How to search for a pre-registered trademark before trademark registration

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search for a pre-registered trademark before trademark registration

In the competitive world of business, your trademark is one of the most valuable assets that distinguishes your products or services from others. However, before you begin the registration process, it’s crucial to ensure that your desired trademark hasn’t already been registered by someone else. So, how do you search for a registered trademark? And what steps should you take to confirm that the mark is not already reserved?

In this article, we will explore in detail how to search for pre-registered trademarks both locally and internationally, providing real-world examples and practical tips to ensure a smooth registration process.

Part 1: The Importance of Trademark Search Before Registration

Before investing time and money into registering a trademark, it’s essential to verify its availability. Submitting an application for an already registered trademark can lead to rejection or even legal disputes, such as trademark infringement claims.

Why Should You Search for a Pre-Registered Trademark?

  1. Avoid Legal Rejection: If the trademark you wish to register is already in use, your application will be rejected by the trademark office. For example, a startup in Saudi Arabia attempted to register the trademark “Qahwat Al-Anoud” (Al-Anoud Coffee), only to later discover that it was already registered by another company, resulting in wasted time and money.

  2. Prevent Legal Disputes: Using a trademark that is similar or identical to an existing one may expose you to legal action. In 2018, Apple filed a lawsuit against a Chinese company for using the name “IPHONE,” which was too similar to its famous “iPhone” trademark.

  3. Protect Brand Reputation: Similar trademarks can confuse customers. Imagine if a counterfeit company registered “Adidas” and sold low-quality products—how would that affect the original brand’s reputation?

How Do I Know If a Trademark Is Not Reserved?

This is a common concern, and the answer lies in conducting a thorough search through official trademark databases. Several search methods are available, including:

  • Searching Local Databases: Such as the patent and trademark office in your country.

  • Searching International Databases: Like the WIPO database managed by the World Intellectual Property Organization.

  • Hiring Professionals: Some specialized firms offer in-depth trademark search services.

Table: Key Trademark Search Databases

Country/OrganizationOfficial DatabaseLink
Saudi ArabiaSaudi Authority for Intellectual Property (SAIP)https://saip.gov.sa
EgyptEgyptian Trademark Officehttps://www.egypo.gov.eg
GCC CountriesGCC Trademark Officehttps://www.gccpo.org
International (WIPO)WIPO Global Brand Databasehttps://www3.wipo.int/branddb

Frequently Asked Questions About Trademark Searches

Q: Can I rely solely on Google searches to check if a trademark is registered?
A: No, because some trademarks may be registered without a strong online presence. Searching official databases is the only reliable method.

Q: What if I find a similar but not identical trademark?
A: Even similar trademarks can lead to legal issues if they operate in the same industry. Consult an intellectual property expert for guidance.

In the next part, we will dive deeper into local trademark searches, how to analyze results, and common mistakes to avoid.

(Continue to Part 2: Local Trademark Search)

 

Part 2: Local Trademark Search (Step-by-Step Guide)

After understanding the importance of trademark searches in Part 1, let’s now focus on the practical aspects. This section will detail how to search for registered trademarks locally, whether in Saudi Arabia, Egypt, UAE, or other Arab countries.

Why is Local Search Essential Before Registration?

Even if you plan to expand globally later, you should start by searching in your home country first. The main reasons are:

  1. Avoid Conflicts with Local Trademarks: Some marks may be registered locally but not internationally, yet they remain legally protected within the country.

  2. Save Time and Money: Discovering that a trademark is already registered in your country allows you to modify it before filing, avoiding application fees and potential rejection.

  3. Compliance with Local Laws: Each country has different regulations regarding trademark similarities, and local searches help ensure compliance.

How to Search for Trademarks in Your Country?

1. Search Through Official Trademark Office Websites

Most Arab countries have online databases for trademark searches. Here are some examples:

CountryResponsible OfficeOnline Search Link
Saudi ArabiaSaudi Intellectual Property Authority (SAIP)https://saip.gov.sa
EgyptEgyptian Trademark Officehttps://www.egypo.gov.eg
UAEMinistry of Economy – UAEhttps://www.moec.gov.ae
JordanMinistry of Industry & Tradehttps://www.mit.gov.jo

Search Steps for Saudi Arabia (Example):

  1. Go to SAIP.

  2. Select “Trademark Services.”

  3. Click on “Trademark Search.”

  4. Enter the trademark name (e.g., “Zad”) or registration number if checking a specific mark.

  5. Use filters like class categories to narrow results.

2. Search Using International Classes (Nice Classification)

Trademarks are registered under specific classes (e.g., clothing, food, technology). Even if a name is registered, it might be available in different classes.

