World Trademark Review’s annual EUIPO focus assesses current office processes, reveals the most proactive filers and explores how the agency has responded to the impact of covid-19 on its employees, users and offerings

Every year World Trademark Review (WTR) runs an used on the EUIPO, analysing the evolution of office operations and updates on key projects. This year, however, things are inevitably different. The impact of covid-19 means that it has not been business as usual – in Alicante or anywhere else. How the office responded to the unprecedented crisis is therefore a natural starting point for a review of EUIPO processes and performance.

In early June, the office announced that the exceptional extensions granted to users by two decisions of EUIPO executive director Christian Archambeau (Decisions EX-20-3 and EX-20-4) had come to an end. The extensions were designed to support users and covered all procedural deadlines, irrespective of whether they had been set by the office or were stipulated in the regulations.

However, on their expiration, the office provided users with further guidance on coping with time limits stipulated in the applicable regulations, recognising that many will still face operational difficulties arising from measures taken by public authorities to tackle the pandemic, as well as sickness among parties or their representatives. The end of the extensions represented a partial return to normality, albeit one with increased flexibility and relying on a remote workforce. It has been an unprecedented few months to say the least.

Dealing with the unexpected

On 14 March the Spanish government activated a ‘state of alarm’ following the spread of covid-19 across the country, limiting movement among all Spanish citizens and residents. As a result, the EUIPO instantly initiated its business continuity protocol, with all Alicante-based employees instructed to work from home. The same day, the first of the two deadline extensions was announced – all registrations expiring between 9 March and 30 April were extended to 1 May.

In mid-April, Archambeau provided users with an operational update, explaining that – despite the teleworking requirement – production at the office had been continuing at almost normal levels, with cooperation activities with national and regional IP offices, as well as other stakeholders, transitioning to virtual format. However further extensions were needed and at the end of the month Decision EX-20-4 extended all deadlines expiring between 1 and 17 May to 18 May.

Covid -19 developments : an office timeline

  • 11 March: Director general of the World Health Organisation announces that the outbreak of covid-19 can be characterised as a pandemic.
  • 14 March: Spanish government activates a state of alarm, limiting movement of citizens and residents.
  • 16 March: EUIPO executive director authorises office’s business continuity protocol, employees commence home working; office extends all deadlines between 9 March and 30 April 2020 that affect parties before the office to 1 May 2020.
  • 29 April: Decision EX-20-4 extends all deadlines between 1 May and 17 May to 18 May 2020.
  • 6 May: The EUIPO hosts the first online session of the 23rd Liaison Meeting on Trademarks dedicated to an exchange of views on covid-19-related trademark applications.
  • 18 May: The exceptional extensions granted to users by the previous two executive director decisions come to an end.
  • 8 June: The first EUIPO employees return to the office as part of a phased easing of lockdown conditions.

Speaking to WTR in June, Archambeau reflects: “The challenges were huge, but we needed to do this in order to help our customers, who have really been suffering. Information about the extensions was provided on our website, and through our Information Centre. Dealing with phone and email inquiries from users went well, with interactions at, or even higher than, normal levels. After the end of the extension of time limits, the first line dealt with almost 1,000 calls in a single day, which is double what we usually expect. We also organised an online webinar and gave guidance on how to request further extensions under ‘exceptional circumstances’. Remember, our staff were all working from home at this time.”

Despite the turmoil affecting operations in March across the first quarter, the service charter results revealed that the office had still succeeded in meeting its timeliness, quality and accessibility commitments. In fact, certain timeliness indicators – namely, direct EU trademark filings and registered Community design registrations – actually improved during this period. Only the timeliness in cancellation decisions remained in the ‘actions needed’ category.

A “tsunami” of applications adds pressure

However, the second-quarter results will likely portray a slightly different picture. Continuing our conversation in early June, Archambeau notes: “Of course, extensions eventually must come to an end. From 18 May onwards the office has been coping with a ‘tsunami’ of 21,000 registered trademarks that needed to be published over a period of weeks to avoid technical issues. This, combined with the publication of almost 5,000 international registrations, delayed re-examination tasks due to the extensions, and a large accumulation of new opposition, cancellation and invalidity requests created a huge increase in the examination workload. Unfortunately, this has had an unavoidable impact on the timeliness of registrations of direct and international trademarks, putting them into the red in terms of our Service Charter.”

He expands: “In all other areas we expect to maintain the timeliness standards in ‘compliance’ or even ‘excellence’ and, given the exceptional efforts being made by our examiners, we should get back on track for trademark registrations towards the end of the summer.”

The critical response to covid-19 has created significant challenges for both management and communication across the office. “There have been more meetings of the top management of the office – up to three online meetings a week instead of once a month,” Archambeau explains. “There has also been a need to communicate, with weekly emails and video messages from me to keep staff at home informed. Deputy executive director Andrea Di Carlo and I also made between us more than 300 individual telephone calls to staff members in order to keep our fingers on the pulse and understand how they were coping.” But these efforts have not gone unappreciated. “This increase in communication appears to have been very well received,” he continues. “We will have to make sure that the atmosphere of flexibility and trust created, which has produced such good results, is not lost, and is factored into our future plans.”

Positively, then, the wheels have kept turning and the services offered to users have continued without interruption. Moreover, Archambeau does not expect to have to dip into the office’s reserve funds to finance operations, despite an anticipated revenue fall this year. He expands: “At present, the office expects to take a hit in terms of budgeted income this year of around 10%. However, since that budget also anticipated a surplus, this may be enough to cover our expenditure. If the outcome is worse than currently foreseen, we will be able to call upon the provision for unforeseen events and use a small part of the surplus accumulated in previous years. We will not need to call on the reserve funds themselves, which is a part of the surplus that is kept aside for an even more serious eventuality. We are also talking to the Commission about how part of the accumulated surplus might be used to help SMEs in the current crisis.”

