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Cooperation in Intellectual Property: The Impact of the EUIPN Network - EUIPO

29-Jan-2023 | Source : The European Union Intellectual Property Office (EUIPO) | Visits : 2941

ALICANTE - The European Union Intellectual Property Office (EUIPO), through the European Union Intellectual Property Network, creates tools and practices so that businesses big and small can benefit from more efficient registration services and increased legal security when applying for a trademark or design, according to the official website of EUIPO.

The EUIPN brings together the EUIPO with the EU national and regional intellectual property (IP) offices, as well as international partners, to make intellectual property rights like trademarks and designs more accessible, user friendly and effective. Over the last 12 years, the EUIPO, together with the valuable support of the EUIPN, has been able to drive a cut in registration fees, save costs, create global search tools and modernize the IT infrastructure of IP offices in Europe and worldwide.

The EUIPO and the IP offices of the EU Member states operate in a two-tier system in which EU rights and national rights work together and complement each other. This means that the EU trademark exists along with national trademarks and companies can choose where to protect their brands depending on their business needs.

The EUIPN underpins this whole system connecting IP offices and working to, on the one hand, develop online tools that make it easier to apply for a trademark or design, and, on the other, converge on practices so that the process of registering a trademark and design is as similar as possible everywhere in Europe.

Currently, there are eight projects and 25 subprojects, all focused on cooperation and convergence: from developing state of the art online tools for the registration of trademarks and designs to converging the way intellectual property offices register these rights.

A growing and potent joint effort

The EUIPN entails a gigantic cooperation effort that needs both creativity and diverse viewpoints to flourish. Around 200 experts make up the network who come from national and regional IP offices, user associations and international organizations like the World Intellectual Property Organization, the European Commission and European Patent Office. They meet twice a year and agree on the way forward. The EUIPO experts complement this input with regular technical visits to the IP offices. In January 2022 reached the milestone of 1 000 tools, services, certifications and Common Practices successfully implemented.

Convergence explained

In short, convergence helps reduce, if not eliminate, incidents in which similar trademark and design applications are treated differently. This means that IP offices agree to follow common guidelines regarding certain aspects of how they examine trademarks and designs. These agreements are called common practices and they look into matters like what is considered an acceptable trademark and what is not, or how the passing of a new legal instrument, like a regulation or directive, affects examination of trademarks and designs.

Harmonizing a specific trademark and design practice takes into account the input from relevant court decisions and the outcome of the EUIPN working groups, where IP experts share their views. The resulting common practices help trademark and design applicants and examiners alike to have a clearer understanding of the principles that are applied in examination. This way, anyone can reasonably predict the outcome and benefit from a comparable decision both at EU and national level.
To date, 12 common practices have been agreed upon between the members of the network: nine in the field of trademarks and three in designs.

But convergence does not stop here, in a fast-evolving world like that of intellectual property, there are now also new convergence projects that specifically look into updating the existing practices to the changing circumstances.

Two new common practices, currently in the pipeline, will clarify aspects of examination of trademarks made in bad faith - for example trademarks that are filed with the intention of misappropriating the rights of a third party or to abuse the trademark system - as well as trademarks contrary to public policy or to accepted principles of morality, which include signs that can be refused because they are offensive to a particular group (e.g. a racist sign) or linked to criminal activities or well-known tragic events, among other reasons. And in early 2023, the focus will also be on clarifying aspects of the comparison of goods and services included in the trademark application or registration and, more specifically, what to do when terms lacking clarity and precision are encountered in a comparison.

Online tools

The EUIPN has been working to create the world’s largest databases of trademarks and designs so that anyone interested in IP can search for millions of trademarks and designs from around the world in a single place: TMview, the network’s flagship database, contains a mammoth 100 million trademarks, and there are more than 20 million designs in DesignView. Both tools are available in more than 35 different languages.

These databases are complemented by two twin tools, TMclass and DesignClass, which allow applicants to know for what goods and/or services can be registered as a trademark or design.

Once the research phase is over, the trademark or design moves on to the filing stage when the company or an individual is ready to submit its application form. For years, the EUIPN has worked on developing a user-friendly, artificial intelligence powered online filing system for trademarks and designs. This filing system can be found on the 20 European IP offices’ websites and comes together with a common user account and a personalized dashboard from where companies can manage their portfolio of trademarks and designs.

The next step touches upon the examination process. The application is received at the EUIPO or at any of the national IP offices in a back-office system created with the valuable support of the EUIPN . Having a similar back office helps to increase consistency in the decision-making process. The back-office is currently used in 15 IP offices, with Sweden joining in December, just before the country took over the EU presidency.

Once the examiner has reviewed the application, they move on to draft the decision that will establish whether a trademark has been accepted, refused, or if additional information is needed.

Looking ahead

As new cooperation and convergence projects are bound to appear in parallel, the EUIPN will continue helping EU companies of all sizes to navigate the complexities of international trade and IP protection and act as the ‘gold standard’ for cooperation in intellectual property internationally.

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