International Trademark Search

When introducing a brand globally, it is advisable to protect your intellectual property (IP). Performing an international trademark search is among the first steps to follow when protecting your brand. A trademark is a symbol, word, logo, or mark that solely identifies uniquely your brand’s services or goods. Making sure your trademark is distinct and not violating the third-party rights is the best way to avoid costly court hearings and brand problems. In this article here, we are going to assist you in conducting an international trademark search on your brand.

 What is an International Trademark Search?

International trademark search is verifying if your trademark (or equivalent trademarks) is pending or registered somewhere else. It is well worth it for businesses to expand to foreign countries. The search will allow you to find possible trademark conflicts with existing trademarks, protecting the brand name and allowing you to decide if your trademark can be registered in your desired countries.

Why is an International Trademark Search Important?

1. Prevention of Legal Issues: Performing a global search of trademarks protects you from the risk of trademark infringement, and that can ultimately lead to you having legal issues, shelling out money in fines, or being forced to rebrand the company.
2. Brand Protection: It guarantees your brand is safe to sell and use without infringing the intellectual property rights of another individual.
3. Market Expansion: If you wish to expand your business in new foreign markets, you need to make sure that your trademark is free or not in such markets so that registration can be done easily and without any delay.
4. Avoidance of Costs: Litigation. Is time-consuming. And. costly. A. good. Trademark. Search. Saves. All. Such. Unwanted. Costs.

Steps to Conduct an International Trademark Search for Your Brand

International trademark search is a task that needs preparation and research. Below are the most crucial things to do in performing this critical activity:

1. Understand the Trademark Laws in Target Countries

I mean, familiarize yourself with the trademark law of where or which countries you are going to do business in before that. Trademark registration and trademark searching might be quite different country to country. That way, you can organize your search process to that.

For instance, there exists a system of classification, database, and trademark law in each nation like the United States, European Union, and China. When you have registered your trademark in another nation, it is very important that you know the insider information of every place.

2. Choose the Right Classification System

Trademarks are classified into classes depending on the type of goods or services to which they distinguish. The most common system of classification is the Nice Classification, according to which goods and services are classified into 45 classes. Goods are classified from class 1 to class 34 and services from class 35 to class 45.

Before you begin searching, have a rough idea of where your mark is positioned in the classes. This will restrict your search to the classes of interest and allow you to see if there are conflicting trademarks in the classes.

3. Use Global Trademark Databases

Begin your international trademark search by doing an international and national trademark database search. The databases are the registered trademark files, pending application files, and any probable conflicting marks. There are a number of major sources to search in case an effective search is conducted:

WIPO Global Brand Database:

• World Intellectual Property Organization (WIPO) has a vast Global Brand Database where you can know any trademark that has been registered from across the globe. WIPO had encompassed those trademarks which are Madrid System registered, i.e., Madrid Agreement or Protocol member states. It is a useful database where you can see any trademark dispute among different countries.

EUIPO (European Union Intellectual Property Office) Database

• To access the European Union market, the EUIPO offers you a public search facility of trademarks known as search Plus. Search Plus makes it possible for you to search EU-registered trademarks by all members of the European Union.

USPTO (United States Patent and Trademark Office):

• In order to search America trademarks, you can use the USPTO’s Trademark Electronic Search System (TESS). It has all the federally registered trademarks of the United States in its database and you can search on different parameters such as name, class, or status.

National Databases

• Besides world and regional databases, you may need to search national trademark offices if your target countries are specific. For example, China National Intellectual Property Administration (CNIPA) in China or Japan Patent Office (JPO) in Japan.

There is a public search center of trademarks in every major country, and it is advisable to search individual national databases to give an overall impression.

4. Use Professional Trademark Search Services

It can take some time before you can search globally for a trademark and what you see could be totally illegible unless you have knowledge of trademark law. You can then most helpfully carry out a search nearby of professional trademark search centers. Trademark lawyers or IP offices doing this kind of work normally provide this service and offer you a full report of potential conflicts. They will help you to interpret the results as well as to the next step.

A trademark attorney will also guide you through the complexity of domestic trademark law, and this will avoid future inconvenience. Additionally, such experts will give you a comprehensive trademark search report, which will analyze chances of being able to register your trademark in your desired markets.

5. Evaluate Similar Trademarks and Possible Conflicts

Now that we have done the search, we can now analyze the result. Keep in mind the following to be cautious of the possible trademark clash:

• Similar Trademarks: When in your search you come across similar trademarks of the same type of goods or services, then it is grave clash and will prevent you from getting the trademark registration.
• Visual and Phonic Confusion: Although a trademark is not literal, it can be a clash if it is confusingly similar in appearance or sound to another trademark. Check for differences in appearance, pronunciation, and spelling.
• Class Conflicts: Although there can be an infringing trademark of another class, it can be confusing if the goods or services are conflicting in nature or seem to be connected.

If your search is yielding conflicting trademarks, you might be forced to:

• Change your brand name, logo, or design.
• Settle on a coexistence agreement or settlement with the owner of the conflicting trademark.
• Plead a case like objecting to a pending trademark in case you believe it’s invalid.

6. Make the Decision to Proceed with Registration

After you have searched and are confident that you have no conflicts, you can now decide to or not and proceed and register your trademark. Where you have no conflicts, you can proceed with the application in jurisdictions where you wish it to be. Where you have conflicts, you may be required:

If you encounter conflicts, you might need to:

• Adjust your branding to avoid confusion.
• Seek legal advice regarding potential litigation or negotiations with the existing trademark holder.

7. Register Your Trademark

Carefully triple-checked for no interference, you may now proceed to file your application for registering your trademark. You can apply to several countries under the Madrid Protocol in a single filing procedure.

With the Madrid System, you can file an application with effect in many countries, and defending your brand worldwide is thus less daunting.

Conclusion

Trademark searching internationally is among the things that you need to do in order to take your company worldwide. Being extremely cautious when it comes to existing trademarks and anticipating any possible future conflicts will place you in a strong legal position and allow you to protect intellectual property. Although the process will be taxing, it will be supported by international databases, service companies, and familiarity with countries’ trademark systems. Protect your brand today through thorough international searching of trademarks for potential profit.

FAQs

1.) Why do you need to conduct an international trademark search?

An international trademark search prevents encroachment of other trademarks to ensure your brand will be internationally legally protected.

2.) Do I submit a single trademark application in every country?

No, every country has its own application process, but you can file under the Madrid Protocol to get protection in the majority of countries in one application.

3.) How long would it take to do an international trademark search?

It would take a week or two to several days depending on your countries and search complexity.

4.) Should I hire a professional to outsource doing international trademarks searching?

You can do it yourself using online databases, but you can also outsource someone who is a trademark attorney or an IP professional so that everything gets done right and done properly.

5.) If my trademark is infringing on someone else’s, what do I do?

If your trademark is infringing another person’s, then re-design or re-name, negotiate with the other person, or go to the courts based on the extent of infringement.