Permanent changes to working habits?

While the EUIPO was pivoting to continue its work in new ways, surprisingly, it had to contend with continued application levels. Although applications were expected to drop dramatically as the pandemic bit down across Europe, data supplied to WTR by CompuMark suggests otherwise (see Figure 1).

Figure 1: EUIPO filings

The data compares the weekly number of applications across the first 20 weeks of the year (ie, until 17 May 2020). It was not until week 11 (mid-March) that 2019 application levels started to outpace the 2020 figures, coinciding with the period in which the EUIPO initiated its business continuity plan. However, fast forward one month and the disparity was over, with 2020 filings generally at higher levels than the 2019 weekly equivalent.

Methodology for filing tables

The data kindly supplied to WTR focuses on the filings of all offices filing 20 or more EU trademarks or registered Community designs (RCDs). The data lists the EU trademark and RCD filings originating from individual offices, with each designated a unique representative code. This means that a single firm can have multiple entries under the same firm name in the same jurisdiction, as the named firm filed via a range of individual offices, each with its own unique representative code. Where a firm applied (via different offices) under the same name multiple times in one jurisdiction, we have added these applications together to obtain a firmwide picture in that jurisdiction. In terms of the country assignation, this is recorded as supplied by the EUIPO. While every care has been taken to guarantee that all relevant figures were considered, WTR accepts no responsibility for any errors in the data sets or tables.

EUIPO filing levels – 2019 versus 2020

 

Week 2019 2020
Week 1 1,303 1,189
Week 2 2,355 2,394
Week 3 2,509 2,785
Week 4 2,699 2,388
Week 5 2,510 2,634
Week 6 2,372 2,571
Week 7 2,446 2,826
Week 8 2,598 2,659
Week 9 2,655 2,729
Week 10 2,559 2,720
Week 11 2,690 2,607
Week 12 2,777 2,245
Week 13 2,768 2,285
Week 14 3,043 2,239
Week 15 2,712 1,839
Week 16 2,091 2,557
Week 17 2,588 2,561
Week 18 2,192 2,246
Week 19 2,663 2,732
Week 20 2,617 2,903

 

Table 1: Top 50 representatives applying for EU trademarks in the 12 months up to the end of April 2020

Bertaux France 1,429
Metida Law Firm Zaboliene And Partners Lithuania 1,123
Al & Partners SRL Italy 1,002
A.Bre.Mar SRL Italy 883
Arcade & Asociados Spain 801
De Arpe Tejero Spain 653
Cleanthous Cyprus 638
Bugnion SpA Italy 636
Isern Patentes Y Marcas SL Spain 606
Merk-Echt BV Benelux 564
Barzano & Zanardo SpA Italy 563
Jacobacci & Partners SpA Italy 549
Novagraaf BV Benelux 515
IPSIDE France 512
Boehmert & Boehmert AnwaltSpArtnerschaft Mbb - Patentanwalte Rechtsanwalte Germany 509
GLP SRL Italy 494
Gevers Benelux 477
FRKelly Ireland 473
Ungria Lopez Spain 459
Arpe Patentes Y Marcas SL Spain 439
Sakellarides Law Offices Greece 432
Nowicki (IntellectPol IP Law Firm) Poland 430
Grunecker Patent- Und Rechtsanwalte Partg mbB Germany 421
HGF Limited United Kingdom 420
Garcia Egea (RINCHO INTELLECTUAL PROPERTY FIRM) Spain 408
Barker Brettell Sweden AB Sweden 396
Clarke, Modet Y Cia SL Spain 395
Forresters Germany 394
Hogan Lovells Spain 394
Kilburn & Strode LLP Benelux 394
Stobbs United Kingdom 389
Lane IP Limited United Kingdom 386
AWA Sweden AB Sweden 385
D Young & Co LLP Germany 384
Ingenias Spain 376
Marks & Clerk LLP United Kingdom 366
Bomhard IP SL Spain 363
Liu's Legal Solutions Ltd United Kingdom 363
Herrero & Asociados Spain 344
Cabinet Germain & Maureau France 337
NLO Shieldmark BV Benelux 336
Perani & Partners SpA Italy 332
Pons Patentes Y Marcas Internacional SL Spain 331
Inlex IP Expertise Spain 321
Societa Italiana Brevetti SpA Italy 316
Bird & Bird LLP Benelux 315
Meissner Bolte Patentanwalte Rechtsanwalte Partnerschaft mbB Germany 313
Rolim, Mietzel, Wohlnick & Calheiros LLP Germany 311
Abril Abogados Spain 309
Fieldfisher Ireland Ireland 308

Table 2: Top 50 EU trademark owners applying for EU trademarks in the 12 months up to the end of April 2020

