Key Takeaways:

  • An international trademark search helps businesses avoid conflicts, protect brands, and expand globally.
  • WIPO’s Global Brand Database and Madrid Monitor are essential search tools.
  • Companies must understand trademark classes, figurative elements, and translation implications.
  • The Madrid System simplifies filing in multiple countries, but requires a national application or registration first.
  • Professional legal guidance is often necessary for complex global filings.What Is International Trademark Search?

International trademarks are used by companies that are planning to export their services or products overseas. The registration and application process for international trademarks is regulated by the Madrid Protocol. Unlike the trademark protection provided by the U.S. Patent and Trademark Office, this registration prevents the use of companies' intellectual properties worldwide.

The World Intellectual Property Organization (WIPO) of Geneva regulates the registration, and it provides a database for international trademark search. This facility allows businesses operating globally to find existing trademark applications, statuses, and decisions within the international database. Customers can choose between conducting a trademark search or a class search globally.

International trademark search and registration are usually completed on a national level, and this means that companies that would like to operate in multiple countries and use the same mark might need to conduct multiple searches and submit an application for each location. International trademarks are protected for 10 years and can be renewed for an additional 10-year period upon expiry.

An objection against the use of a trademark in one particular country does not affect the outcome of applications made elsewhere. However, international trademark registrations within the EU are handled as one, and objection in one country will affect the applicant's approval chances in other European Union states.

What Is International Trademark Search Used for?

Registering international trademarks is important for all companies, but can be a complicated process. In today's global economy, it is becoming more and more important to register a mark abroad.

International trademark search is also important for identifying the existence of similar or infringing marks abroad. When planning to use a mark abroad, a company will need to ensure that they do not use a trademark that is already registered in one or more of their operating countries.

In order to use the international search facility, however, the company needs to register on the platform and have one or more marks accepted. International trademark search can be initiated in North America, South and Central America, Asia, the European Union, Africa, and the Middle East.

The Madrid Protocol for trademarks has 91 members, and the list of the signed up countries can be found on the WIPO website. Trade mark searching on the international level might be a lengthy process, but absolutely necessary for protecting a mark abroad. International registration of trademarks helps companies protect their brand during their global expansion with one registration and renewal.

How International Trademark Search Works Through WIPO

The World Intellectual Property Organization (WIPO) offers tools such as the Global Brand Database and Madrid Monitor, which simplify international trademark searches. The Global Brand Database allows users to search registered trademarks across jurisdictions, using filters like name, classification, and image recognition. Madrid Monitor provides real-time tracking for international applications under the Madrid Protocol. These tools streamline research but still require an understanding of local trademark nuances.

Reasons to Use International Trademark Search

Even if the trademark is registered with the United States Patent and Trademark Office (USPTO), it does not mean that the company has the right to use it abroad.

Registering a trademark abroad provides the company with the exclusive rights to use the given mark in association with their products or services abroad. This means that resellers from the country will not be able to take advantage of the strength and reputation of the brand, and will not be able to copy the mark.

Another value provided by using international trademark search facilities is to identify companies that infringe with the mark. If there are no results found, that means the company can register their trademark abroad, have exclusive rights to it, and even license it to other companies when creating overseas franchises.

Companies must run clearance checks before they register their trademarks in order to avoid infringement claims in the country. The national Patent and Trademark Office or an international trademark attorney can provide more information on the procedure.

Key Benefits of Using Global Trademark Databases

Global trademark databases provide several advantages:

  • Comprehensive Search Coverage: Access to millions of records from national offices and intergovernmental organizations.
  • Image Recognition: Search by logo or figurative mark to identify visual similarities.
  • Live Updates: Monitor the status of international applications and changes to registered marks.
  • Cost Efficiency: Identify potential conflicts before filing to avoid costly disputes or refusals.
  • Cross-Jurisdictional Consistency: Maintain consistent branding across multiple markets.

Using tools like WIPO’s database significantly reduces the risk of unintentional infringement abroad​.

When Not to Use International Trademark Search

If a company is not planning to operate abroad, the use of the mark in other countries is not likely to interfere with their business. As the search and application procedures take time and cost money, registering a mark in the home country can save time and resources.

In some cases, businesses find it hard to use national or international trademark search engines and ask for help from professionals. A trademark and patent attorney will be able to provide advice, professional search, and detailed reports on the mark's status abroad. This will reduce the time it takes for companies to get their business expanded overseas.

How to Use International Trademark Search Facilities

There are several companies providing international trademark search services online and in offices. The WIPO control panel includes the companies that signed up for the Madrid System.

