The In-House Counsel’s Guide to International Trademark Search

How was your last international trademark search experience?

Smooth?

Easy?

Affordable?

Normally, these are not adjectives in-house counsel would associate with an international search. And there are some reasons for this: An increasing number of potential threats due to economic globalization, costly legacy provider search packages, and the complexities around understanding international regulations - to name a few.

With that said, it doesn't have to be difficult. Like anything else, things get a whole lot easier when you have the right tools. Case in Point: Would you rather install a wall-to-wall shelving unit using a plain ole' screwdriver or a cordless, electric?

If installing shelving units was your livelihood, investing in the higher-end model would probably be a good decision. You would get more done in less time, thus making more money.

The In-House Counsel’s Guide to International Trademark Search

In this article, we'll review the in-house counsel's equivalent to creating a more efficient work experience, thus saving time and money. But first, let's look at some of the most common dilemmas faced by in-house counsel when conducting international trademark search processes.

Common Search Mistakes

The good news?

The same 45 Nice Categories of goods and services are used throughout the world, providing a great amount of predictability. The bad? That's about where the simplicity ends.

Searching in foreign countries requires an in-depth understanding of local laws, linguistics and search protocol.

Here is what we have observed as some of the most common mistakes:

1. Not Searching By Product Type

While searching by those 45 Nice classes is important, it's seldom enough when it comes to international search. Depending upon an individual country's registration requirements, you may find yourself surprised by how dubious some protocols are.

For example, for many countries within the EU, it is acceptable to write broad descriptions underneath class headings. While this is exceedingly convenient for the person filing, it can be a hurdle for someone trying to accurately assess risk as part of an international search.

In this case, a class-only search may neglect to reveal pertinent information, thus presenting an incomplete picture of registrability of the mark in question. Thus, the added protection of searching by product type becomes essential when conducting an international search.

2. Overlooking Negative Connotations

"Our brand name means what in Swahili?!"

That is an uncomfortable conversation you don't want to have, especially with the CEO of a major corporation.

Of course, every attorney worth their salt understands the importance of checking for negative connotations in foreign cultures. However, that doesn't mean they always get the job done. Ideally, you want someone with a working knowledge of prefixes, suffixes, and synonyms of words in your priority region. Leave no stone unturned when it comes to alternative meanings.

3. Not Searching Common Law Thoroughly Enough

While a simple Google search can be helpful, it is far from your only option. You should extend your common law search with the following:

  • Case Law Data (needs to be examined at region level)
  • Social Media Accounts (contact the existing admin)
  • New Product Databases (e.g. Mintel)
  • Industry Specific Newsletters
  • Commercial Registries
  • Online Directories
  • App Stores

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Minimizing International Search Costs

There is absolutely no substitute for onboarding quality outside counsel in the countries of your choosing. The level of expertise, experience, and certainty local counsel can provide is unmatched.

Partner with a good firm, who knows your company, and you can expect to receive a superior legal opinion and risk-assessment. Given unlimited financial resources, one would always hire local counsel.

However, if your organization does not have an unlimited budget, approaching outside counsel must be done pragmatically. Thankfully, there is now a new tool available that may be able to help your company avoid always having to hire outside.

1. Leverage Technology to Save Money

You can now analyze your mark candidate against millions of existing trademarks and other relevant data with NameCheck—a revolutionary artificial intelligence platform based on 12 years of trademark law modeling research.

For ONE flat fee you can:

  • Check product similarity, word appearance, word phonetics, and meaning in more than 150 languages.
  • Review filings for similar marks to determine how aggressive a trademark owner is in opposing.
  • View a ranked report of potential threats based on data analysis and case law.

While NameCheck cannot replace local counsel entirely, it can often be incorporated into your company's overall search strategy in a few different ways.

2. When to Use NameCheck

Ultimately, determining how to best incorporate NameCheck will depend upon the level of risk you are willing to accept. Different companies have different clearance processes. Assuming a company centralizes the work themselves, forgoing a third-party provider, it usually looks like this:

  • Step 1: KnockOuts (within your home country + WIPO, at a minimum)
  • Step 2: Prescreening (several relevant countries)
  • Step 3: Full Search (garner legal opinion)

If your company decides not to conduct a full search for every country of interest (due to budgetary constraints), NameCheck is an outstanding way to procure extra reassurance. Depending on the particular country and risk-threshold, you could streamline

3. When to Use Local Counsel

As wonderful as technology-assisted software is, it can never entirely replace local counsel. Different countries present different challenges. Thus, understanding the nuances of product categories and region specifies (first to file vs. first to use), phonetical considerations, and knowing how to access up-to-date data is important.

Always use local counsel for assessing risk in your priority countries. Additionally, always employ local counsel for the more complex countries on your list. For example, Gambia's overall data infrastructure is wildly out of date; you will need an insider to help navigate.

4. Where Do You Find Them?

When seeking outside counsel, there are several ways to find a potential match:

Remember: If you are looking for a particular type of expertise, bring it up when soliciting recommendations. Partner with the right counsel from the beginning, and you will save yourself headaches down the road.

Streamline Your Search With NameCheck

While we would never suggest NameCheck as a replacement for local counsel, or even a full international search conducted by a legacy provider, we do recommend it for companies wanting more control over the search process.

With unlimited international searches, and comprehensive risk assessments at your fingertips within seconds, NameCheck is the ideal tool for filling in the gaps:

Use it during the pre-screening process to quickly eliminate potential showstoppers.

Use it during the full search process for regions where you cannot afford local counsel.

 

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by Nick Potts.