For multiple reasons, the trademark clearance and protection process are some of the more challenging areas of brand naming, increasing in complexity for clients operating in a global marketplace. And while there is no one-size-fits-all approach to clearing a trademark for global use and/or registration, there are some broadly applicable considerations and strategies you will want to keep in mind.
The first step in the trademark process involves initially clearing the candidate for further consideration in the country/jurisdictions of interest by conducting what is commonly referred to as a “preliminary search”—also known as a “screening search” or a “knock-out search”. This type of search typically covers searching relevant country/territory trademark office databases for previously filed and registered marks.
Many factors go into determining whether or not a mark is likely to cause confusion with an earlier filed or registered mark. In brief, these include relatedness of goods and services, visual, phonetic or connotative similarities, overlapping channels of trade, as well as legal strength of the candidate (i.e., is it merely descriptive, suggestive, arbitrary, or fanciful/coined), the extent of unrelated 3rd party uses of similar marks, translations, and marketplace considerations.
Considering Countries/Territories to Include
The preliminary search should always include any countries or territories where you are planning on manufacturing, distributing, and most importantly, selling your products. Deciding on which countries to include in a global clearance search involves considering both the costs involved and the countries and territories where you plan on manufacturing, distributing, and most importantly, selling, your products. Simply put, if you plan on offering your products/services for sale in a given country, then that country should be included in the preliminary search strategy.
Screening in Tiers
There is no one “right” way to tackle the global clearance process. Incorporating regional databases such as the European Union Trademark Mark records (EUTM), the African Regional Intellectual Property Organization (ARIPO), the World Intellectual Property Organization’s (WIPO) database of International Applications and Registrations may be appropriate in a given situation.
Furthermore, when a large number of countries are of interest, River + Wolf often recommends starting by searching your “first tier” countries—presumably the countries of greatest commercial and business importance to you. If the candidate does not make it past the first-tier country search, it won’t be necessary to continue on to the next tier.
You might also consider using a different name in a country or territory of lesser business importance rather than lose a name or names of high interest that are clearly within reasonable risk levels in major markets, but riskier in lesser markets. Again, there is no one right way to approach the process. At River + Wolf we aim to use a nimble approach that best addresses the client’s goals.
Knocking Out High-Risk Candidates
Just as with US screening, if the global screening search reveals marks that blatantly suggest the candidate will not be legally available, or will face substantial legal hurdles, the candidate should be removed from consideration (“knocked out”). More often, the results fall in a gray area, where some risk may be present, typically ranked somewhere between low, medium and high risk. Then, depending on how risk averse you are, the candidate can either be removed from consideration, or continue on to the next level of legal clearance which is known as the full search.
Undertaking Full/Comprehensive Search
No candidate should be adopted until it has undergone a full “comprehensive” trademark search—not just in the United States but in all the countries/territories of interest. Full searches not only cover the respective country’s trademark office database, but also covers use of the mark or confusingly similar marks in the marketplace, on the internet, in domain names, in newspapers and periodicals, in industry databases, business name records, state trademark records, and so on.
Preparing and Filing the Mark
Once a candidate has successfully made it through both the preliminary and full clearance process in each country/jurisdiction of interest, trademark applications should be promptly filed in each of those countries in order to stake a legal claim to the mark in those jurisdictions. In most countries, no trademark rights can be secured unless a trademark application is filed and registered (though some countries, like the USA, also allow for the establishment of common law trademark rights).
When it comes to global filing strategies, trademark counsel will be able to guide you in order to make prudent choices and take proper advantage of various treaties and multi-country filing mechanisms. For example, one trademark application filed for a European Union Trade Mark application covers all member states of the EU (i.e., in lieu of filing separate direct national applications in each member country individually), and registration with the Benelux Office for Intellectual Property will confer protection in the Benelux territory, which comprises of Belgium, Luxembourg, and the Netherlands.
In a similar vein, ARIPO provides a mechanism for trademark applicants to file one application that can cover Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, São Tomé, and Príncipe, Somalia, Sudan, Swaziland, Tanzania, Uganda, Zambia, and Zimbabwe. Then there’s the Madrid Protocol, which provides a system for filing one “international application” that can provide trademark protection in many countries- as many as the applicant chooses, so long as that country is a party to either the Madrid Agreement or the Madrid Protocol. In general, an IP attorney in the country should be used for filing, though a client’s US attorney can also quarterback the process.
Regardless of whether you are seeking to use and protect a mark exclusively in the U.S., or on a multi-jurisdictional, global basis, you should have a cohesive and well-planned-out filing strategy, informed by competent counsel. This will increase your odds of success at the respective trademark offices, while reducing the odds of unwanted third-party challenges.
