New brand? Your international trademark search just got easier

Lisa Wright,

Are you starting a new business or thinking about adding a new good or service to your existing business? If you have decided that your organization could benefit from some branding, how do you choose the right trademark and approach creating a trademark strategy?

When choosing your new brand name you should bear in mind that you should have a trademark that aligns with both the business and the legal needs of the company. You want to search for a trademark that will be an asset and ultimately build the value of your company.

Choosing a trademark

You should be looking for 3 things out of your new trademark: uniqueness, investment potential and protectability.

1. You want uniqueness. You should choose a trademark that will definitely connect goods and services with only your business as the source of origin.

2. Secondly, you should consider the investment potential of your new brand. Branding is built up over a long time and there can be significant costs involved. If you are a startup, don’t launch in immediately with a plethora of trademarks. If you spread yourself too thin, you'll end up with less weaker and less consistent branding. 

3. Lastly, you want to ensure protectability of your brand, so that you can carve out a niche in the market.

Trademark strategy

Before you go ahead and brainstorm for a new brand name you need to first consider the overall trademark strategy of your business. Where do you intend to market and sell your new brand? 

If you are planning to market abroad and you have decided on the territory or territories in which you would like to market you are ready to run a knockout search of your potential trademark candidate in these jurisdictions. 

If no flags are raised at this preliminary search stage you can move your candidate along to the next step of the trademark clearance assembly line and organize a full international clearance search of your trademark candidate.

International trademark search

The World Intellectual Property Organization (WIPO) trademark registrations are used by organizations that plan to export their services or products as an option to simplify the registration (instead of applying to each registry separately). In some cases it may be better to apply directly to the national registry and the China CNIPA is an example of this. The registration and application process for international trademarks is regulated by the Madrid Protocol. WIPO regulates the registration.

International trademark search and registration are first completed on a national level. This means that if your business would like to operate in multiple countries and use the same mark you 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.

Benefits of running a trademark search globally

Filing an international application under the Madrid system can be important for many organizations, but it can be an extremely complicated process. However in today's global marketplace, it is becoming more and more important to register a mark abroad.

When planning to use a particular 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. It therefore follows that international trademark search is of paramount importance for identifying the existence of any similar or infringing trademarks.

Using our self-service platform your preliminary knockout international trademark searches can be run globally - in up to 5 countries of your choice. We also include the United States Patent and Trademark Office automatically for you (USPTO). Relevant international marks pertaining to your selected countries  (from WIPO, European Union Intellectual Property Office EUIPO and the African Regional Intellectual Property Organization (ARIPO) are also included for you, when appropriate to your search parameters.

When using the Madrid Protocol for trademarks you can choose up to 106 members and you can see an up-to-date list of the signed up countries on the WIPO website. Trademark searching at an international level is 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).

Trademark clearance checks

Once you have screened your new trademark you should run a full clearance search in each country that you plan to service before you register your trademark. This will help you to avoid infringement claims in the country. Our self-service AI Clearance Search tool enables you to search across your choice of 10 country registries, as well as web and common law data, to safely find all similar trademarks to your candidate.

You get algorithmic scoring of name linguistics and product similarity which raise your candidate’s biggest potential threats to the top of your clearance report, This makes your trademark clearance search dramatically faster and easier.

Our platform’s AI Clearance Search tool also gives you an elegant summary of potential opponents’ portfolios, past oppositions, size and strength; investigate the strength of your candidate brand and its component parts within product types.

A trademark attorney can also help you with this and can assist you in filing your applications. A trademark attorney will be able to provide you with advice, professional search, and detailed reports on the mark's status overseas. This will reduce the time it takes for your company to expand abroad, as the process can be time-consuming. Using a trademark professional can also help you to avoid potential trademark candidate “do-overs” and save your business time and money in the long run.

3 common pitfalls

1. Failure to register nationally

One of the most common mistakes associated with international registration and search of trademarks is to assume that you can register your trademark abroad if it is not protected within your home country. In order to gain international trademark protection through WIPO, your organization must have the rights to the trademark in your home country secured first.

2. Translation of brand names

The translation of trademarks is another area where you may fall down. Our platform has you covered here too! Our NameCheck tool gives you a clear picture of risk in seconds.

Our NameCheck Word Meanings Tab has been designed to warn you when the meaning of your candidate name, or elements of it, could prevent registration; or when its meaning in one or more languages could hinder its success in the marketplace.

You can check your trademark candidate for alternative word meanings against translations and transliterations from all major languages globally (200 dictionaries). So, it helps you at the clearance stage of the trademark ‘assembly line’ to avoid putting forward trademark candidates with mixed messages or unintentional ‘immoral and scandalous’ meanings!

3. Fail to plan, plan to fail

Not planning the search and application is the most costly mistake as a company. Using a  simple calculator will give you an indication as to whether it is worth registering a mark in multiple countries.

Get started on your journey to world domination today

TrademarkNow is one of the world’s leading AI-assisted trademark search and watch platforms. We have thousands of happy customers and help to protect millions of trademarks internationally today.

And we have now made it easier for new businesses to protect their brands against potential infringements by offering our 3 fully flexible and affordable, new trademark search and watch tools. 

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