Shaking up the EU trademark system
Regional IP systems may offer greater simplicity and efficiency to trademark applicants over national ones. James Nurton looks at some opportunities being explored around the world.
What if, instead of having to file a trademark application in every country you are doing business in, you could file a single application covering several markets in a geographic region? The possibility is being explored in regions as far apart as Southeast Asia and Latin America, on the basis that it could offer simpler procedures, easier record-keeping, and greater value for trademark applicants, who would need to spend less time and money filing applications in multiple markets. But do the potential benefits outweigh the considerable obstacles that have to be overcome?
The idea is not novel. The European Union trade mark (EUTM) system was set up in 1996. It has now received more than two million applications. In 2019 alone, there were a record 160,000 EUTM filings. In 2010, the Registered Community Design (RCD) was launched, and last year there were more than 96,000 RCD applications. Both systems have proved popular with intellectual property (IP) owners, as they cover all EU Member States, and offer simplicity, transparency, and flexibility.
The EUTM is not the only model. The Organisation Africaine de la Propriété Intellectuelle (OAPI) provides patent, trademark, and design protection across its 17 member states in West and Central Africa via the Bangui Agreement. Like the EU, OAPI is a member of the Madrid Protocol, meaning it can be designated in international registrations.
Rather than introducing unitary rights, other regions have focused so far on cooperation, sharing resources, or harmonizing laws or procedures (Table 1).
“With the continuous effort of ASEAN members to harmonize IP systems, among other rules and standards in other aspects of business, we will get there at the right time.” - Teodoro C. Pascua, IPOPHL
Working Together in ASEAN
One region where a lot of work has taken place in recent years is the Association of Southeast Asian Nations (ASEAN), the 10-member community of countries in Southeast Asia.
This includes work on IP cooperation. There is a dedicated ASEAN Intellectual Property Portal, regular meetings between representatives of IP offices, and a formal action plan, the “ASEAN Intellectual Property Rights Action Plan 2016-2025.”
With the theme “Meeting the Challenges of ‘One Vision, One Identity, One Community’ through Intellectual Property,” the ASEAN IP Action Plan includes 19 initiatives within four strategic goals. Among these initiatives are: (i) updating and enhancing the ASEAN databases of industrial designs and trademarks; (ii) developing Common Guidelines on Industrial Design Examination and updating the Common Guidelines on Substantive Trademark Examination;(iii) exploring the feasibility of harmonizing formality requirements for trademarks and industrial designs; and (iv) establishing an online ASEAN IP rights helpdesk.
According to Azahar Abdul Razab, Senior Director of Trademark and Geographical Indication Division of the Intellectual Property Corporation of Malaysia (MyIPO), the main cooperation among the ASEAN IP Offices is about sharing of information, namely sharing best examination practices. “Another example is capacity-building, since this will contribute to a more efficient IP office,” he said.
Teodoro C. Pascua, Deputy Director General of the Intellectual Property Office of the Philippines (IPOPHL), said IPOPHL takes part in joint training, technology development, and information sharing, and is a “country champion” for many of the Action Plan initiatives.
“By participating in said activities, the Philippines is able to impart to other ASEAN members the best practices of the IPOPHL. At the same time, IPOPHL learns from the best practices of the other ASEAN members,” he said.
One eye-catching point in the ASEAN IP Action Plan is Initiative 9.2: “Conduct a feasibility study for an ASEAN TM registration system.” This initiative was discussed at a meeting of ASEAN member states in Bangkok, Thailand, in February 2019, with the EU-funded ARISE Plus Intellectual Property Rights (ARISE+ IPR) program—which supports regional integration through IP cooperation—designated to carry out a feasibility study on aspects such as fee structures, legal infrastructure, operational setup, stakeholder interests, and the impact on national trademark systems.
Mr. Pascua said IPOPHL supports greater cooperation around a harmonized ASEAN registration system.
“For now, we aim for the low-hanging fruit while not losing sight of the main prize. With the continuous effort of ASEAN members to harmonize IP systems, among other rules and standards in other aspects of business, we will get there at the right time,” he said.
Mr. Azahar added a note of caution, however. “I think the ASEAN trademark registration system will take a long time to set up and be implemented,” he said.
“There’s more resistance to surrender sovereignty in this modality of IP rights in view of a possible decline in the national income.” - Fernando Dos Santos, ARIPO
Challenges of Cooperation
According to Fernando Dos Santos, Director General at the African Regional Intellectual Property Organization (ARIPO) (Zimbabwe), “Regional trademark cooperation is an important tool for harmonization of procedures and practices for a more efficient system of protection of trademarks. However, the uptake of such a system by users and member countries faces some hindrances.” ARIPO is mandated to register trademarks and administer these marks on behalf of its member states, which are parties to the Banjul Protocol Contracting States.
Mr. Dos Santos noted that, particularly in developing countries, trademarks are the “cash cow” for national IP offices.
“Therefore, there’s more resistance to surrender sovereignty in this modality of IP rights in view of a possible decline in the national income,” he said.
In addition, processing trademarks is much easier than that of any other IP right. The offices can develop capacities to act on the applications with fewer resources in terms of skills, infrastructure, and finances.
Maura Canavan, Director of Rouse Africa (South Africa), suggested that regional trademark cooperation “requires the buy-in of all the member states at so many different levels and presents a number of challenges.”
One issue to be addressed in the development of any future unitary system is whether to retain national marks. This is the case in the European Union, where applicants can choose the regional or national route and convert from one to the other if necessary; however, it is not the same in OAPI, where the regional system has replaced national procedures.
“What is the best end result in terms of trademark creation for the scheme: is it a unitary trademark right or a bundle of national trademark rights? And how does the scheme plan to deal with revenue loss/gain/distribution at a national level?” questioned Ms. Canavan.
Raising another point, Mr. Azahar noted that one of the biggest challenges in cooperation is language, with some ASEAN IP Offices using English and others using their national languages.
In the EU, this challenge was addressed by striking a compromise when the EUTM was launched. It allows applications to be filed in any of the 24 official EU languages, while also adopting a simpler five-language policy for the European Union IP Office (EUIPO).
Speaking from the EU perspective, Axel Nordemann, Partner at Nordemann Czychowski & Partner (Germany), cited languages and cultural background as the two biggest challenges to regional trademark systems.
“If we file an application, then we have to select a first and a second language, and an opponent can choose one of these two languages. While English is the standard international language for most trademark professionals, this is not true for German, Italian, French, or Spanish,” he said.
Mr. Nordemann explained that if he were representing a client in an opposition against an EUTM application which had Spanish and Italian as the two languages, he would have severe difficulties in conducting the proceeding.
“Fewer languages are better, and one universal language would be the best solution,” he suggested.
“Regional trademark cooperation requires the buy-in of all the member states at so many different levels and presents a number of challenges.” - Maura Canavan, Rouse Africa
Ms. Canavan added that streamlining application procedures, including in terms of language and examination, to ensure consistency and efficiency is another hurdle that must be surmounted.
Member states need to consider how to ensure access to the same level of technology for any regional scheme to work across different national offices, she noted.
Other challenges, according to Ms. Canavan, include figuring out how to build and divide capacity where regional schemes and national schemes operate side by side, and how to handle issues and procedures after registration, such as enforcement and cancellation.
Regional systems need to cater to countries with different legal traditions as well. The 10 member states of ASEAN include countries at various stages of development. Some have civil law-based systems, and others have common law-type systems based on precedent.
“You have to deal with the different cultural backgrounds in different jurisdictions. When negotiating an amicable solution of a trademarks conflict, for example, we Germans love to conclude prior rights or coexistence agreements,” Mr. Nordemann said.
“Colleagues in other jurisdictions often find it strange to negotiate a contract and prefer simply to limit the specification of goods and services of the younger application.”
Thomas J. Treutler, Partner and Managing Director of Tilleke & Gibbins (Vietnam), added that many concepts vary from country to country, such as what is confusingly similar and what constitutes use of a trademark. There are also differences between those that have opposition systems and those that have only cancellation after grant, where, he said, “your chances of success are much lower.”
“Harmonization is therefore very good and will help developing countries level up,” Mr. Treutler declared.
He added that throughout the region there is greater interest in trade and export, saying: “We are seeing more trademark filings between ASEAN countries.”
However, even once the hurdles standing in the way of cooperation have been surmounted, and a regional trademark system has been implemented, other obstacles must be overcome.
Michel Rorai, Lead Brand IP Counsel at Unilever N.V. (Netherlands), said: “Uncertainty around the enforceability of trademark registrations can be a challenge. Sometimes, member countries seem to provide more value to national registrations when it comes to enforcement.”
Ahead of any implementation of a regional system, IP agents must be educated about the system’s benefits.
“Resistance is raised by some IP agents who find regional systems a threat to their prosperity, in view of the reduction of costs that a regional system may prompt,” said Mr. Dos Santos.
“Often, more is required to draw support from IP agents and convince them that there are opportunities rather than just losses if a regional trademark system is introduced.”
“You have to deal with the different cultural backgrounds in different jurisdictions. When negotiating an amicable solution of a trademarks conflict, for example, we Germans love to conclude prior rights or coexistence agreements.” - Axel Nordemann, Nordemann Czychowski & Partner
One country that has recently benefited is Myanmar, which introduced its new trademark registration system in October.
Other IP offices in the region, notably the Intellectual Property Office of Singapore (IPOS), have provided training and helped with the development of online tools.
Based on this, Boo Seng Ong, Partner of Zaid Ibrahim & Co. (Malaysia), expects cooperation between ASEAN member states to develop further, particularly in the commercialization and enforcement of IP rights.
He said he sees a lot of interest from his clients to strategically file in Myanmar. “It’s ripe for investment and can grow strongly,” said Mr. Ong.
