How do you get International Trademark protection? a lawyer check your trademarks is usually rather expensive – and often required when it comes to international issues. So rather than waste their precious time, we recommend you at least do some basic checks yourself, or use a naming agency to help you narrow down to a very short list of names that are provisionally available.

First of all, there is no such thing as an international trademark or international trademark body, though ICANN had paid a lot of money to set up a new international trademark registry since trademarks are at the heart of all domain disputes. However, the ICANN database has little or no use as far as I can see and certainly is too expensive for anyone but the biggest brands. Of course, the big brands have already taken many other protection steps years ago.

girlglobesmlIf you know you want to go worldwide from the outset when you register a trademark, you can register under what is known as the Madrid Convention with WIPO (World Intellectual Property Office). This does not guarantee you clearance in all the Convention partner countries, but does guarantee that WIPO will first do their checks then recommend it for expedited processing in all target member countries.  (See WIPO trademark summary).  For various reasons (complexity, exposure, price) this system has never become really popular and today there are still less than 1million WIPO trademarks.

So in practice, we are back to checking and applying country by country with the exception being the newer EU trademark which covers all EU countries. Many lawyers still file country by country in Europe since that way they are guaranteed some coverage (usually prioritized by their key target markets) whereas if they lose EU mark because of one country, they lose all of Europe.

Rather than every small country trying to maintain its own trademark and patent systems, some have banded together and run a common system. So when you can’t find a trademark system for Luxembourg for example, looks instead for one for Benelux countries. Similarly in S.E. Asia and parts of Africa.

Back to the big question:  How do I check multiple countries at once? Firstly there are a number of very good professional services who do this on both an automated and manual and expert systems basis. Major players are Saegis and Thompson’s Compumark. With any of these you can set filters and search even on parts of names. Best you understand your International Classes first or you might drown in the results.

Secondly, in the past few years, WIPO has introduced their own TMView free service. We love it a lot and it saves thousands of man hours. (Thank You WIPO). But be careful. It has most of the western countries of the world, as well as many other big ones like Japan, Brazil and Mexico and the non-EU European countries like Switzerland and Norway as well as Eastern European countries. But no China’s or any Middle East countries. (See International Trademark Offices). In other words, it does not have countries that do not have copies of their trademark databases in Roman character set versions. Here are the countries covered:

WIPO international trademark countries

Partial world trademark database

The numbers after the names indicate how many trademark entries are in each database searched. Now my clients will know why we so often search US first, even for non US based projects. Also why so many Aussies file in the USA without even first filing in Australia (which along with most of Africa is missing here). And I note with keen interest that the big 3 runner ups after USA are Brazil, Japan and Mexico. China also has close to 4million trademarks showing that countries that were notorious for non protection of intellectual property rights are now very serious.

Finally, just because you have extensive international trademark protection on your Company Name as a trademark does not mean you can use that company name in other countries. Each country has its own method of allowing and tracking company name registrations. Most (with USA being the big exception) have a central business registration scheme for company names, their incorporation type, and all the associated tax issues. In the USA, companies are incorporated at the State Level and States do not check with each other at all. As long as the name is clear in their state, they usually let it through. (By clear here I mean no exact duplicates, regardless of field of business). They do not check Federal or any other trademarks. They do not even check small business registrations with their own counties.

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