Tips for Using the International Database of Registered Trade Marks

Emily Young

• 11 June 2021
• 28 June 2021
• 5 min read

A trade mark is a form of intellectual property (IP) protection that gives you exclusive use over your trade mark. A trade mark can help distinguish you from your competitors, even in international markets. Before starting an application, you must examine the registered trade marks overseas. This will ensure you will not infringe on someone else’s trade mark. 

Conducting a thorough trade mark search using the World Intellectual Property Organisation’s (WIPO) International Database of Registered Trade Marks is a great way to determine if your trade mark is already registered overseas. This search tool has more than 36 million trade marks sourced from 40 databases. However, with more than 14 search functions, using this database can be overwhelming. 

This article will take you through some tips for conducting a thorough trade mark search using the International Database.

Use the ‘Search By’ Function 

The ‘Search By’ function lets you search for specific words. You can search by brand, numbers, dates, class, and country. Some examples of the search features available are: 

• ‘Normal’ search – this function will search for the exact words you enter;
• ‘Phonetic’ search – this function will search for terms that sound like the words you have entered. This is important because not only will your trade mark be unavailable for use if it is identical to another trade mark, it also cannot sound the same as an existing trade mark; 
• ‘Fuzzy’ search –  this feature will expand the search to terms that have similar spelling to what you have searched; and 
• ‘Image class’ search – this search allows you to describe an image to search for visual trade marks. 

Each of these search functions make it easier to narrow down your search to avoid producing unnecessary results.

Use the Filters 

The ‘Filter By’ search tool is a useful way to reduce the number of results your search produces. Indeed, this database stores millions of trade marks. Therefore, reducing the number of irrelevant results you produce will save you both time and stress. You can filter by: 

• Image type – for example, if you want to find trade marks that are similar in shape, concept, or colour; 
• Status – you only need to search for trade marks that are accepted or pending; and 
• Class – you only need to search for trade marks in the same class of goods or services as your proposed trade mark. 

Search by Trade Mark Classifications 

You can reduce your trade mark search results by filtering by trade mark classification. It is important to remember that your trade mark can be similar to an existing trade mark so long as it belongs to a different class of goods or services. The International Database of Registered Trade Marks allows you to filter your search using an international classification of goods and services called the Nice classification. You can search to find out what class of goods or services your trade mark fits in using IP Australia’s trade mark classification search system.

Consider Searching Outside the International Database 

If there is a particular country you are interested in registering a trade mark in, you should use that country’s own trade mark search register. This is because the Global Brand Database does not include trade marks filed directly with a country. With the Global Brand Database producing so many results, a more specific country search is a great way to feel more confident in your search results. 

Additionally, the Global Brand Database does not include trade marks filed in countries that are not a party to the Madrid Protocol. For countries that are not a party to the Madrid Protocol, you must conduct a specific country search. For countries that are a party to the Madrid Protocol, you can check out the Madrid Member Profiles available on the WIPO website to learn more about their national databases. 

Key Takeaways 

Researching already registered trade marks overseas will save you time and money. Indeed, The WIPO’s International Database of Registered Trade Marks is a massive database with millions of results. Knowing tips and tricks on how to reduce your search results can save you the time and stress of filtering through countless search results. Some of these tips to consider include: 

• utilising the various search functions; 
• using the filters to narrow your search parameters; and 
• considering other databases available. 

For help applying for an overseas trade mark, contact our experienced trade mark lawyers today on 1300 657 423, or fill out the form on this page.

Frequently Asked Questions