“If you want to put it in a slightly cheesy way, you could ask: ‘is the role of a trademark attorney dying?’”
This was the rhetorical question posed by one lawyer during a conversation about trademark filing in the EU. There is a perception, they say, that more and more people are applying for trademarks themselves.
It is true that over the past five years, the number of self-filed applications has gradually increased (see Figure 1).
However, data supplied by the EUIPO from 2015 through September 2021 shows that when taken as a percentage of all EU trademark (EUTM) applications, those that are self-filed have actually been decreasing over the past three years (see Figure 2).
Sources note that there are several factors to consider, including that filings from applicants outside the European Economic Area (EEA) – which require a lawyer representative – have increased dramatically in the past few years, particularly from China.
Some sources add that the true number of self-filers may be higher than appears at face value.
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Figure 1: Self-filed v representative-filed EUTMs, 2015 to 2021
Figure 2: Percentage of self-filed v representative-filed EUTMs, 2015 to 2021
In 2015, the number of applicants that self-filed stood at 17,107. That was 15.8% of the total number of applications (108,583) over the course of the year. By 2020 the number of such filings had risen to 22,034 after climbing every year since 2015.
However, the percentage of self-filers had peaked by 2018 (16.7) and has continued to fall since.
In 2019 that percentage figure fell to 16.4 before dipping again to 14.7. As of September 30 2021, it was 13.4.
Don’t forget China
Noting the slight percentage decreases in self-filed applications, an EUIPO spokesperson tells Managing IP that they may be down to the huge increase of Chinese filers, which must, under EUIPO rules, be represented by legal representatives within the EEA.
So, does this all mean that the gloomy prediction that lawyers are being overlooked is wrong?
Not necessarily.
Olaf Gillert, partner at Taylor Wessing in Düsseldorf, agrees with the EUIPO that the increase in foreign filings, in particular between 2019 and 2020, may have skewed the figures in favour of applications processed by an official representative.
On the notable 13% jump in total applications between 2019 and 2020 (131,919 to 149,896), he says: “This didn’t happen on this scale at any other point in the five-year period.”
An EUIPO study on Chinese EUTM applications revealed that the top 10 applicants from China between 2010 and 2020, which include major corporations such as Huawei, ZTE and Baidu, collectively represent 4% of overall EUTM filings from China.
The remaining applications were overwhelmingly filed by SMEs, the report says.
According to Gillert, many of the applications from smaller businesses may have been done through cheaper, cost-effective firms that specialise in pure filing work. However, it is also possible that they were in effect self-filed, he adds, even though these applications won’t appear under the self-filed data.
He references previously reported yet unproven rumours that some representatives have loaned their credentials and EUIPO log-in details to businesses abroad, including in China, which wish to self-file.
“Where this is suspected you have to consider how many EUTM applications the representative files on a weekly or monthly basis and on behalf of which companies,” Gellert says. “If there are hundreds of applications per week on behalf of several different companies, then it is more likely there is some sort of arrangement in place.”
One source, who did not want to be named, says the Chinese filing issue is concerning. If representatives are not meeting their professional obligations to advise filers, it decreases the overall quality of the register and the rights concerned, they add.
An EUIPO spokesperson says it continues to provide support to applicants without a representative.
In the past few years, the office has introduced initiatives such as the Easy Filing Tool, an online guide to registration, and grants for SMEs.
Life in lawyers, yet
Willem Leppink, partner at law firm Ploum in the Netherlands, says the dynamics of trademark representation have been changing for the past few years.
“In the old days, particularly SMEs would not have a clue on how to apply for a trademark. These days, with so much information available on the internet and after efforts from the EUIPO, it is easier to register a trademark without any help.”
However, Gillert suspects that rather than being overlooked for work, lawyers are simply entering businesses’ IP protection strategies at a different stage.
“I’ve certainly been in the position before where I have advised a client that they can apply for the EUTM themselves,” he says.
Gillert adds: “When a business expands and seriously starts to look at launching in new territories and where it might run into difficulty is where qualified advice can help. The role of a qualified lawyer won’t die, but the point at which we step in is definitely shifting.”
Leppink at Ploum says that to avoid pitfalls, it is still a good idea to have a trademark professional advise on aspects such as classification and what goods and services to protect.
“We see it happen in practice that self-filers end up in trouble for registering too broadly, or for goods and services that are not within the expected array of what the applicant will be using the mark for.”
This can result in applicants receiving warning letters and being forced to reduce the scope of their activities, Leppink adds.
However, he notes that some law firms’ business models can cause problems.
These include a “new system” offered by some firms in which an applicant provides the relevant documentation and the lawyer then processes the application; the services do not go beyond a basic filing.
Those business models look attractive, and cheap, for SMEs but they can end up costing more in the long term, Leppink notes.
“Normally the fixed fee for a trademark application includes some advice, and these models take out the advice. Then it makes more sense for the company looking for a cheap deal to file directly with EUIPO.”
As is often the case with data, there are different ways to slice and dice it – while the number of self-filed applications has ticked up over the past few years, the percentage of these filings has fallen amid rising numbers via the traditional representative route.
Perhaps it shows that although more people may be comfortable with filing by themselves, there is plenty of life in the trademark lawyer yet.
