How to Search Before Filing: Overview

•             Overview

Before filing an international application through the Madrid System, you should search to find out if identical or similar marks already exist (or are pending) in your target markets.

Use this guide to find out how to search WIPO’s Global Brand Database before filing your application, and how to locate the trademark registers of national and regional trademark Offices.

•             Why search?

Searching existing trademarks is a necessary first step. If your trademark infringes on another person’s IP rights or doesn’t comply with local laws, you may not be able to register it.

WIPO and national/regional IP Offices provide databases that can help you find out if a mark similar to yours is already in use for the same or related goods and services.

Get started with your search using WIPO’s Global Brand Database.

•             Global Brand Database

WIPO's Global Brand Database enables you to search for trademarks registered under the Madrid System, Appellations of Origin registered under the Lisbon System, and Emblems protected under the Paris Convention 6ter. A number of national trademark collections are also included.

Through the Global Brand Database you can:

•             Conduct one search covering multiple sources simultaneously

•             Discover similar or identical word marks using a variety of search features including Boolean, proximity, word-stem, phonetic and “fuzzy” search features

•             Find similar or identical image marks using AI-powered search by image function

Although the Global Brand Database covers a number of large trademark collections, it does not include trademarks filed directly (i.e., outside the Madrid System) with a number of Contracting Parties. It may be prudent to also search the registers of national/regional IP Offices.

•             National and regional IP Office databases and registers

•             The databases or registers of national/regional IP Offices provide records of trademarks filed and registered in those offices. WIPO maintains information on Contracting Parties (members) of the Madrid System, including links to IP Office websites. Follow these links to find national/regional registers.

•             Remember that these Registers are not managed by WIPO and may be in national languages other than the three official languages of the Madrid System - English, French and Spanish.

•             If you discover a similar or identical mark

Discovering an identical or similar mark prior to filing may be preferable to finding out afterwards. This knowledge will enable you to make appropriate filing decisions. It is important to determine if the identical or similar mark:

•             is for the same or related goods and/or services

•             is a live application or registration

If the identical or similar mark is for unrelated goods and/or services, you may decide to proceed with your application. Similarly, if the application has lapsed or the registration has expired, you may also wish to proceed.

Of course, you may also elect to proceed with your application even if there is an earlier application or registered mark in a Contracting Party of interest for the same or related goods and/or services. You should be aware that in such a case a provisional refusal may be raised by the concerned Office of a designated Contracting Party, on the basis that the mark conflicts with an earlier pending or registered mark. There are a number of ways to overcome this type of refusal, but a local representative in the Contracting Party may be necessary to respond to the provisional refusal.

Remember – If you need assistance to search prior to filing, or advice on strategies to avoid conflicts with already existing marks, you can consult a trademark attorney, agent or lawyer in your country or in the country of interest. National/regional IP Offices usually maintain lists of registered attorneys.

•             Related links

•             How to file an application

•             How to manage a registration

•             Guide to the International Registration of Marks under the Madrid Agreement and Madrid Protocol

•             Global Brand Database

•             Madrid Monitor

•             Members

Source:

https://www.wipo.int/madrid/en/how_to/search/