US Trademark & Design Activity in Europe

Nadaline Webster,

One of the surprises in the analysis of the trademark applications of the “Top 200 Law Firms in Europe” is the spectacular growth of applications from China since 2010. There seems to have been a shift in the tide in the Chinese perspective and many new developments that are transforming both the attitude to IP protection within China and accessibility of information to those from outside the region. Perhaps this remodelling of the system has inspired and encouraged more Chinese companies to ‘go global’!

But what about the US?

From 1996 up to 2015, according to data provided by EuroStat, the US provided the largest average of annual trademark applications of any country located outside the EU 28 with an average of 12,322 per year. 19 years is a long time to maintain that position. While growth in trademark applications from China has recently exploded, growth in US-based applications at the EUIPO has remained at a small yet steady average of 1% per year and in 2015, 16,894 EUIPO trademark applications were received from the US.

Intriguingly in 2015, EuroStat found that the US also had the highest number of applications for Community Designs from outside the EU with China and Japan in second and third place respectively. Additionally, the US filed the highest annual average number of Community Designs from 2003 to 2015 of 6,089.

How does this compare to overall filings at the USPTO? The iPelton blog has the answer! In 2015, the USPTO received roughly 378,000 new applications and issued 232,487 registrations. The leap to a record filing of 388,552 applications in 2016 shows a growth rate of around 5% which the author states is lower than previous years. While one would, of course, expect that domestic registrations would be much greater than overseas applications, European applications from US companies are only a tiny fraction of the overall trademark activity. With China suddenly seeming to realise the strategic value of European applications, will we see a similar rise in US applications if Chinese companies gain competitive advantages with this approach?

Filing in Europe is very different to the system in the US. The operation of the system for trademark protection offered by the EUIPO is a unitary one - meaning that a single application covers all Member States in one fell swoop. This is in direct opposition to the Madrid system offered by WIPO where a wider range of regions are available but you must choose those individually. You can, of course, choose these on a single application but each application to each designation is handled individually by that regions’ intellectual property office. This is not the case in Europe where your single application goes to a single intellectual property office and, if approved, will result in a registration that provides protection in all member states. Unlike the USPTO, the EUIPO will not examine an application for relative grounds for refusal. The onus is on trademark owners to monitor new applications and oppose those that they feel might infringe their brand.

For overseas applications, a representative with an address in the EU is required and for most US companies, this means a European-based outside counsel. Because of the ‘opposition’ system of applications, an ongoing service to monitor your registered trademarks is also something to be considered. Choosing the right European representative for your trademark management relies on a host of factors - most importantly your industry and business model. Where, when, why and how you utilise your intellectual property has a dramatic influence on the strategies formulated to best register and protect it. Whether your trademark attorney is in-house, outside counsel or even in another country, more and more companies need those professionals to be business partners. Volumes of applications and success rates are far from being the only criteria you should consider but it provides interesting food for thought nonetheless. Click here to download your copy of 'Top 200 Trademark Agents in Europe'.