar name is only a problem if it is using its name in relation to similar goods or services to yours. Unfortunately, the Company Register does not give you any information on whether the company name is being used as a trading name and what goods or services they market – unless descriptive wording is in the company name (eg. Boondock Clothing Pty Ltd).

You will have to conduct a Google and Trade Mark Search to find out (refer to step 2 and 3).

6: Get an Expert Trademark Search

If no problems turn up in the above searches there is a possibility that your brand is available. Before going full steam ahead, investing time and money, marketing your brand and registering a trade you should instruct a professional trade mark attorney to conduct a registrability search and use their expertise to confirm your results.

Contact us if you have any questions or if you would like a recommended full expert search of all relevant marks in all classes for R2990 or a limited search of the most similar marks in the most similar classes for R1990.

We provide a search report, including a list of all relevant trademarks that could be a potential conflict, along with our opinion on whether your brand is available for registration and a recommended fiiling strategy to maximise your chances of success, the scope of your rights and brand value.

We’re passionate about brands at BrandLaw, so if you would like to chat some more about the above or explore how we can help you register or otherwise protect your brand please get in touch!