Undertaking trademark searches is a crucial prerequisite to registering a trademark both domestically and overseas as it allows you to check whether your proposed trademark might conflict with any existing trademarks.
This article will outline the importance of conducting thorough trademark searches and how you can conduct an international trade mark search.
Why do I need to conduct a trademark search?
Because your trademark can be rejected if it is too similar to an earlier trade mark, undertaking trade mark searches is a crucial step in protecting your brand.
If there are no trademarks currently registered or pending registration that are similar to your proposed trademark, this indicates that your trademark is strong and will likely proceed to successful registration. However, if your proposed trade mark conflicts with an existing trade mark, it may be rejected for registration (although steps can be taken to dispute this) and you may decide to modify your brand strategy accordingly.
As such, carefully undertaking a trademark search can save you from wasting time and money on unsuccessful applications. It also reduces the risk of you inadvertently infringing on another party’s trademark and allows you to optimise your branding approach before you expend significant time and resources on promoting a potentially conflicting mark. This is especially important if you have plans to expand your business overseas in the future.
Trademark searches should be as broad as possible, given that a trademark can conflict with an earlier trademark even where the two marks are not identical. For example, if searching for the word ‘cool’, you also need to consider any variants such as ‘kool’, ‘kewl’, etc. Consequently, developing an effective search strategy is key to undertaking a thorough trademark search.
How do I conduct an Australian trade mark search?
For trademarks that you wish to register in Australia, searches are undertaken using IP Australia’s Australian trade mark search. You can search by various criteria including word, image, word phrase, class, owner and trademark number.
How do I conduct an international trademark search?
There are a number of different ways in which you can undertake an international trademark search for a mark that you wish to register overseas.
A useful starting point is the World Intellectual Property Office (WIPO)’s Global Brand Database, which contains international trade marks from over 50 national and international collections registered under the Madrid system. You can search this database by criteria including word marks or images and publication number as well as countries in which the mark originated and is registered.
You can also use the WIPO’s Madrid Monitor database to search the WIPO’s records for free. The Madrid Monitor provides access to information about international applications for trademark registration received from an office of origin, as well as information about international registrations that have occurred under the Madrid System.
Additionally, you can also search for potentially conflicting trademarks in the national trademark databases of the countries in which you seek to register your trade mark. This will evidently depend on where you seek registration. Some notable databases include:
- USA – the United States Patent and Trademark Office (USPTO)’s Trademark Electronic Search System;
- EU – the European Union Intellectual Property Office (EUIPO)’s eSearch Plus;
- UK – the United Kingdom Intellectual Property Office (IPO)’s Trademark Search;
- Canada – the Canadian Intellectual Property Office (CIPO)’s Canadian Trademarks Database;
- China – the Chinese Trademark Office’s Trademark Search.
Conducting a thorough and accurate international trademark search can be complex and confusing. An experienced IP professional can aid with this process by helping you to develop and implement an effective search strategy, saving you time and money in the long run.
If you wish to protect your brand and would like assistance with registering your trademark, please do not hesitate to contact us.