Huawei Technologies Co Ltd China 265
L'Oreal France 210
Vivo Mobile Communication Co Ltd China 196
LG Electronics Inc South Korea 184
Beauty Brands Concept Spolka Z Ograniczona Odpowiedzialnoscia Poland 167
Samsung Electronics Co Ltd South Korea 167
Batmark Limited United Kingdom 142
ZTE Corporation China 125
N-Cubator BV Netherlands 120
Herlitz [Igt Austria Gmbh] Austria 116
Kronoplus Limited Cyprus 115
ZTE Corporation China 113
Eli Lilly and Company United States 103
La Rive Spolka Akcyjna Poland 101
IGT, A Nevada Corporation United States 100
Ricoh Company Ltd Japan 92
Administracion De La Comunidad Autonoma De Euskadi Spain 84
Unilever NV Netherlands 84
BASF SE Germany 80
Guangdong Oppo Mobile Telecommunications Corp Ltd China 78
Foshan Chuangying Trading Co Ltd China 73
The Procter & Gamble Company United States 73
Global Radio Services Limited United Kingdom 70
Novartis AG Switzerland 69
Ascenza Agro Portugal 68
Philip Morris Products SA Switzerland 68
ADP Gauselmann GmbH Germany 63
Bayer Aktiengesellschaft Germany 63
Peacock TV LLC United States 63
Warner Bros Entertainment Inc United States 63
Capcom Co Ltd Japan 62
Lubera GmbH Germany 62
Cheerful Star International Limited Hong Kong 61
Johnson & Johnson United States 61
Google LLC United States 53
Netent Product Services Ltd Malta 51
Bian China 50
Colgate-Palmolive Company United States 50
Jansen Schoonhoven Netherlands 50
Aldi GmbH & Co KG Germany 49
Henkel AG & Co KGaA Germany 49
Nicoventures Holdings Limited United Kingdom 48
Play'N Go Marks Ltd Malta 48
Beiersdorf AG Germany 47
Skechers USA Inc Li United States 47
British American Tobacco (Brands) Limited United Kingdom 46
Netflix Studios LLC United States 45
Amazon Technologies Inc United States 44
Bayerische Motoren Werke Aktiengesellschaft Germany 42
Astrazeneca AB Sweden 41
Biofarma France 41

Overall, 49,109 applications were filed in the first 20 weeks of 2020, compared to 50,147 in the same period last year. That may represent a 2.1% drop, but it is hardly a dramatic one. Of course, whether that trend continues remains to be seen, but by the end of the extension period, the “tsunami” seems to have been in full flow.

Archambeau reflects:

There was certainly enough work to keep us busy, even though there were some dramatic falls in demand at the beginning of the crisis and this will, most probably, not be completely recovered in the current year. [However,] the office is fortunate to have superb equipment, designed to promote mobile and flexible working, and a great staff who have pulled out all the stops in order to keep everything running smoothly on our side.

From the moment of lockdown in mid-March, when we moved to almost universal teleworking, until the end of May, we examined more than 30,000 new EU trademark applications and more than 15,000 new designs. This production was at near normal levels. In the area of trademark applications and cancellations, the decisions were even 3% above normal levels.

As we will discuss later, the registration workload is just one aspect of the EUIPO’s mission, but Archambeau adds: “Cooperation activities in the European Union and internationally, the work of the Observatory, and preparations for the next strategic plan, SP2025, have also all gone ahead. We have adapted and are very happy with the progress being made given the circumstances.”

One question that all of this begs – and one that many law firms and corporate trademark teams will be asking themselves – is whether any aspects of teleworking will remain in place once employees can return to the office environment.

Quite possibly, says Archambeau: “In terms of what we have learned, while videoconferencing is not ideal for everything, it is certainly very efficient and accessible. Combined with other online and digital tools, video has encouraged a level of interaction that probably would not be possible otherwise, even if things go back to ‘normal’. We will certainly be factoring this into our exchanges with users, and the meetings we have both internally and externally. Video participation has proven itself during this crisis, and the message we get is that users and other stakeholders will want to hold onto that as an option for the future.”

He continues: “The office has had to acquire new software licences to restore phone access to examiners who do not normally telework and allow the call-back service to resume as well as the existing system of scheduling calls with the information centre. We are also looking at extending the possibility of scheduling calls directly with examiners.”

In June, however, the focus is on a possible return to the Alicante HQ: “The office started almost universal teleworking in mid-March. That means around 1,400 of us logged in every day from home. We are planning to return to the office in two phases, with the first wave made up of volunteers, apart from a very small number whose work cannot be done remotely. Around 60 volunteers went back from 8 June onwards, after having been tested to make sure they were free of the covid-19 virus. They are wearing masks, except when at their desks, working at a safe distance, and continue to use videoconferencing for meetings. These volunteers have agreed to spend at least four hours a day at the headquarters in order to test our systems for a full return in September.”

Table 3: Top 25 representatives applying for registered Community designs in the 12 months up to the end of April 2020

Metida Law Firm Zaboliene and Partners Lithuania 1,091 499
Heuking Kuhn Luer Wojtek - Partnerschaft Von Rechtsanwalten Und Steuerberatern mbB Germany 1,052 64
Studio Torta SpA Italy 1,013 172
Liu's Legal Solutions Ltd United Kingdom 1,004 611
Bardehle Pagenberg Partnerschaft mbB Patentanwalte, Rechtsanwalte Germany 964 165
Metzker Germany 964 2
Barzano & Zanardo Italy 869 128
IPSIDE France 651 377
Boehmert & Boehmert AnwaltSpArtnerschaft mbB - Patentanwalte Rechtsanwalte Germany 633 155
De Arpe Tejero Spain 608 320
Jacobacci & Partners SpA Italy 601 166
Aguilar & Revenga Spain 594 10
Huasun Patent Attorneys and Attorneys At Law Germany 538 131
Bugnion SpA Italy 523 129
Grunecker Patent- Und Rechtsanwalte Partg mbB Germany 510 104
Cleanthous Cyprus 502 341
Murgitroyd & Company United Kingdom 497 112
Izquierdo Faces Spain 490 409
Sule Law Firm Hungary 477 257
TBK Germany 476 47
Bertaux France 474 243
Padima Spain 473 31
Societa Italiana Brevetti SpA Italy 453 126

Ultimately, he acknowledges: “We will have to see what the medical advice is at that time, but it may be occupancy of the headquarters will continue to be limited for safety reasons. That could mean that staff work one week on campus followed by one week teleworking. Our plan is to get back, by the end of the year at the latest, to a situation where working in the office is the norm. Teleworking will continue to be an option, but it should be the result of personal choice and based on an assessment of the needs of the office.”

