The latest issue of World Trademark Review magazine is now available online to subscribers. In this issue, we undertook an ambitious research project to identify the IP offices around the world that are committed to exploring value-add non-core offerings for its users. The EU Intellectual Property Office (EUIPO) topped the final ranking, reflecting its innovative suite of trademark tools and service.

The European Union Intellectual Property Office (EUIPO), founded in 1994, is the European Union Agency responsible for the registration of the European Union trade mark (EUTM) and the registered Community design (RCD), two unitary intellectual property rights valid across the 28 Member States of the EU. Every year, it registers an average of 135 000 EU trade marks and close to 100 000 designs.

The EUIPO is based in Alicante, on the south-east coast of Spain, and there are five working languages at the Office – English, French, German, Italian and Spanish. The office also processes trade mark and design applications in 23 official languages of the EU.

Over the last decade, the services being offered at many IP offices has gone far beyond the core responsibility of maintaining a trademark register. Most IP offices have introduced e-filing, while others have launched such services as trademark dispute mediation and IP legal advice for SMEs. Furthermore, many release regular research and use social media platforms to raise awareness of trademark-relevant issues to the public. To reflect these efforts, we asked over 100 trademark practitioners across the world about the non-core tools and services offered at the top 40 IP offices (by 2015 filing count). Totalling the 12 metrics we looked at, the final ranking is led by the EUIPO, with the French (INPI) and Singaporean (IPOS) offices in joint second place, and the South Korean (KIPO), United Kingdom (UKIPO) and United States (USPTO) offices just behind them.

The EUIPO ranked highly for a number of reasons. It regularly releases trademark-relevant research and hosts numerous events across the year. Perhaps the crucial element that set it apart is the office’s work on digital trademark tools (primarily enabled by the cooperation fund), which have led the way in terms of online usability and technical proficiency. In fact, as a result of the fund, every IP office in the EU now has trademark e-filing capability. “The EUIPO has invested in a modern, approachable design and provides clear explanations about trademarks without relying on legalese,” summarised Nehal Madhani, chief executive of Alt Legal, a US service provider which assisted in the online metrics of our research.

Finally, it gave some of the largest online marketplaces – including Alibaba, eBay, and MercadoLibre – an opportunity to advise to IP counsel on the best way to use their rights protection mechanisms. Their responses, which includes common mistakes made when using mechanisms, should be helpful for any practitioner seeking to combat sales of counterfeits on major e-commerce platforms.

Legal background

The regulation establishing the EUIPO was adopted by the Council of the European Union in December 1993 and revised on two occasions, in 2009 and in 2015. It created the European Union trade mark (formerly known as the Community trade mark) as a legal instrument in European Union law and established the EUIPO (formerly known as Office for Harmonization in the Internal Market or OHIM) as an EU agency with legal, administrative and financial autonomy.

Council Regulation (EC) No 6/2002 of 12 December 2001 created the registered Community design.On 23 March 2016, the Office changed its name to the European Union Intellectual Property Office upon the entry into force of Regulation 2015/2424.

The European Union trade mark and the registered Community design

The European Union trade mark (EUTM) grants exclusive rights in all current and future Member States of the European Union through a single registration, filed online. The basic registration fee is EUR 850 and it covers one class of goods and services. An EU trade mark registration lasts for 10 years but can be renewed indefinitely in blocks of 10 years.

The registered Community design (RCD) also grants exclusive rights throughout the European Union and future Member States. The fee for registering and publishing one design is EUR 350. A registered Community design is initially valid for five years from the date of filing and can be renewed in blocks of five years up to a maximum of 25 years.