International Trademark Search: All You Need to KnowTrademark Law ResourcesHow To Register A TrademarkTrademark Search
International trademarks are used by international businesses. The Madrid Protocol regulates the application process for international trademarks.5 min read
2. What Is International Trademark Search Used for?
3. Reasons to Use International Trademark Search
4. When Not to Use International Trademark Search
5. How to Use International Trademark Search Facilities
6. Common Mistakes
7. Frequently Asked Questions
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.
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.
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.
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.
Frequently Asked Questions
- What is the most common system for international trademark search?
The WIPO system includes databases from all countries currently signed up to the Madrid Protocol.
- Do I have to conduct a trademark search before the application?
Absolutely, yes. If your mark infringes with another company's, or it is already used by a franchise or partner, it is important to take action as soon as possible and cut the legal fees.
- What if the country I would like to register my trademark in is not in the WIPO system?
There are national databases available for search, however, they might be complicated to use.
An experienced lawyer can guide you through the international trademark search process. Visit UpCounsel to start the process today.