IP owners in Europe have a new tool available to help enforce their rights: the Enforcement Database, set up by OHIM as part of the European Trade Mark and Design Network, is a centralized database where rights owners can record information about their trademarks. Enforcement authorities such as customs and police can access the secure information when they need to take action against suspected infringing goods.
“The Database provides rights holders with the possibility of real-time exchanges with enforcement authorities,” explains Andrea di Carlo, Deputy Director of the European Observatory on Infringements of Intellectual Property Rights, which is part of OHIM. “It is free to use, secure, supports multiple languages and links directly to TMview and Designview,” he adds.
Enforcement authorities have indicated that they value the Database, as it is based on official, verified, records and they can access it in their own languages. All 28 national customs authorities in the EU have already joined and it is also the only database endorsed by both DG TAXUD and Europol. A secure connection with Europol will be established later this year.
So far, 145 companies have signed up to use the system (see box), owning a combined 75,000 Community Trade Marks (CTMs) and national trademarks, as well as 40,000 design rights. Joining the system is free: as long as you own at least one trademark or design, you can sign up online, and will be sent a verification code by post. Once registration is complete, you can upload details of marks you own, as well as all relevant product information and the management is entirely online.
Rights owners can choose whether to manage the records in-house or instruct an agent to do it for them, and can also opt to have a master account, plus subsidiary accounts for named representatives. Di Carlo says the first rights owners to sign up were generally large companies with big in-house teams, but the Observatory is now seeing “more and more” legal representatives using the tool.
As well as allowing customs authorities to access the IP right and product information, the Database also provides for electronic applications for action to be sent. This is particularly useful in the numerous countries where there is no e-filing facility at the moment.
Further development of the Database is expected soon, after an MoU with the World Customs Organization was signed last year. This will make the Enforcement Database interoperable with the WCO’s Interface Public-Members (IPM) system, meaning rights owners do not need to provide the same information to both systems.
Putting numbers on IP infringement
The Enforcement Database is just one of the tools managed by the Observatory, which was created in 2009 and entrusted to OHIM in June 2012. It is headed by Paul Maier and now has a staff of 37 people in Alicante, though it also works closely with other agencies in Europe and with the private sector. There are five workstreams: economics and statistics, IP in the digital world, legal and international, public awareness and enforcement. Its activities include organizing and hosting seminars, and liaising with and training law enforcement authorities.
As well as developing tools and promoting education, the Observatory is taking the lead on conducting research on IP and counterfeiting in Europe in its “trilogy” of studies. Di Carlo says these examine “the economic importance of IP, how citizens perceive IP and the social-economic impact of counterfeiting and piracy.” Two studies have already been published, with a third due later this year. The information collected will lead to further initiatives, such as an SME Scoreboard and an IP Youth Scoreboard. The latter is already underway, with a panel of eight or nine people aged 15 to 24 in each EU member state, who will be consulted over time to see how attitudes develop. “The aim is to understand the behavior of young people, especially online,” says Di Carlo. “It’s about their perceptions, how they behave, what they know about IP and what kinds of communications could work with them.”
Another ongoing project is examining the social-economic impact of counterfeiting in various industry sectors. A report on cosmetics was published in March (see box) and 13 sectors are being studied in total, including clothing and footwear, watches and jewelery, handbags and luggage and sports goods. “We will publish these as soon as they are ready and validated. We hope they will provide a comprehensive picture of the impact of counterfeiting,” says Di Carlo. The studies are expected to reveal the different demographics and markets affected by counterfeiting in particular industries.
To find out more about the work of the Observatory, attend the CTM and RCD Users’ Meeting (hosted by OHIM tomorrow from 1:30 pm to 3:30 pm in Room 10)
Enforcement Database at a glance
145 companies have joined
28 Customs organisations have joined
Observatory Cosmetics Report
• 7.8 % of sales lost by the sector due to counterfeiting
• E4.7 billion of revenue lost annually by the sector
• E4.8 billion of sales lost in related sectors
• 51 561 direct jobs lost
• 78 959 direct and indirect jobs lost
• E1.7 billion of government revenue lost (social contributions and taxes)
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