There are different ways of using international trademark search facilities, as well. The simplest one is the Preliminary Search of Trademark.

The three main types of search:

  • Word search
  • Logo search
  • Device mark search

Word search uses Classes 1-45 for categories and products, and looks at phonetic similarities. Logo search is carried out using the Nice Classification database established based on the Nice Agreement. Device mark search is completed using the International Classification of Figurative Elements of Mark database.

Users of international systems can also utilize phonetic search. Other, commonly used search engines for finding registered marks use serial numbers, date, and company numbers.

Additional Search Tools and Techniques

Besides WIPO’s tools, you can use the following resources for a more thorough international trademark search:

  • TMview (by EUIPO): Offers access to trademark data from over 75 participating intellectual property offices.
  • ASEAN TMview: Covers ASEAN member states for region-specific searches.
  • National IP Office Databases: Some countries not under the Madrid Protocol may require separate searches via their own national databases.
  • Professional Search Providers: Companies like Corsearch and CompuMark offer enhanced trademark clearance reports and screening technology.

Understanding search options and integrating multiple tools can help ensure broader brand protection​.

Common Mistakes

One of the most common mistakes associated with international registration and search of trademarks is that the company assumes that they can register a mark abroad if it is not protected within their home country. In order to gain international protection, the business must have the right to the trademark in at least one country.

Not many companies are aware that international registrations of trademarks are subject to an existing live protection of at least five years. Without this, it is impossible to register a mark abroad.

Translation of company names and trademarks is another area where companies fail. They need to consult with international partners to learn which companies or even emotions are associated with the given phrase, and whether or not the translated word is related to their industry category within the country.

Not planning the search and application is the most costly mistake as a company. A simple calculator can be found at http://www.wipo.int/madrid/en/fees/calculator.jsp, and it gives businesses answers to the most important question: is it worth registering a mark in multiple countries.

Find out more about the most common mistakes regarding international trademark search.

Understanding Trademark Classes and Figurative Marks

Trademarks are classified under the Nice Classification system (Classes 1–45), which groups goods and services into standardized categories. Using the correct class ensures appropriate protection for your mark.

Also, figurative marks (logos and design elements) must be classified according to the Vienna Classification, a system for categorizing visual elements. Failing to search or register in the correct classes can result in:

  • Incomplete protection.
  • Vulnerability to infringement.
  • Rejection by foreign trademark offices.

Always align your search strategy with both systems for a complete and accurate trademark clearance​.

Most Common System for International Trademark Search

The most widely used system for conducting an international trademark search is provided by the World Intellectual Property Organization (WIPO). Its Global Brand Database includes records from all countries that are members of the Madrid Protocol, offering a centralized way to check trademark availability across multiple jurisdictions.

Importance of Conducting a Trademark Search Before Applying

It is essential to conduct a trademark search before submitting an international application. If your proposed mark is already in use or conflicts with an existing trademark—whether held by a competitor, franchise, or partner—you could face costly legal disputes or rejection. Early searches help you identify and avoid these issues, saving time and resources.

Registering in Countries Outside the WIPO System

If the country where you want to register your trademark is not part of the WIPO system, you will need to search that country’s national trademark database. While these databases vary in accessibility and functionality, they are critical for ensuring your mark is not already registered. In some cases, assistance from a local trademark attorney may be necessary to navigate complex or non-English systems.

Applying Through the Madrid Protocol

The Madrid Protocol enables businesses to apply for trademark protection in multiple countries with a single application through their home country’s IP office. However, key prerequisites include:

  • An existing application or registration in your home country (known as the "basic mark").
  • Selection of member countries where protection is desired.
  • Payment of applicable fees, which vary based on the number of countries and classes selected.

While this system streamlines the application process, the protection in each country is subject to approval by that country’s trademark office. Legal assistance can help navigate refusals, oppositions, and language requirements​.

Frequently Asked Questions

1. What tools are best for conducting an international trademark search? WIPO’s Global Brand Database and Madrid Monitor are the most widely used, along with TMview and national databases.

2. Can I use an international trademark without registering it in every country? You must apply in each country where you seek protection. The Madrid Protocol simplifies this, but each country makes its own decision.

3. What happens if someone already has my trademark in another country? You may need to rebrand in that country or negotiate rights. Early searching helps prevent these conflicts.

4. Do I need to search logos and designs too? Yes. Figurative elements should be searched using image recognition tools or the Vienna Classification.

5. Should I hire a trademark attorney for international searches? Yes. Professionals can help navigate complex filing systems, translate legal terms, and interpret search results.An experienced lawyer can guide you through the international trademark search process. Visit UpCounsel to start the process today.