Brands without Borders How to run cheaper, better international knockout searches
Alexandra Svensson | February 22, 2022
Alexandra Svensson is the founder of Svensson Legal LLC, a boutique IP firm that helps brands manage their IP and scale their commercial operations. She's practiced on both sides of the aisle: starting her career at Foley & Lardner, moving to Copenhagen, Denmark to serve as in-house trademark counsel at the pharmaceutical company, Novo Nordisk, then returning to the States with Charles Schwab.
It’s a story that’s been unfolding for some time: the Internet is making our world larger and smaller at the same time. As e-commerce continues to drive globalization, brands are rapidly expanding their geographic footprints. Many now offer worldwide shipping, enabled by “social selling,” or sales made through social media platforms like Instagram, reaching customers across the globe.
At the same time, the Internet is also making it easier, and cheaper, than ever before to launch a new business. So it comes as no surprise, to trademark practitioners especially, that NYU School of Law professor Barton Beebe claims “trademark depletion” is the biggest challenge facing the trademark system this century. According to Beebe and his fellow NYU Law School Professor, Jeanne Fromer, 75% of everyday, English words identically matched a registered U.S. trademark. 77% matched a registered EUTM.
Trademark crowding at home and abroad, combined with newfound global reach, makes clear that today’s brands need to prioritize international clearance. But most have not adapted their international trademark approach accordingly, waiting to perform international clearance until expansion plans are drawn up and target markets identified. Why not?
An obvious reason is cost. International clearance can be incredibly expensive. Purchasing commercial vendor searches in multiple jurisdictions, and engaging local counsel to interpret the search results adds up quickly. Until it becomes a “need to have” on the eve of launch, it remains a “nice to have.”
But what if brands had access to cheaper, more focused international knockout searches while clearing their mark domestically? And what if immediate red flags in large, key international markets informed their brand name adoption at home, long before they had to decide whether to re-brand or tussle with third parties abroad? For those willing to give it a try, here are three things to consider.
Use a Free Trademark Database
US trademark attorneys tend to over-rely on commercial search databases for international clearance when a simple, free knockout search would have killed the name in under five minutes. And while local counsel should be engaged for searches beyond knockouts, offering affordable, international knockouts is an easy way to increase value for clients.
Both WIPO and the EUIPO have free, easy-to-use trademark databases. TMView, operated by the EUIPO, is the world’s largest trademark database that you may have never heard of. It contains trademark application and registration data from all EU member states, the EUIPO, and several others (including Australia, the UK, China, and the US). It is very user-friendly.
So user-friendly, in fact, that I’ve considered using it instead of TESS for some searches. All trademark attorneys should learn free-form TESS search strategy, even when paralegals are performing the search. But for those of us who remain intimidated by it, TMView offers drop-down search filters (Trademark Office, Nice Class, Trademark Type, and Applicant Name, among others) that, while limited, are sufficient for a basic, no-frills knockout.
The most exciting functionality of TMView has to be its new search image tool, eSearch Plus, currently in beta. Users can search a select group of European trademark registries, including the EUIPO, by simply uploading JPEG or PDF images. It’s similar to vendor image search services, but free. And it seems fairly accurate too. A recent comparative performance analysis performed by the EUIPO asked experts to list which trademarks they’d expect it to produce with 48.6% accuracy. No design codes necessary.
Adapt your search strategy
Performing a European-focused knockout search can be confusing. Do you need to search EUTMs in addition to country-specific registrations? If your client wants to file an EUTM, must you clear the mark in all 28 EU member states? What about WIPO registrations?
Here are some guiding principles to follow when creating an effective search strategy:
- Focus on Key Markets. Clearing a mark in all 28 EU member states is not realistic. Not to mention, it’s incredibly time-consuming and expensive. Even well-funded global brands follow the ‘key market’ approach: compiling a list of potential key markets and only clearing the mark in those markets. Key markets usually correspond to larger economies within the EU bloc, or markets of particular significance to the company or industry: Germany and France, sometimes Spain and Italy. Following this approach, you might consider searching the EUIPO registry, along with the French and Germany national registries, as well as WIPO designations in those countries.
- Distinguish UK Marks. As you’ve probably heard before, the deadline for converting EUTMs to national UK registrations was January 1, 2021. After that date, EUTMs are no longer protected in the UK. This means that potential expansion into the UK market will require searching the UKIPO, but not the EUIPO or member state registries. Conflicting EUTMs will no longer pose an obstacle to UK use and registration.
- Understand WIPO terminology. WIPO filings should be considered in your search, but bear in mind that the WIPO “international registration” itself is only an administrative document and does not convey any trademark rights. Trademark rights through WIPO stem from the basic application, filed through the applicant’s office of origin, and expand to “designations” and “subsequent designations” filed with national offices. Basic registrations, designations, and subsequent designations should all be considered in your search strategy.
Consider geographic nuances in the law
While most trademark principles have been harmonized amongst countries adhering to the Madrid Protocol, each country and filing protocol interprets those principles slightly differently. This explains why you can- and should- engage local counsel before performing in-depth clearance or setting a filing strategy.
But for those US practitioners performing a simple knockout search in foreign markets, possessing a basic understanding of some of these nuances in the law can make your search faster and more accurate. Key nuances to consider include:
- Likelihood of confusion. The EUIPO, for example, does not refuse registration based on likelihood of confusion grounds. There are no §2(d) refusals. Instead, the burden is placed on trademark owners to oppose applications that pose a likelihood of confusion, referred to as a “relative ground for refusal”. This distinction obviously impacts clearance. You may need to briefly investigate conflicting mark owners, their use, legal sophistication, and likelihood of challenge.
- Use requirements and repeat registrations. The EUIPO, along with European national trademark offices, does not require proof of use as a prerequisite to registration. Instead, registrants are granted an initial five-year non-use “grace period” following registration to put the mark to genuine use. If the mark has been registered for more than five years, and does not appear to be in use, it is vulnerable to a non-use cancellation action and the risk it poses to use and registration is likely low.
- Priority. Absent any express priority claims, the priority date for an EUTM is the date of filing (Article 34(1) and Article 36 EUTMR). This is consistent with the “first to file” approach to trademark law, followed by most non-Commonwealth countries.
- Distinctiveness. Like the USPTO, descriptiveness or non-distinctiveness are grounds for “absolute refusal” at the EUIPO and in other European jurisdictions. While the USPTO appears to be tightening its distinctiveness standard (just look, for example, at the recent string of failure-to-function refusals), it has historically been more lenient with respect to slogans than the EUIPO. The EUIPO is especially wary of slogans, often calling them “mere promotional formula”. Scrutinize slogans and engage local counsel when necessary.
International clearance can be intimidating, particularly for practitioners who only perform it occasionally. Offering affordable, quick international knockout searches- and encouraging clients to perform them at initial brand name inception instead of years later- will only increase your value-add. Just imagine if T.J. Maxx (or T.K.Maxx in the UK) or Burger King (or Hungry Jack’s in Australia) had done the same.