A global trademark search, as the name suggests, is a search for trademarks around the globe. Before you file a trademark, such a trademark search with WIPO is fundamental. You might come up with a unique word/phrase for the product or service that needs a trademark. However, you need to be certain that your word/phrase doesn’t overlap with a pre-existing trademark. Hence, it is vital for you to carry out a global trademark search before filing one of your own.
This article covers all the important points you need to remember about a global trademark search. That’s not all! We’ll also show you how to conduct a trademark search on the WIPO website.
Related Article: Why should you take Trademark Search Services?
Process of Conducting an Efficient Global Trademark Search
Before we dive into the actual search process, let’s first understand the basics. You must keep these points in mind while carrying out a trademark search.
1. Elucidate the product or service that you want the mark for
This step is simple enough, yet very important. You must ensure that you are clearly describing everything about the good or service to eliminate any confusion.
2. Identification of class for your product or service
You must identify the particular class that you can associate with your item. To ensure which terms are usable, follow The Nice Classification. You need to locate a class that describes your item. There are 34 classes for goods (1-34) and 11 classes for services (35-45). Also, go through the Guide to the International Registration of Marks under the Madrid Agreement and the Madrid Protocol. This will further help you gain clarity on international trademark laws.
Step 1: Search for your product via the “Search Selection” selection
Step 2: Check results
We can see that “football shoes”, which is a very close match to “football boots”. It belongs to class 25. This class also contains clothing and headwear. Now that you have fixated your class, you can proceed to the next step.
3. Identify related goods or services, and their classes
You must also identify and scan the terms for the goods and/or services that relate to your product in terms of usage, advertisement or sales. For example, football boot’s usage and sale happen with footballs and kits. You must also scan the goods or services that relate to your product in the Nice Classification. The purpose is to determine their class as well. In this case, they fall in the same class, Class 25.
4. Develop a basic search strategy
Try and think of other alternatives for your trademark if your first preference is unavailable. Play around with the keyword while coming up with an alternative if your mark includes a phrase. Also, use truncation devices (*) or wildcards (?) to look for marks with word stems similar to yours.
5. Widen your search strategy horizon
You should also search for alternative spellings, homonyms, synonyms to your trademark. Also, search for words that have similar sounds or appearances or even phonetic equivalents. You can also narrow your strategy later. This can be done by limiting your search results with the goods/services you found in Step 2 for selecting the Class or in Step 3 for related goods/services.
6. Conduct the actual search
Now comes the real part, the global trademark search on WIPO’s web-based Global Brand Database. You can do this yourself if you have internet access. You can also go to your local Patent and Trademark Office. Follow the screenshots for a more clear idea.
Step 1: Select any one of the options available on the page. You can search for Trademarks via parameters such as Brand, Names, Numbers, Dates, Class, and Country.
Step 2: Taking the example of an abstract brand name “Silent Step” for sports footwear. Check if a similar mark already exists by searching the database.
Check Multiple Databases
You can never rely solely on just 1 database, regardless of how expansive it is. If you want a trademark in a select number of countries, then it is advisable that you cross-check with the national trademark database too. This is a second layer of ensuring that you are not accidentally infringing any marks.
Related Article: What is Trademark Violation?
Need a professional Searcher? – TMReady
You invest a lot in building your brand. Apart from the money, the hours of efforts in promotions, recognition and making it synonymous with what your business stands for. Before you make this effort, you need to be sure about heading in the right direction. That is conducting a global trademark search. Despite keeping these points in mind, you may feel that you need professional assistance. TMReady offers the widest and most flexible search coverage. To ensure this, we carry out all our searches manually, and not via computers. We also want to ensure that our prices are affordable without compromise on quality. Your satisfaction is our guarantee.
To make an inquiry, contact us on TMReady.