If you need to consider overseas trademark registration from the brand-naming stage, what is the most efficient method of conducting a preliminary trademark review?
The safest approach is to collaborate with patent attorneys in various countries to scan all proposed brand names and assess their registrability in both Korea and abroad.
However, launching a new brand typically involves screening over 200 potential names across approximately four categories. If there are many target countries and the brand is of significant importance, this scope can become much larger. Thorough reviews of all these names can be challenging in terms of time and cost.
Here is a suggested process:
- Focus primarily on the registrability of the trademark within Korea.
- Conduct a preliminary screening using free global online trademark search sites.
- Have 2-3 final candidate names reviewed thoroughly by patent attorneys in key overseas markets.
- For other countries, perform a basic search to check for identical trademarks and proceed with applications. Handle any issues that arise afterward.
Below is a more detailed look at free global online trademark search tools.
TMview and WIPO Global Brand Database (GBD)
TMview (tmdn.org/tmview) is a global trademark database provided by the European Patent Office. While it may not cover all countries perfectly, it offers valuable free access to similarity search data. This makes it particularly useful for Korean businesses expanding into regions like Europe, the U.S., and Japan. It is the only free search tool that provides both trademark and similarity search capabilities for these key markets without needing to hire local representatives.
However, TMview may occasionally miss records that are available on national patent office websites. Therefore, it’s essential to verify results using WIPO GBD and the respective national trademark databases.
Steps for TMview Search:
- Select “fuzzy search” and enter the trademark.
- Choose the region.
- Select the classification.
WIPO GBD (branddb.wipo.int) is a global trademark database provided by the World Intellectual Property Organization (WIPO), a UN agency. It covers more countries than TMview but does not offer similarity search capabilities. Nevertheless, it is effective for identifying pre-registered identical trademarks.
Both TMview and WIPO GBD are free and allow users to view the trademark landscape in key markets. Utilizing these tools during the naming stage can significantly reduce trial-and-error and related costs.
National Patent Office Databases
Many countries are not fully covered by TMview or WIPO GBD. Once you have narrowed down the target countries, you should also perform searches on the national patent office databases.
For example, China does not appear reliably in these global databases. Therefore, it is crucial to use the Chinese Trademark Office’s website, which offers similarity search features.
Similarly, many Southeast Asian and Latin American countries have searchable trademark databases. These systems are continually improving, making it essential to check for pre-registered identical trademarks in advance.
For African, Central Asian, and many Middle Eastern countries, online searches are often unavailable. In such cases, you may need to hire a local representative to assess registrability or file the application without a preliminary review, resolving any objections later. Since registration assessments can be more expensive than filing, companies often opt for direct applications.
Maximize the Use of Google
Google is a powerful tool for efficient, cost-free screening. The two main purposes of Google searches are:
- To check for prior trademarks in use that may not be registered.
- To identify any unintended negative connotations or unexpected meanings associated with the trademark in specific countries.
For instance, a Korean trademark transliterated into English was once rejected in the U.S. because it resembled a common surname in the Arab community. This kind of cultural nuance can be difficult to predict without thorough Google searches.
Global Trademark Searches with the SAEGIS System
As brands increasingly target global audiences from the outset, there is a growing need for comprehensive international trademark checks. To meet this demand, the SAEGIS system was developed. This platform allows users to screen identical and similar trademarks across 186 countries simultaneously.
While SAEGIS saves time and money by providing extensive screening data, it is costly—about 15 million KRW per trademark search. Due to this high cost, only a few large companies in Korea use it. Additionally, the system provides raw data but does not offer conclusions on registrability.
Trademark registrability depends on various factors, including the examiner’s judgment, each country’s trademark examination trends, and cultural context. Even after an expensive global search, there may still be discrepancies between the search results and actual registration outcomes. Despite thorough preliminary reviews, it is nearly impossible to register a trademark in all countries without any issues. The key is to minimize risk through proactive screening and be flexible in resolving any problems that arise later.