Example:

  • “Nestlé” is registered for food products, but you might register it for cars (depending on local laws).

3. Search for Similar (Not Just Identical) Marks

Some offices reject similar trademarks even if not identical.

Example:

  • “Coca-Cola” might block registration of “Coca-Cola Light” in the same class.

Table: Examples of Rejected Similar Trademarks

Original MarkSubmitted MarkRejection Reason
NikeNykeSimilar pronunciation/spelling
SamsungSamnsungIntentional misspelling
StarbucksStarBucks CafeAdded words don’t change identity

FAQs About Local Trademark Searches

Q: Should I search by name only, or include logos?
A: Search both name and logo if you have a visual design, as some marks may be registered as logos with different names.

Q: What if I find a registered but unused trademark?
A: Some countries allow cancellation of unused marks (after 3-5 years). You can file for cancellation then register it yourself.

Q: Is the free search on official websites enough, or do I need paid tools?
A: Free searches work, but paid tools like TrademarkNow or CompuMark provide more comprehensive results, especially for similar marks.

Real Case: How “Tamerah” Discovered Their Mark Was Taken

In 2020, a Saudi startup tried registering “Qahwat Al-Qassim” (Al-Qassim Coffee) but found it was already registered since 2018. Without prior search, they would have lost:

  • 5,000 SAR (registration fees)

  • 6 months of processing time
    Solution? They rebranded to “Tamerah Al-Qassim” and successfully registered it.


Key Takeaways:
Local trademark search is non-negotiable before filing. Use official databases, check classes, and look for similarities beyond exact matches. In Part 3, we’ll explore international trademark searches and global expansion considerations.

(Continue to Part 3: International Trademark Search)

 

Part 3: International Trademark Search (How to Avoid Global Pitfalls)

Having covered local trademark searches in Part 2, we now turn to the international dimension. Whether planning global expansion or avoiding conflicts with foreign companies, searching internationally registered trademarks is a critical step.

Why Conduct International Searches Even for Local Businesses?

  1. Prevent Future Problems: You might discover your trademark infringes on a global brand, leading to fines or forced rebranding.

    • Example: In 2019, a Saudi startup had to change its name from “Urban Café” after discovering it matched a US chain’s trademark.

  2. Protect Your Brand in Target Markets: If planning exports or foreign branches, secure your trademark internationally early.

  3. Prevent Trademark Squatting: Some companies register trademarks in other countries to extort the original owners (a practice called “bad faith registration”).

Key Global Trademark Databases

1. World Intellectual Property Organization (WIPO) Database

WIPO’s Madrid System (covering 130 countries) is the most comprehensive resource.

Example: Searching “Zara” shows registrations across dozens of countries in multiple classes (clothing, perfumes, accessories).

2. European Union Intellectual Property Office (EUIPO)

For EU markets, use EUIPO, covering all 27 member states.

3. United States Patent and Trademark Office (USPTO)

For the US market, use TESS, their electronic search system.

Comparison of Major International Search Platforms

PlatformCoverageKey FeaturesLink
WIPO130 countries (Madrid System)Advanced image/class searchWIPO BrandDB
EUIPO27 EU nationsUser-friendly with auto-translationEUIPO
USPTOUnited StatesDetailed historical dataUSPTO TESS
TMview70 countries (including some Arab states)Aggregates multiple officesTMview

When Should You Register Internationally?

  1. If you have customers/sales in other countries (even online).

  2. If your brand is prone to imitation (e.g., luxury or tech brands).

  3. If planning expansion within 3-5 years, as international registration takes time.

FAQs About International Searches

Q: Can I register in multiple countries simultaneously?
A: Yes, via the Madrid System, filing one application for multiple countries (cost varies by country count).

Q: What if my mark is registered in just one country?
A: You can register elsewhere or negotiate with the owner to buy rights in that country.