Implementing a new strategic plan

Thus, attention can now turn to the future. On 20 November 2019 SP2025 was approved by the EUIPO management board with the unanimous support of the member states and, at the time of writing, the Commission is set to begin on 1 July 2020. SP2025 has at its core the delivery of “IP value for businesses and citizens in Europe” through three strategic drivers:

  • to further develop an interconnected, efficient and reliable IP system for the internal market;
  • to focus on more customer-centric services; and
  • to move the office towards a more innovative workplace while developing the organisational skill sets required to do so.

Table 4: Top 25 registered Community design owners applying for registered Community designs in the 12 months up to the end of April 2020

Nike Innovate CV United States 1,284 69
Rieker Schuh AG China 964 2
Koninklijke Philips NV Netherlands 873 59
Pierre Balmain SAS France 594 10
Robert Bosch GmbH Germany 568 59
Eglo Leuchten GmbH Austria 512 7
Appolande Inc United States 471 99
Miyagi Lace Co Ltd Japan 370 10
F Hoffmann-La Roche AG China 328 3
Maxton Design Piotr Kardas Poland 301 3
Adidas AG Germany 291 38
Fabiana Filippi SpA Italy 275 9
Yotrio Group Co Ltd China 255 9
Decaustriahlon France 251 122
Huawei Technologies Co Ltd China 244 67
Pandora A/S Denmark 231 3
Doors Bulgaria Eood Bulgaria 231 3
Legero Schuhfabrik Gesellschaft mbH Austria 230 4
Teddy SpA Italy 228 4
Gabor Shoes Aktiengesellschaft Germany 191 6
Twitter Inc United States 190 8

Table 5: Top 15 Austrian representatives applying for EU trademarks in the 12 months up to the end of April 2020

Anwalte Burger Und Partner Rechtsanwalt GmbH 111
Burgstaller & Partner Rechtsanwalte 92
Konzett Kohlhaupt Folie Rechtsanwalte GmbH 42
Torggler & Hofinger 39
Ciresa 38
Sonn & Partner Patentanwalte 37
Patentanwalte Hofmann & Fechner 33
Dr Mullner Dipl-Ing. Katschinka OG, Patentanwaltskanzlei 33
Zumtobel Kronberger Rechtsanwalte OG 32
Saxinger Chalupsky & Partner Rechtsanwalte GmbH 28
Lansky, Ganzger & Partner Rechtsanwalte GmbH 25
Schonherr Rechtsanwalte GmbH 23
Hubscher & Partner Patentanwalte GmbH 23

Table 6: Top 15 Benelux representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Merk-Echt BV 564
Novagraaf BV 515
Gevers 477
Kilburn & Strode LLP 394
NLO Shieldmark BV 336
Bird & Bird LLP 315
Merkenbureau Knijff & Partners BV 231
De Merkplaats BV 206
Algemeen Octrooi- En Merkenbureau BV 163
Arnold & Siedsma 156
Dennemeyer & Associates 155
Chiever BV 141
De Clercq & Partners 134
Intellectueeleigendom.Nl 132
Jansen Schoonhoven 125

 

Table 7: Top 15 Danish representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Patrade A/S 211
Otello Law Firm 200
Njord Law Firm Advokatpartnerselskab 110
Bech-Bruun Law Firm 104
Zacco Denmark A/S 88
Chas Hude A/S 60
Plesner 52
Plougmann Vingtoft A/S 48
BrandIT IPR APS 46
Budde Schou A/S 36
Larsen & Birkeholm A/S 33
Viinberg 31
Gorrissen Federspiel Advokatpartnerselskab 31
DLA Piper Denmark Law Firm P/S 29
Nemadvokat 28

With these as the backdrop the EUIPO will now launch related schemes through its annual work initiatives, with a new set of European Cooperation projects (ECPs) also being approved to run alongside the SP2025. The first strategic driver sets out how the office intends to build upon the networks created in order to improve the IP system and includes goals such as matching tools and practices with user needs, stepping up IP enforcement efforts and developing IP knowledge. The second guides the actions that will be taken to provide EUIPO customers with tools and guidance, including new services and those designed for SMEs. Finally, the third driver is predicated on the belief (continues on page 113) that the office has to evolve its skill sets and working practices in line with the digital age.

Table 8: Top 15 Finnish representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Berggren Oy 245
Kolster Oy Ab 133
Roschier Brands, Attorneys Ltd 130
Ipriq Ltd 107
Heinonen & Co 103
Boco IP Oy Ab 93
Laine IP Oy 75
Papula Oy 72
Dottir Attorneys Ltd 61
Castren & Snellman Attorneys Ltd 40
Borenius Attorneys Ltd 35
Asianajotoimisto Roihu Oy 34
Fondia Oyj 33
Properta Asianajotoimisto Oy 28
Lexia Attorneys Ltd 21

Table 9: Top 15 French representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Bertaux 1429
IPSIDE 512
Cabinet Germain & Maureau 337
Cabinet Beau De Lomenie 271
Novagraaf France 202
Plasseraud IP 194
JA Kemp Snc 158
Colbert Innovation Toulouse 141
Cabinet Chaillot 141
T Mark Conseils 132
Cabinet Laurent & Charras 131
Cabinet @Mark 126
NextMarq 122
Lambert & Associes 96
Santarelli 85

The EUIPO and SMEs

If SMEs were a country, they would be the sixth most populous member state in the European Union. They would be one of the richest too, adding €3.5 billion to the gross domestic product of the European Union every year. There are more than 25 million SMEs in the European Union’s non-financial business economy, together employing more people than the entire population of Germany – up to 100 million jobs.

