There are two main types of searches available:
- Screening searches on WIPO Global Brand Database, TMView and/or ASEAN TMview
For multijurisdictional filings, it is a good idea to start with preliminary screening searches on global trademark databases. This is a more economical way to ensure there are no obviously identical marks registered/filed in identical classes, that may block your registration(s). Do note however that such screening searches are limited to the countries covered by the relevant global databases and cover identical word marks only (exclude similar marks). Based on the results, we can then decide whether deeper searches are needed in each country of interest.
2.Pre-filing searches in specific countries
This would be a full conflict search, encompassing an analysis on the inherent registrability of the mark (considering the distinctiveness, descriptiveness, genericity of mark + other absolute grounds of objection such as whether the mark is contrary to public policy/morality, deceptive in nature, etc.) and whether any earlier identical/similar marks exist on the national register, to assess the chances of successful registration. It would be much costlier to do this, as deeper searches are involved, and the resulting report is more thorough.
If pre-filing searches are required, we work with our foreign associates in the relevant countries of interest to provide the jurisdiction-specific pre-filing search report. Associates' costs vary quite a bit depending on the country and base currency involved, volume of search results generated and the number of classes involved. On average, you would need to be prepared to pay at least SGD1,000 – SGD2,000 per full conflict search in each country.
Our recommendation: For our clients who are looking to file trademarks in many countries, we would suggest proceeding with a basic screening search first. After obtaining the initial screening results, we then decide whether a deeper pre-filing search is warranted, especially for those specific countries where screening results are not clear and where risky earlier marks of concern have been found. This staggered approach to conducting searches is a prudent way to save on initial costs invested.
IP Lawyer Tools by Martin Schweiger
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
