Quest LegalTrade Mark Searches – A Guideline for Conducting Trade Mark Searches Internationally

January 18, 2022

If you are looking to expand your business internationally, or intend to in the future, it’s important to trade mark your business name and products in every country you intend to operate in. This allows you to protect your brand from being used by someone else and enables you to defend a claim if a competitor overseas claims you are breaching their trade mark.

Whenever your business expands to a new country, you will need to conduct a trade mark search on the relevant country’s intellectual property office website to ensure there are no conflicting trade marks registered in that country. You can find this using the World Intellectual Property Organisation (WIPO) directory.

These online trade mark search tools are useful in providing a general overview of any similar trade marks that may exist. They can give you an indication of whether your proposed trade mark will raise any significant issues. However, these tools do not provide the comprehensive trade mark review that law firms are able to.

Two Ways of Conducting a Trade Mark Search:

  1. By Yourself: using an online website search tool for a general overview, through the World Intellectual Property Organization (WIPO) or the European Union Trade Mark and Design Network (EUTM).

  2. Using a Trade Mark Lawyer: using various tools to provide you with a more comprehensive trade mark search overview.

Types of Trade Mark Searches:

There are two ways you can search for trade marks, by using words or images.

  1. Words & Phrases: you can enter a word or phrase that is between 3 and 50 characters in length and the search program will search for any trade marks on the register that resemble the word or phrase you have entered.

  2. Images & Descriptions: you can upload an image of a logo from your computeror mobile device and the search program will suggest image features and descriptions and search for any trade marks on the register that use logos with similar features and descriptions.

Narrowing Your Search Results:

You can further narrow your results by limiting your search to specific classes of goods and services. For example, if you are a business that sells computer games and you want to register your game name in the class of toys, the search results will only include trade marks using that name that are related to toys.

Similar or Identical Trade Marks:

Once we have completed your trade mark search, if we have found that another business has already registered a trade mark using the same or a very similar logo or name, there are a few steps we can take:

  1. We can try to negotiate an agreement with the other company. This will allow both businesses to use the trade mark.

  2. You can alter your trademark logo or name, or register it indifferent classes, so there is no longer a conflict between the two trade marks.

  3. If you believe you have been using the logo or name for longer, we can apply for registration and receive an adverse examination report due to the conflict. When this occurs, we can respond with evidence that you had prior use of the trade mark and are therefore entitled to register the trade mark.

If you have any questions or would like some guidance on any of this, please give Quest Legal a call. We have a wide range of experience and success in Intellectual Property protection.