Put simply, SMEs are everywhere. They are part of the fabric of our daily lives. They create jobs, add value and help to grow our economy. But we have known for some time, through our research at the EUIPO, that SMEs do not always opt for IP protection. Some will never need it, of course, but some will, particularly if they are aiming to expand.

In 2015 we carried out a study that showed that while only 9% of small businesses own IP rights, firms that do own them have almost 32% more revenue per employee than firms that do not. This was really the starting point of our research into SMEs and intellectual property, and with every study we release, we uncover more – not only about how SMEs use IP protection (and why they do not), but also about the benefits that it can bring them. However, we are now facing a very difficult time for the economy as a whole, and SMEs are no exception. The lockdown measures of many EU member states – and many global regions – due to the coronavirus pandemic will have knock-on effects for a great deal of small businesses. They are going to need all the help that we can give.

So, over the past few weeks, we have been working hard to roll out some initiatives to help SMEs as and where we can. We are about to launch an SME corner on our website, which will gather all our initiatives aimed at small businesses together in one place – a one-stop shop for all the services that we offer, including effective dispute resolution. We are also looking at introducing an easy e-filling system for SMEs by the end of the year, and are encouraging pro bono services to assist these companies.

We already have a pilot programme in place leveraging our e-learning courses aimed at small businesses in Spain through the Chamber of Commerce of Alicante, thanks to an agreement that we signed with the organisation some years ago. These courses will give smaller companies a basic grounding in intellectual property and point them towards registration possibilities. The Chamber of Commerce in Spain is an excellent dissemination point for this initiative, given its large membership and wide reach.

But in the months and years to come, the issue of intellectual property and SMEs is one that will only grow in importance. The European Commission has identified intellectual property as a capacity-building measure in its SME strategy for a digital and sustainable Europe. With an IP action plan – which will propose measures to make the IP system more effective for SMEs – also forthcoming, the issue of SMEs and intellectual property is a key one for policy makers and businesses alike. Our own Strategic Plan 2025 puts SMEs front and centre, aligning us with wider measures being taken to support them in other areas. Of course, the participation of our partners in the EU national and regional IP office network will also be crucial to achieving our aim, as they are on the frontline when it comes to dealing with SMEs, which often seek national or regional-level protection first.

The evidence that we have to hand indicates that SMEs perceive IP rights as beneficial overall. In 2019 we published a large-scale survey of EU SME owners, who were asked about their experiences with the IP system. After registering their IP rights, 54% of owners claimed to have seen a positive impact. The main effects identified were an increase in reputation (52%), turnover (39%) and ability to access new markets (37%).

For those SMEs without registered IP rights, the main reason for not registering was a lack of knowledge about what intellectual property is and what its benefits can be. The percentage giving this reason grew from 25% in 2016, when we first carried out the survey, to 38% in 2019.

Moreover, when we look at licensing, a very interesting picture emerges. We carried out a survey among SMEs owning EU trademarks, which we released at the end of 2019. A full 7.5% of SMEs owning EU trademarks licensed them to other parties in the five-year period between 2013 and 2017, reaping an average annual revenue from licensing of €64,924 per firm. Given that the average lifespan of an EU trademark registered by an SME, according to our register, is 20 years, that adds up to €1.3 million per licensing firm.

Put simply, our research, and our own interactions with customers, show that IP protection can be hugely beneficial for smaller companies. More than ever, an IP portfolio is a business asset, as our licensing study shows, and any company that can benefit from IP protection should be able to do so.

At the EUIPO, we have been tilting towards SMEs for some years now. We have a host of measures in place to increase their access to the EU IP system, including:

  • multilingual communication to reduce translation costs (we are the only IP office in the world that examines applications in 23 languages);
  • free databases such as TMview and DesignView for pre-clearance searches and TMclass and DesignClass to help with the classification and filing process;
  • simple, five-step filing forms to allow SMEs to navigate the application process with ease; and
  • a mediation service at second instance, which can significantly reduce expense for smaller companies.

We manage registrations of two unitary IP rights that are, even now, relatively affordable in terms of their duration and scope. The costs of an EU trademark registration have been dropping over the past two decades; the last legislative reform, in 2016, cut costs for both application fees and renewal fees – significantly, in the case of the latter. The registered Community design, in particular, remains an affordable, accessible IP right, and one that is both well used and greatly valued by SMEs.

We are also working on deepening our cooperation with EURid, the body responsible for the ‘.eu’ domain name in the European Union, and we are going to collaborate more in future. At present, EU trademark applicants can check if an ‘.eu’ domain name is available at the end of the registration process, thus helping to evade potential cybersquatters. We are moving towards replicating this process at the point of domain name registration, so wouldbe applicants can immediately see whether a trademark is available. This will be particularly helpful for small businesses, allowing them to protect their brand from the outset.