Q: Does US registration protect my trademark in Saudi Arabia?
A: No – protection is territorial. US registration doesn’t grant rights in Saudi Arabia unless separately registered.

Case Study: How “Dubai Coffee” Lost Its European Opportunity

In 2021, “Dubai Coffee” attempted German expansion but found “Dubai Coffee” was registered there since 2018. Consequences:

  • €20,000 lost in rebranding/redesign costs

  • 8-month delay to reregister as “DxB Coffee”

Lesson: Early international searches could have prevented these losses.


Key Takeaways:
International searches aren’t optional but essential for growing brands. Use WIPOEUIPO, and USPTO to verify availability. In Part 4, we’ll examine how to analyze search results and identify dangerous similarities.

(Continue to Part 4: Analyzing Search Results and Identifying Risky Similarities)

Part 4: Analyzing Trademark Search Results and Identifying High-Risk Similarities

After learning how to conduct local and international trademark searches in previous sections, we now reach the most critical phase: analyzing search results. How do you distinguish between a similar trademark that poses legal risks versus one that doesn’t? This section provides a detailed methodology.

search for a pre-registered trademark before trademark registration

How to Read Search Results and Assess Risk Levels?

When reviewing search results, you’ll typically encounter one of these scenarios:

1. Exact Match (100% Identical)

  • Example: Wanting to register “Starbucks” for coffee when it’s already registered.

  • Action Required: Immediately abandon the mark or attempt negotiations (rarely successful).

2. 70-95% Similarity

This represents the most dangerous gray area, as many trademark offices reject marks with substantial similarity.

Key Similarity Assessment Factors:

Comparison ElementDangerous SimilarityAcceptable Similarity
Pronunciation“McDonalds” vs “McDonal”“McDonalds” vs “Mac Cafe”
Spelling“Samsung” vs “Samnsung”“Samsung” vs “Sam Light”
ClassSame class (e.g., food)Different class (e.g., food vs electronics)

3. Registered But Unused Marks

Some trademarks are “dormant” (registered but unused for years). In such cases:

  • You may file for cancellation due to non-use (typically after 3-5 years in most jurisdictions).

  • Real Example: In 2022, “Green Farm” successfully cancelled the unused “Green Food” trademark in Saudi Arabia that had been registered since 2016.

search for a pre-registered trademark before trademark registration

AI-Powered Tools for Similarity Analysis

Advanced AI tools now assist in trademark similarity assessment:

  1. TrademarkNow: Analyzes phonetic and visual similarities

  2. CompuMark: Provides detailed rejection probability reports

  3. WIPO Similarity Search: Free tool from the World Intellectual Property Organization

search for a pre-registered trademark before trademark registration

Practical Example:
Entering “Kokola” in TrademarkNow generates alerts showing:

  • 88% phonetic similarity to “Coca-Cola”

  • High likelihood of consumer confusion

Frequently Asked Questions About Analysis

Q: Is visual logo similarity alone sufficient for rejection?
A: Yes. Even with different names, a logo resembling Apple’s “bitten apple” design could be rejected.

Q: What if the similar mark exists in another country?
A: Only problematic if you operate there. However, consider future expansion plans.

search for a pre-registered trademark before trademark registration

Q: How is “consumer confusion” determined?
A: The standard is whether an average consumer might mistake one mark for another. If yes, it’s high-risk.

search for a pre-registered trademark before trademark registration

Case Study: How “Tamerah” Avoided Trademark Rejection

In 2023, “Tamer Al-Qassim” wanted to register their trademark but found:

  • “Tamoor Al-Qassim” registered since 2020

  • “Tamr Al-Qassimia” registered since 2021

search for a pre-registered trademark before trademark registration

Their Solution:

  1. Modified name to “Tamerah Al-Qassim” (adding a feminine suffix changed pronunciation)

  2. Added distinctive logo (palm tree inside a circle)

  3. Registered in additional class (gift packaging) different from competitors

Result: Successful registration without objections.

search for a pre-registered trademark before trademark registration


Key Takeaways for Effective Analysis:

  1. Master similarity assessment criteria

  2. Leverage AI analysis tools

  3. Maintain flexibility to modify your mark when necessary

search for a pre-registered trademark before trademark registration

In Part 5, we’ll expose common mistakes to avoid during trademark searches.

(Continue to Part 5: Critical Mistakes to Avoid in Trademark Searches)

search for a pre-registered trademark before trademark registration

Part 5: Common Trademark Search Mistakes and How to Avoid Them

After covering all technical aspects of trademark searches in previous sections, we now focus on practical implementation. This final section reveals the most frequent mistakes applicants make and how to avoid them to save time, money, and legal troubles.

1. Relying Only on General Search Engines (Like Google)

Common Mistake:
“I searched my brand name on Google and found nothing, so the trademark must be available!”

search for a pre-registered trademark before trademark registration

Why This Is Wrong:

  • 60% of registered trademarks may have weak online presence

  • Some companies register trademarks defensively without commercial use

Correct Approach:
Always use official databases mentioned earlier (like SAIP for Saudi Arabia or WIPO internationally)

2. Ignoring Similar (Not Just Identical) Marks

Real Disaster:
In 2022, Saudi Arabia rejected “Kayan Cafe” due to similarity with “Kayan Coffee” registered since 2019, despite different wording.

Critical Checks:
Search for similarities in:

  • Pronunciation (e.g., Nike vs Nikey)

  • Meaning (e.g., “Qamar” vs “Moon”)

  • Visual appearance (even with different letters)

search for a pre-registered trademark before trademark registration

3. Neglecting Other Product Classes

Eye-Opening Example:
“Aramex” is known for shipping but registered in 15 other classes (including food and clothing)

Smart Strategy:

  1. Identify your core class (e.g., Class 25 for clothing)

  2. Check related classes (e.g., Class 18 for bags)

  3. Review unexpected classes (some companies register broadly)

4. Rushing Registration Before International Search

Costly Lesson:
“Maha Perfumes” successfully registered in Saudi Arabia, then discovered their mark was taken in France – blocking European exports.

Preventive Measures:

  1. Complete local search first

  2. Verify registration in:

    • Current export markets

    • Future expansion targets (5-year plan)

    • Industry hubs

search for a pre-registered trademark before trademark registration

5. Overlooking Logo Searches

Legal Reality:
Logos receive equal protection as names. In 2023, “The Cafe” had to redesign its logo for resembling “Cafe River’s” design (70% similarity).

Logo Search Tips:

  • Use reverse image search (Google Images)

  • Try image search in TMview

  • Consult graphic designers for visual comparisons

search for a pre-registered trademark before trademark registration

6. Failing to Document Search Process

Common Problem:
Relying on memory leads to application mistakes.

Professional System:
Create a file containing:

  1. Search result screenshots

  2. Search dates

  3. Page links visited

  4. Notes on similar marks

search for a pre-registered trademark before trademark registration

Final FAQ Round

Q: How many searches should I conduct before filing?
A: Ideally three times:

  1. When selecting the name

  2. Before logo design

  3. One day before official filing

search for a pre-registered trademark before trademark registration

Q: What if I discover post-registration that the mark exists?
A: Options include:

  • Appealing the registration (within 6 months in most countries)

  • Negotiating with the original owner

  • Modifying your mark (adding distinctive elements)

search for a pre-registered trademark before trademark registration

Q: Can I rely solely on lawyers for searches?
A: Yes, but:

  • Demand detailed reports

  • Request explanations of similar marks

  • Get their professional opinion on approval chances

search for a pre-registered trademark before trademark registration

Ultimate Search Checklist (7 Steps)

  1. Start locally (your country’s trademark office)

  2. Expand regionally (neighboring countries/Middle East)

  3. Verify global status (especially industry hubs)

  4. Check all relevant classes

  5. Examine name and logo similarities

  6. Thoroughly document all findings

  7. Consult experts before final submission

search for a pre-registered trademark before trademark registration


Conclusion:
Your trademark is your business identity and most valuable intangible asset. Comprehensive searching isn’t optional – it’s an investment that protects you from potential million-dollar losses. We hope this complete guide has equipped you to navigate trademark searches confidently.

search for a pre-registered trademark before trademark registration

Your Next Step:
Begin your search today using the tools we’ve outlined, and don’t hesitate to consult professionals when needed. Remember: One hour of proper research could save you years of legal battles!

search for a pre-registered trademark before trademark registration

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