Innovation and enterprise blog

27 June 2013

Checking your trade mark abroad

When I work in the Business & IP Centre, one of the things that previously used to make my heart sink a little was a request to check whether a brand name was registered as a trade mark anywhere else in the world.

With patents, the Espacenet international database has been available free online for over a decade. But for trade marks, until the last year or so, it was necessary to find the patent office website of every single country you were interested in and check their trade mark database, which sometimes wasn’t available in English or had very limited search options.

Now, however, there are two free databases which anybody who might want to register their trade mark overseas should be aware of.

TMViewThe first is TMView, which is run by the Office for Harmonization in the Internal Market, the European Union organisation that administers the EU Community Trade Mark system, which can give you a trade mark valid in the whole EU. TMView allows you to search for not just Community Trade Marks but marks registered in all of the individual countries of the EU, except for Croatia, Cyprus and Greece.

One minor limitation is that the list of the goods and services that the mark covers will be in the language of the country involved, but there is an automatic translation system to help turn it into English. Because of this, if you want to look for a mark covering specific goods you need to use the Nice Class. This is a standard list of code numbers to indicate the goods and services, and the site will help you find the right one.

The second is the Global Brand Database, run by the World Intellectual Property Organisation. At Global Brand database the moment this covers marks registered in the USA, Canada, Australia, Switzerland, Estonia, Egypt, Algeria, Morocco and the United Arab Emirates. It also covers all marks anywhere in the world that have passed through WIPO’s Madrid Agreement scheme, which makes it easier for marks already registered in one country to be registered in others. While the list of countries is currently quite short, it includes some commercially important countries outside the EU.

Again, unfortunately, the list of goods and services covered by a mark is only available in the original language and this time there is no automatic translation (although you can always cut and paste the text into a translation website). Although you can search for goods and services by typing a word in, it will not be translated, and if you are searching for marks in non-English-speaking countries it is better to use the Nice Class.

I do have to add a further word of warning if you want to register your trade mark abroad. In most countries, you only have the right to a mark if you are actually doing business in that country, even if nobody is using the mark there.

Sometimes people come to the Centre and ask us for advice about foreign trade mark registrations before they have done anything to start their business at all. In most countries, if you register your mark but don’t start actively promoting your business and/or trading in that country within a certain period of time, which varies from country to country (five years in the UK, for instance), you can be taken to court by someone else who wants to use a similar mark.

If you can’t prove that you are doing business in the country involved, you may well have your mark wholly or partly cancelled and you may also end up having to pay compensation or even being fined. This is designed to stop people applying for marks that they think their competitors might want to use out of spite or a desire to obstruct their business.

But it also means that if you register in a country that you don’t actually have much chance of expanding into, worse things can happen than just wasting the money you spent on the application.

You can find out more about trade marks on the Business & IP Centre website or come along to one of our workshops.

Philip Eagle on behalf of Business & IP Centre

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