Crucial to all this effort is raising awareness. In order for SMEs to benefit from IP rights, they need to know that they exist in the first place. That is why communication is at the heart of our SME outreach activities. Communication via traditional media, social media and online channels is all vitally important when it comes to getting the message across that intellectual property is for every company, no matter its size.

The EUIPO is ready to help SMEs at this highly crucial time. They give so much to our economy; they provide employment and create economic growth, and anything that we can do to help them, we fully intend to do. Some SMEs will never need IP protection, but many will, and many should have it already. As one of the largest IP offices in the world, it is our job to try to remove the barriers in their way and to ensure that they have what they need to keep growing and keep thriving.

Andrea Di Carlo is deputy executive director at the EUIPO

Table 10: Top 15 German representatives applying for EU trademarks in the 12 months up to the end of April 2020

Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwalte Rechtsanwalte 509
Grunecker Patent- Und Rechtsanwalte Partg mbB 421
Forresters 394
Meissner Bolte Patentanwalte Rechtsanwalte Partnerschaft mbB 313
Rolim, Mietzel, Wohlnick & Calheiros LLP 311
Mitscherlich, Patent- Und Rechtsanwalte, PartmbB 303
Wurth & Kollegen 288
Breuer Lehmann Rechtsanwalte Partnerschaft mbB 263
Harmsen Utescher 259
Recht 24/7 Schroder Rechtsanwaltsgesellschaft mbH 229
Maucher Jenkins 220
Taylor Wessing 217
Jahn 206
Brandstock Legal Rechtsanwaltsgesellschaft mbH 194

Table 11: Top 15 Italian representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
AL & Partners SRL 1,002
A.Bre.Mar SRL 883
Bugnion SpA 636
Barzano & Zanardo SpA 563
Jacobacci & Partners SpA 549
GLP SRL 494
Perani & Partners SpA 332
Societa Italiana Brevetti SpA 316
Studio Torta SpA 270
Giambrocono & Co SpA 219
Dr Modiano & Associati SpA 139
Dott Franco Cicogna & C.SRL 139
Mondial Marchi SRL 137
Merico 134
La Malfa 134

SME support

The focus on SMEs has long been baked into the office’s plans and activities, but Archambeau highlights the heightened need to help smaller organisations during the pandemic. “We are bringing forward a number of projects that we think can help businesses in this time of crisis,” he states. “We looked for ‘quick wins’ arising from SP2025 that could help SMEs in particular. This involves introducing, this summer, effective dispute resolution, the encouragement of pro bono services to help SMEs if they have issues, and a special SME corner on our website. In addition, an SME ‘easy filing’ service will be delivered by the end of this year. On top of that, we have been discussing with the European Commission how the office’s accumulated surplus, which is in addition to our reserve, could be used for other SME projects that support the European Union’s new industry strategy. It is too early to give details, but we would hope to start this year.”

The escalation of SME-focused activities is not the only example of how the SP2025 plans have been revisited in the current circumstances. Archambeau explains: “As a result of the crisis we did a prioritisation exercise, which has now been completed, to see how we could best move forward with SP2025. The aim was not to reduce the ambition of the strategic plan, but to make sure we were getting the most out of it, particularly with regard to responding to needs arising from covid-19.”

Looking ahead, there are a number of strategic priorities that Archambeau emphasises. One is the adaptation of the IP Enforcement Portal to cater to the new EU applications for action form, due to be implemented this summer, in preparation for the full management of e-applications for action in 2021.

Table 12: Top 15 Polish representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Nowicki (IntellectPol IP Law Firm) 430
CMS Cameron Mckenna Nabarro Olswang Posniak I Bejm SpK 165
Nykiel 162
Binder-Sony 154
JWP Rzecznicy Patentowi Dorota Rzazewska SpK 138
LDS Lazewski Depo & Partners 120
Aomb Polska SP ZOO 100
Kondrat & Partners 92
Hasik & Partners 71
Kancelaria Prawa Wlasnosci Przemyslowej I Prawa Autorskiego Teresa Czub & Krzysztof Czub Rzecznicy Patentowi Spolka Partnerska 66
Tomaszewski 65
Chmura & Wspolnicy 65
Basck Europe SP ZOO 62
Poraj Kancelaria Prawno-Patentowa SP ZOO 54
Patpol SP ZOO 53

Table 13: Top 15 Portuguese representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
J Pereira Da Cruz SA 191
Cerqueira 90
Gastao Da Cunha Ferreira LDA 62
Garrigues IP, Unipessoal LDA 58
Rodrigues Warrior 52
Simoes, Garcia, Corte-Real & Associados - Consultores LDA 51
Inventa International SA 50
RCF - Protecting Innovation SA 46
Martinho Da Rosa 34
Patentree 33
Alvaro Duarte & Associados 28
AG Da Cunha Ferreira LDA 26
JE Dias Costa LDA 24
Marquises 22
C/M/S Rui Pena, Arnaut & Associados 21

Table 14: Top 15 Spanish representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Arcade & Asociados 801
De Arpe Tejero 653
Isern Patentes Y Marcas SL 606
Ungria Lopez 459
Arpe Patentes Y Marcas SL 439
Garcia Egea (RINCHO INTELLECTUAL PROPERTY FIRM) 408
Clarke, Modet Y Cia SL 395
Hogan Lovells 394
Ingenias 376
Bomhard IP SL 363
Herrero & Asociados 344
Pons Patentes Y Marcas Internacional SL 331
Inlex IP Expertise 321
Abril Abogados 309
Izquierdo Faces 307

Table 15: Top 15 Swedish representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
Barker Brettell Sweden AB 396
Awa Sweden AB 385
Zacco Sweden AB 308
Advokatbyran Gulliksson AB 239
Brimondo AB 172
Brann AB 158
Groth & Co Kb 154
Ports Group AB 104
Vamo Varumarkesombudet AB 103
Valea AB 95
Bergenstrahle & Partners AB 82
Hansson Thyresson AB 72
Advokatfirman Vinge Kb 69
Advokatfirman Nordia 61
Kransell & Wennborg KB 56

“The Out of Commerce works portal will also be launched this time next year,” he reveals. “There are two important digital transformation projects – the extension of IP tool to ex parte designs and the Boards of Appeal IP tool. There are also several important customer projects, plus supportive instruments for SMEs and the SME website.”