However, he suggested, “There will inevitably be teething problems, and we don’t expect the system to be perfect in the first year.” Lessons from Latin America
Latin America is making progress on cooperation between IP offices. Within the Andean Community of Nations (CAN), which comprises Bolivia, Colombia, Ecuador, and Peru, sits the Andean Ad Hoc Committee on Intellectual Property, which reviews the common regulatory framework and provides strategies of interest to CAN’s four member states.
Current projects include regulating the country brand at a community level and modifying Decision 486 to incorporate geographical indications.
In addition to work conducted through CAN, there are initiatives in the region such as Sistema de Cooperación sobre aspectos de información operacional y de Propiedad Industrial (PROSUR), which coordinates operational information between offices in 13 countries, and the Ibero-American Industrial Property Program (IBEPI), which promotes the strategic use of IP as a tool for competitiveness and development at the industrial, commercial, and research levels in 14 countries.
“Through the exchange of data and information systems, thanks to the cooperation of PROSUR, it has been possible to increase efficiency and quality in the search, examination, and decision processes adopted by the different IP offices of Latin America,” said Ivo Gagliuffi Piercechi, President of the Board of Directors of the National Institute for the Defense of Free Competition and the Protection of Intellectual Property (INDECOPI) (Peru).
Cooperation initiatives such as these promote IP enforcement through simpler procedures, exemplary sanctions, a pro-IP culture, and greater understanding of trademarks among small and medium-sized enterprises (SMEs), he said.
Looking ahead, Mr. Gagliuffi Piercechi believes it would be beneficial to adopt a regional system for IP registration, including an Andean Community Trademark, if technology differences can be overcome.
“For this, it will be essential to have an interconnected system where all the countries of the region have the same technological tools. This homogeneity has not yet been achieved but, as a first step, we are working to find solutions that allow us to connect with the databases of other countries, such as Colombia and Ecuador, and progressively interconnect with the other countries in the region,” he said.
He also supports a more interconnected system of IP enforcement at the regional level to unite anticounterfeiting efforts.
“It would be great if the EUIPO and OAPI could set up a strategic partnership, possibly via the EU Intellectual Property Network, with the aim of achieving convergence of practices.” - Michel Rorai, Unilever N.V.
Benefits of Cooperation
Given the popularity of international systems such as the Madrid Protocol for trademarks and the Hague Agreement for design rights, it remains to be seen whether there will be demand for more regional registration systems such as those in the EU and OAPI.
“There is no doubt that greater regional cooperation benefits trademark users and particularly small companies,” said Mr. Gagliuffi Piercechi.
“Considering that IP is global, we believe developing procedures that are simpler, harmonized, and with more flexible requirements is of great importance,” he continued. “Indeed, there are currently some differences in the requirements and rules of procedure between the countries of the region, which can lead to complex procedures for trademark owners/applicants and can constitute a barrier to trade, generating a negative impact on the region.”
According to Mr. Rorai, OAPI registrations provide certainty. “It’s good to see that they have joined TMclass and more recently TMview,” he added. In January 2015, OAPI joined TMclass, giving OAPI applicants access to the harmonized database of goods and services. Last October, OAPI made its trademark data available to the TMview search tool.
“It would be great if the EUIPO and OAPI could set up a strategic partnership, possibly via the EU Intellectual Property Network (EUIPN), with the aim of achieving convergence of practices, in order to protect the interests of brand owners even better,” he said.
The EUIPN enables members to share technical expertise and helps establish shared practices.
From an ASEAN perspective, Mr. Azahar agreed. “Cooperation in the ASEAN region will increase the awareness on the importance of IP protection,” he said. “It is envisioned that the implementation of the strategic goals under the ASEAN IP Action Plan will facilitate improved IP systems and services delivery with a higher level of confidence in the integrity and transparency for IP users.”
Regional trademark systems are “relevant and necessary,” said Mr. Dos Santos, adding that regional cooperation may fast-track economic integration, reduce costs, and attract trademarks from SMEs in other jurisdictions, who would be unable to afford protection on a country-by-country basis.
He said: “The biggest lesson in this regard is that the regional trademark system must be viewed as a package that is not limited to registration of trademarks but encompasses many other services such as awareness creation opportunities and capacity building, and as a marketing tool of the region for users in inaccessible or remote geographical areas of the globe.”
Ms. Canavan added that it takes “time, commitment, investment, mutual cooperation, and buy-in from all would-be member states for these regional systems to work efficiently and effectively.”
She concluded: “Where a regional scheme is being developed, it is paramount to analyze and understand the existing trademark setups in the interested members states and from there develop the working system. Looking at the various regional schemes that exist today, the adage ‘Rome wasn’t built in a day’ rings very true.”
INTA 2020, IP systems, trademark application, EUTM, community design, Madrid Protocol, ASEAN, MyIPO, ARIPO, EUIPO, Unilever, SMEs