ECTA 2019: Trademark filings on the rise despite uncertainty

An increase in trademark filings due to technological, political and social change has been a key factor in the drafting of the European Intellectual Property Office’s ( EUIPO) Strategic Plan 2025, according to Christian Archambeau, the office’s executive director.

Speaking earlier today at the 38 th  Annual  European Communities Trade Mark Association Conference, Archambeau delivered an overview of the EUIPO’s current activities and performance ahead of the final draft of the plan.

According to the executive director, the figures from last year showed a “fluctuating demand” for European trademarks and designs.

He said that at the beginning of 2018 trademark applications rose but gradually levelled out in the second half of the year, attributing the volatility of demand to a number of factors.

These included the uncertainty of Brexit, but also global trade issues between the US and China, as well as technological advancement.

“Brexit has not happened, and from my perspective, this is not such a bad thing. But, we don’t know what the outcome will be, although it is fair to say that the prospect of a hard Brexit seems to have increased dramatically,” he said.

But Archambeau assured those in the room from the UK, that “whatever happens, the UK will continue to be a valued partner of the EUIPO, and UK companies will continue to be users of the EUIPO’s trademark and design system”.

In regards to the Strategic Plan 2025, he said two of the biggest concerns were quality and timeliness.

“We are adding more resources to these areas. We are continuing to keep on top of opposition timeliness and quality of decisions,” he said.

“Delivering quality registration services remains the main priority of our office because ultimately, you need these rights for a good economy. IP rights are there to serve a purpose; to create jobs and to help innovation,” Archambeau added.

He said that in 2018 alone, a total of 152,494 trademark applications were filed with the EUIPO, while there were 107,619 design applications.

While this figure shows that the design system is being used, Archambeau said it needs urgent modernisation, which will be addressed by the plan.

With regards to the composition of trademark filings, Germany was the largest filing country at the EUIPO, followed by the US, and China.

“The rise of China is new. Although it is in third place at the moment, it will not take another two years before it overtakes the US,” Archambeau predicted.

Designs

Gregoire Bisson, the director of the Hague Registry at the World Intellectual Property Organisation ( WIPO) discussed the benefits of the Hague System for industrial designs.

“A good design is an asset,” Bisson said. “And when you have an asset, it needs to be protected.”

As opposed to registering a design within a specific country or jurisdiction, the Hague System grants the rights owner an international registration across many countries, which is managed by WIPO.

“It is truly a one-stop shop. One doesn’t need individual applications for their different jurisdictions, rather they can file one application straight at the Hague System for economic simplicity,” Bisson explained.

“Even though you are enjoying individual rights, they are all managed under one title,” he added.

In 2018, the system underwent a “record expansion” with the accession of both Russia and Canada, the two largest territories in the world.

Currently, the system represents 88 national jurisdictions. “It’s all about offering more options to users,” Bisson said.

Earlier this year, WIPO also launched a new e-filing system to help streamline the application process.

Bisson said this incorporates a filing interface, which guides users through the process and highlights the various constraints of each country at the filing stage. Additionally, the online filing system also provides links to websites which have national guidance for various countries.

While there are many advantages to using the Hague System, Bisson said those applying “need to be more savvy” and thorough in the preparation of their application, as it will be closely looked at by examiners with the various jurisdictions in mind.

He outlined other advantages of the system. Although the US Patent and Trademark Office does not traditionally allow for photographs and colour to be used in design applications, this is possible when filing through the Hague System.

While countries like Japan, Korea and the US may have varying standards and requirements when it comes to individual design applications filed in these countries, through WIPO, the application becomes unified.

“Many international registrations that cover all three countries have been granted,” he said.

Additionally, some countries like Japan and South Korea do not grant applications when the applicant has not filed in their home jurisdiction first.

But the Hague system removes this problem, as it allows applicants to file in both their home jurisdiction and Japan or South Korea simultaneously.

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