“As already mentioned, the easy SME e-filing project is also being brought forward before the end of the year,” Archambeau continues. “We will also work on a number of projects related to AI, big data, blockchain and the important Enterprise Resources Planning project, which will bring together HR and finance information and assist in future management and planning.”

Brexit’s “incomprehensible and unfortunate” consequences

This all represents a significant workload, which must be managed alongside continued cooperation activities. “As regards the European Cooperation Projects, the indication from our partners in the member state IP offices is that the appetite for developing more and better tools, and continuing the process of convergence in a networking environment, continues,” notes Archambeau. “In addition, supporting SMEs and helping combat IP infringements are both even more urgent given the current context.”

There is also the small matter of Brexit to be navigated. At the time of writing, the transition period is due to end on 31 December 2020 and negotiations on the future economic and political relationship between the United Kingdom and European Union continue.

In this respect, the office is in the same ‘wait and see’ position as everyone else. Nevertheless, there is work to be done. “The office’s position is that we had a contingency plan for the hardest of hard Brexits in place before the signing of the Withdrawal Agreement and we also continue to work with the European Commission on the latter’s implementation,” Archambeau states. “We hope to be in a position to have our preparedness plan for the end of the transition made public before the end of the summer. I think you can therefore say that we are prepared for Brexit. We will deal with whatever happens. As the situation stands now, the United Kingdom’s worldclass IP lawyers will face the toughest challenges as they will lose their rights to representation before the office. For me, the situation is both incomprehensible and unfortunate, but it is out of our hands and we will all just have to deal with it.”

A picture of growth

Brexit was one of the factors identified by the office’s latest annual report as contributing to volatility in the demand for trademarks and designs. Published in June, the report notes that 2019 was an “exceptionally busy year”, not least because it was the one in which the EUIPO celebrated its 25th anniversary and received its 2 millionth EU trademark application.

EUIPO trademark filings grew 5.2% year on year in 2019, with design filings up 3.5%. The use of e-filing continued at its current high level, representing 99.8% of all direct EU trademark applications and 97.9% of direct design filings.

The average time taken to publish an EU trademark via fast track was 4.3 working days and less than two weeks for regular track, with registration being completed in close to four months in both cases. What is more, the examination of new EU trademark filings increased by over 10% compared to 2018.

Work on user tools and cooperation projects also remained a primary focus. For instance, the 2019 annual report records an 83% user satisfaction rating for the TMview and DesignView tools, both of which have continued to expand and develop.

In April 2020 the office launched improved versions of the world’s largest free trademark and design search engines. The refreshed offerings, released after a beta testing period which involved garnering user feedback to guide further enhancement, offered a wider search criteria and the ability to set alerts for when changes are made to particular marks or designs.

The data set drawn upon has also been steadily built up – as of early June, after trademark data from IP Australia was added, TMview contained information on almost 60 million trademarks across 74 participating offices. Although DesignView does not contain the same degree of data, around the same time, it boasted searchable data on almost 16 million designs from more than 70 offices.

The EUIPO’s next annual report will reflect continued efforts on the latest strategic plan, as well as providing deeper insight into how covid-19 and Brexit have affected the office’s operations and workloads. For the EUIPO, it will be a year in which the canny use of online tools proves to be key. However, tracking change and supporting innovation is precisely the office’s role.

Asked whether there are any other issues that he wishes to highlight to WTR readers, Archambeau reflects: “The EUIPO, and I think all of us, are experiencing a closeup and personal view of a world in which online tools and interactions will increasingly be the first choice for customers and stakeholders. This will accelerate as the promise of fourth industrial revolution technologies is fulfilled. Out of 20 new courses for staff introduced on the EUIPO Academy Learning Portal recently, 10 dealt with AI or big data. We need to be ready for the changes ahead and also ready to embrace them. This means getting the best out of the technology and the best out of our people. I have said at several conferences recently that things in the future will probably not be the same – when have they ever been? We must keep moving forward and try to shape a future that, in some respects at least, will be better.”

Table 16: Top 15 UK representatives applying for EU trademarks in the 12 months up to the end of April 2020

Representative name Direct EU trademarks
HGF Limited 420
Stobbs 389
Lane IP Limited 386
Marks & Clerk LLP 366
Liu'S Legal Solutions Ltd 363
Baker & Mckenzie LLP 240
Cooley (UK) LLP 237
Murgitroyd & Company 209
Mewburn Ellis LLP 200
Withers & Rogers LLP 183
Urquhart-Dykes & Lord LLP 170
Haseltine Lake Kempner LLP 170
Beck Greener LLP 161
Potter Clarkson LLP 154
Taylor Wessing LLP 144

Table 17: Top representatives from other jurisdictions applying for EU trademarks in the 12 months up to the end of April 2020

