Those interested in history were treated to a trip down memory lane this week as the EUIPO marked 25 years of receiving EU trademark applications.
It has to be said that the material provided by the EUIPO, as well as comments from seasoned EU trademark lawyers we have spoken to, makes you realise how far the EUIPO has come since April 1996, when those first applications landed in its in-tray.
The EUIPO is without doubt one of the most respected IP offices today, seen as an efficient and customer-oriented organisation. Since 1996 it has received 2.2 million trademark applications, and filings keep growing every year by around 5% on average.
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The numbers suggest the EUTM (previously called the Community trademark) is a valuable and trusted legal tool for companies from all around the world. For the first 10 years of operation, the US was the top country of origin before being overtaken by Germany in 2006 and, most recently, China in 2020.
Matt Sammon, director at UK-based firm Sonder IP, says the fact the system is routinely used by countries all over the world seems obvious now, but it could have been very different if the EUIPO had got it wrong.
“They have progressively got more efficient (particularly online) and the fees have got less over the 25 years, making broad EU rights more accessible. This in turn has meant all the member states have had to improve.”
Sammon believes that the UKIPO, for example, reduced fees, cut turnaround times and improved its online offering largely in response to the competition provided by the EUIPO. And he suspects that this is the case in other member states, too.
His views are supported by Chris McLeod, who has more than 30 years’ experience in trademarks and is currently a partner at Elkington + Fife in the UK. “The first thing I would say about the EUIPO is that it has been a huge success and that this was beyond anyone’s expectations 25-plus years ago.”
Going back to 1996, the office was unrecognisable from the one we see today. According to a timeline of the office’s progress, the EUIPO (then known as the Office for Harmonization in the Internal Market) had just a handful of staff in its rented office in Alicante, Spain, and was starting from scratch: “Everything – from computers to chairs – had to be sourced, purchased and made ready ahead of the all-important first filing date.”
Avalanche of applications
What then happened took everyone by surprise, as nearly 22,000 applications were filed in the first month alone. Just 15,000 filings had been predicted for the whole year.
It is striking that, as would have been common in many business operations in 1996, everything was done on paper or by fax. Today, 99% of applications are filed online. This fledgling office would have been handling vast amounts of paper, and it’s no wonder that by 1999 it had moved to a new headquarters just outside Alicante, the very same head office it uses today.
Indeed, looking at the video marking the anniversary, you can see the piles of folders building up, while employees from the time explain how hard they had to work in the early years.
In those formative years, as the applications kept flying in, the EUIPO was not without controversy. According to Tove Graulund, a hugely experienced trademark attorney whose previous roles include user representative at the OHIM management board, there were tensions between the office and national IP offices stemming from the EUIPO’s rising dominance. “There was some hostility – and sometimes it got way too personal. OHIM was so efficient that national offices tried to keep up.”
But the EUIPO and national offices have since become closer and more cordial, helped by efforts to improve convergence and harmonisation. One of the key achievements was the Cooperation Fund, the largest project undertaken by the office. By 2015, it had made e-filing a reality in every member state and cemented a network of collaboration across the EU. A year later, in 2016, widespread reforms to the trademark system took effect and OHIM and the CTM were rebranded.
Away from trademarks, the registered Community design had become available in 2003, giving an extra weapon in the armoury of companies operating in the EU.
Amid these improvements, trademark filings have remained popular outside as well as inside EU borders. Graulund says the long-lasting popularity of the CTM/EUTM in the US is unsurprising – “it’s convenient to have Europe in one go” – while Sammon suggests that China’s top position in 2020 shows how well trusted the system is further afield.
But despite the overwhelmingly positive appraisal of the past 25 years, there are some concerns from those on the ground. As McLeod notes, there is an increasingly and arguably too rigid approach to classification and inherent registrability. “I am not sure that penalising applicants whose specifications do not fit – by denying them fast-track processing – is fair, particularly when you consider how fast technology moves these days.”
There are bound to be challenges, of course, but from the outside looking in, it seems the EUIPO is self-confident enough to deal with whatever challenges the future may hold. Here’s to another 25 years.
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