Trademark owner name Country of origin Direct EU trademarks
Metida Law Firm Zaboliene and Partners Lithuania 1,123
Cleanthous Cyprus 638
FRKelly Ireland 473
Sakellarides Law Offices Greece 432
Süle Law Firm Hungary 276
Otmore Limited Malta 203
Patendibüroo KÄOSAAR OÜ Estonia 165
Agency Tria Robit Latvia 114
IP Consulting Ltd Bulgaria 50
Zacco Norway AS Norway 43
Patentcentrum Sedlak & Partners SRO Czech Republic 37
Zagar Slovenia 30
Arnason Faktor Iceland 21
Belicka Slovakia 21

Customer Panels at the EUIPO

Customer focus is a key concept at the EUIPO, with new initiatives being rolled out to support office customers and tailor services to their needs. One of these initiatives is the Customer Panel initiative, which will be central to customer-focused activities under the office’s Strategic Plan 2025 (SP2025).

Three online meetings held during the covid-19 crisis kicked off the first EUIPO Customer Panel of 2020; a forum devoted to the services and tools offered and developed by the office. Bringing together EUIPO employees and user associations, the Customer Panels serve as a complement to the successful Stakeholder Quality Assurance Panels (SQAP), which audit the quality of decisions at the EUIPO, helping to reduce the gap between the office’s perception of quality and that of customers.

The SQAP initiative has been groundbreaking for the EUIPO, in that it has fully integrated customer feedback into the quality process at the office. Operating since 2017, the SQAPs are made up of IP specialists chosen by user associations, who use the same quality criteria as the EUIPO does during internal quality checks.

The regular feedback received from customers in the SQAP audits, now also taking place virtually as a result of the covid-19 lockdown, means that the office’s practice is moving more in line with customer needs and expectations.

The SQAPs have led to changes in the way that the EUIPO works and allow customers to gain a better understanding of the office’s practice. These activities now encompass the auditing of decisions in absolute grounds, relative grounds and design invalidities, with cancellations to be added soon.

Building on the success of the SQAPs, the Customer Panels have an intensive programme ahead. They are one part of an interlocking set of activities being launched at the EUIPO to integrate the customer’s perspective into the office’s work. Customer experience is copperfastened into nearly every project under the forthcoming SP2025, whether through the development of tools, services or other initiatives that fit their needs.

Indeed, the EUIPO has already established an extensive customer outreach ecosystem. In 2019 pilot training programmes brought trademark and design examiners into the offices of the EUIPO’s key users (professional IP representatives) and out to local industry to give them more insight into how these segments work and what their day-to-day needs are. At the same time, intensive work has been carried out on customer segmentation to identify customer groups in order to tailor services to the different needs of each group.

The EUIPO has been striving for some time now to integrate the customer perspective to offer the best possible IP environment for patrons and to take greater account of what they seek from a high-quality IP system. Successive strategic plans have embarked on initiating and developing many improvements in order to bring EUIPO services more in line with user expectations and the office is now taking a clear step forward by firmly placing customers at the very heart of SP2025.

In this vein, the office will put in place a customer-centred approach whereby segments of customers are identified, their behaviour analysed, their needs identified and their feedback incorporated to deliver segment-tailored solutions. These segments will form the basis of all customer-focused tools and activities throughout the office. Here, the Customer Panels will provide valuable insights into customer behaviour and preferences.

This will be particularly vital for SMEs, of which only 9% have their IP rights registered, according to director of the EUIPO Customer Department Inge Buffolo. “They have different needs from professional representatives so they should be dealt with accordingly,” she adds. “We need to address that in the SME programme that we will launch this year, and the Customer Panels will be a valuable source of information on this segment. They will allow us to see things through the eyes of the small business or the entrepreneur, for whom intellectual property is way down on the list of priorities.”

SMEs are just one segment in the Customer Panel universe. While the SQAPs look at the EUIPO’s products (ie, its decisions), the new Customer Panels will be devoted to the EUIPO’s services and tools. This year, the Customer Panels will cover IP dissemination relating to EUIPO tools and services, the new key user programme (catering mainly for the office’s heavy users) and payment services that may affect all segments and SME operational activities.

The first Customer Panel meeting took place virtually over three days with 13 panellists from nine user associations (the Association of Trademarks and Designs Rights Practitioners, BUSINESSEUROPE, the Chartered Institute of Trademark Attorneys, the China National IP Administration, the European Brands Association, the European Communities Trademark Association, the German Association for the Protection of Intellectual Property, INTA and MARQUES), all of which were selected via a call for experts.

The objective of the sessions was to identify customer needs in relation to IP information and to find out how effectively the EUIPO IP dissemination tools and services (eg, eSearch plus, eSearch Case Law and TMview) fulfil those needs. This would help to identify areas where improvements might be needed to the EUIPO’s current services and to integrate the customer perspective into the design of new services.

Initial participant feedback was encouraging, with delegates flagging up suggestions for improvements in tools such as eSearch Plus, as well as identifying key action points for future work.

“I’m convinced that if the improvements and new tools we discussed are implemented, they will have a very positive influence, especially in terms of their functionality, accessibility and completeness,” commented Alicia Zalewska, who represented INTA on the panels.

The next step for the EUIPO is to analyse the feedback obtained from users and plan actions based on this. Based on the feedback from the first meeting, the Customer Panels have started well, with more to be done in the coming months and years as SP2025 kicks into action, particularly in the context of the forthcoming SME programme.

This is just the first step in a journey that seeks to fully integrate the customer perspective into all aspects of the office’s work, with the aim of making the IP system more accessible and intuitive for everyone.

- The EUIPO

This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe