IP Strategy and Tools for its Implementation

Günther Marten,[Patent]

Guenther Marten1
Minister-Counsellor at the EU Delegation in Beijing
 
Businesses have all kind of IPRs at their disposal to protect their intangible assets from a different angle and with a different length and scope of protection. Sometimes it makes sense to search for a design protection, being the protection quickly granted with however a limited duration against a trade mark protection which is longer in time but may face oppositions from a third party. IPRs do not exclude each other but the scope of protection may overlap between them.
 
The present is part of a series of articles with the aim to give the practitioners in China a rough idea of the functioning of the European Intellectual Property Rights (IPR) system with a focus on trademarks and designs. The present article will present in a non-exhaustive manner IT tools and applications made available free of charge to users around the world to enhance their daily practice and better implement the IP strategy of their clients contributing to their success.
 
Businesses have all kind of IPRs at their disposal to protect their intangible assets from a different angle and with a different length and scope of protection. Sometimes it makes sense to search for a design protection, being the protection quickly granted with however a limited duration against a trade mark protection which is longer in time but may face oppositions from a third party. IPRs do not exclude each other but the scope of protection may overlap between them. More often, companies decide to protect their brand through trade mark and as well through designs, being the one a label and the latter the appearance of the product. There are other circumstances where an intangible asset is best protected through a trade secret, whereas others are suitable for copyright protection (which, contrary to China, in the European Union (EU) cannot be registered).
 
The practitioners have to take further into account that the EU has special aspects which should be considered when deciding to search for IP protection in it. The reader knows that the EU is composed by 28 Member States and the reader is broadly familiar with the European Union Trade Mark (EUTM) system (if not please refer to a previous article of this series). The Member States maintain their national IP protection system for the different IPRs with exception of Belgium, The Netherlands and Luxemburg, which have a regional system on its own. Thus, the EU has dual IP protection systems where the national/regional protection coexists with the EUTM system, the latter producing effect in all Member States.
 
It is clear that if a company has business interests in three or more Member States the cheapest and simple solution for trade mark and design protection would be the EUTM or the Registered Community Design (RCD). It would deliver a t i t le which is valid in 28 Member States, so a very wide scope of protection. Some companies however see also a danger in this. Over time a EUTM and a RCD could be subject to an invalidation procedure for the different reasons set out in the law. A successful invalidation procedure would then wipe out the entire EU right. In order to have a safe net a company may decide to make still use of the EUTM but file in parallel national applications in key markets. Even if the EUTM would be invalidated, national marks still may provide sufficient protection for the business.
 
The Madrid System, in which China is a member, may be further used to combine EUTM with national trademarks and even with non-European trade marks. These few remarks on strategy aspects serve only as an appetizer for the more important question on how better advise the client on the IPRs to protect. In recent years IT tools have been developed which provide the professionals and businesses with sufficient intelligence to avoid future difficulties.
 
Proper trade mark clearance is the key to a successful application. Businesses with the intention to protect a trade mark or design want to make sure that the chosen IPR is protectable and not prone to be attacked successfully in the future or want at least know if and to what extent such risk exists. They would turn to professionals in their IP department or to IP lawyers, for advice.
 
The professionals would have to make sure that the trade mark or design is acceptable in the corresponding country or region. It would further need to make a search on earlier rights in order not make the client to apply for an identical or too closely similar right.
 
Whereas the professionals in the past had to rely on a survey made by private firms which run the search in their databases, presently such search can be performed at no additional charge by the businesses or the professionals themselves. The tools here presented can be used in English and some other current languages, though Chinese is not ( yet ) one of them. However, machine translation applications are available to overcome the language barrier. These tools improved over time to an extent to get an understandable machine translated text. The present article does not pretend to present in an exhaustive manner the tools available to professionals. It is rather its intention to draw attention to the existence of tools by presenting a few of them, focusing on the ones of EUIPO.
 
EUIPO maintains a global trade mark database, called TMview, with some 48 mio. trademarks registered in 63 national or regional systems. All 28 Member States of the European Union participate and outside the EU, IP Offices such as USPTO, INPI Brazil, JPO and KIPO have integrated their database in TMview. TMview is free of charge and available 24/7 through internet, in different languages and first hand, daily updated information from the IP Office. It has various search functions to serve the needs of the professionals, for example, the users can print or export trade mark information to PDF and Excel. By using this database the professionals will be able to see which types of marks or which comparable trade marks for which classes have been accepted by the corresponding Offices. In this way it will be possible to get a reasonable level of predictability of the decision of the corresponding Office. Such search may also provide arguments for the applicant encountering objections from the examiner by indicating that similar marks as the objected one are registered.
 
TMview serves further to the professionals to look for confusingly similar trade marks on register which could potentially be a future threat for the trade mark to apply. Such threat could be materialized through an opposition or through an application for invalidation. The latter case could be harmful in particular to the business after having already heavily invested in promoting the trade mark, only to see afterwards that the trade mark is invalidated being confusingly similar to an already existing earlier right.
 
Another utility of TMview comes after the registration of the client’s trade mark. It serves to supervise that the corresponding adhering office does not register an identical or confusingly similar trade mark. If such a trade mark is identified the professional could give the client the possibility to oppose or invalidate this later trade mark.
 
The Chinese trade mark data is not part of the TMview database and has therefore to be consulted separately if necessary. It is however estimated that such integration into TMview could take place during 2019.
 
For designs an equivalent tool, DesignView, is maintained by EUIPO. The Chinese design database is already integrated in DesignView. It is also free of charge, available 24/7 with global character.
 
It includes designs from 63 national or regional systems and a total of over 13 mio. designs registered in all major offices around the world.
 
Besides TMview and DesignView, the EUIPO also maintains another online tool called eSearch plus containing exclusively the EUTM, RCD and the International Registrations (IRs) designating the EU.
 
The search facility in this tool has been extended to images in order to identify figurative marks. The professionals can search for, or monitor, images combined with criteria like the Vienna and Nice Classification. With just clicking on a camera icon in the application and drag and drop an image into the search field users can find similar-looking trademarks. Image search has been implemented also to find similar designs.
 
Global Brand and Global Design databases, both maintained by WIPO, are also available for the professionals free of charge and with global character. However, the Chinese databases with its high amount of IPRs are for the moment not incorporated in any of them.
 
Once having cleared the way for the trade mark or design and identified no earlier right identical or sufficiently similar for opposition or invalidation purposes, the goods and services have to be identified in order to define the scope of protection to request for. As the Nice Classification Agreement has only a limited number of expressions, problems often arise as to the correct class and the correct wording of the goods and services. Also here EUIPO tools, TMclass (66 Offices participate) and DesignClass (28 Offices partipcate), can help the professionals to navigate surely. EUIPO maintains a Harmonized Database (HDB) incorporated in TMclass containing more than 70 000 terms from which users can select the pre-accepted wording of goods and services for which they seek protection with their trade mark applications. Moreover, the HDB contains parts of the five world’s biggest IP Offices (USPTO, JPO, CNIPA, KIPO, EUIPO) pre-accepted list of terms. So using the HDB for International Applications has also its advantages.
 
If the professional needs to review case law, either at the administrative (EUIPO) or at judicial level (European Court of justice) , due to a legal question it can turn again to a free of charge database of EUIPO called “eSearch Case Law”. With key words it will be able to select relevant decisions of EUIPO or judgments to the legal problem in question and advise its client accordingly. Also, the European Court of justice maintains its own database where businesses and professionals can look up case law relevant to the EUTM system.
 
Enforcement is another part of the daily work of practitioners for their clients. In fact, protection without the possibility of enforcing the right would not serve the business. While most countries only detain goods being imported into their country, the General Administration of Customs of China (GACC) has introduced a recordal system which empowers it to detain suspected infringing goods entering or leaving China. The IPR holder can record various types of IPR with GACC, including trademarks registered in China, or international trade mark registrations extending to China, as well as designs, patents and copyrights. However, the bulk of goods detained are on the basis of trademarks, which are the easiest to recognise and recall.
 
Now, copies of successful Chinese brands may also appear on European markets and Chinese businesses may want to know how to enforce their rights against infringement. Enforcement proceedings are not discussed in this article being limited to present tools which are made available for the users. One of such tools is the Enforcement Database (EDB), again maintained by EUIPO and similar to the one of GACC mentioned previously. It contains information on products IPR holders have been granted and keyed in into the system. So, in order to make use of the tool in the benefit of the client action has to be taken in order to introduce the relevant IP data into that tool. Police and customs officials from the 28 Member States can then access to view information and product details, making it easier for them to identify counterfeits and take corresponding action.
 
The EDB helps protect authentic products against counterfeiting by making a register of products available to enforcement authorities in their own language. Any IPR holder can be part of it; it just has to enter information about the products into the database and connect it to their IP rights. Again, this tool is secure, free of charge and multilingual.
 
Also tools for patents are available to Chinese users. In the absence of the Unitary Patent (a single patent for the whole European Union; mature to be adopted but still faced with legal objections) Espacenet is a database made available free of charge by the European Patent Office (EPO). With its worldwide coverage and simple search features, Espacenet offers free access to information about inventions and technical developments from 1836 to today. It is accessible to beginners and experts and is updated daily.
 
It contains data on more than 100 million patent documents from around the world. Supporting information can help the users understand whether a patent has been granted and if it is still in force. Espacenet can be strategically used to search and find patent publications, machine translated patent documents, to track the progress of emerging technologies, to find solutions t o t e c h n i c a l problems and t o s e e what t h e competitors are developing. The databases of all major patent offices around the world, including the Chinese database of CNIPA, are accessible through this tool.
 
The tools here presented were not or not with their present functionalities available ten years ago. The information technology has been used to bring intelligence to the computer of the professionals and enhance the service they are now able to give to their clients. These tools come on top of e-filing, view the status of the application/register on the screen, a quicker processing of the files, online complaints procedures etc. bringing IP protection to the level the information technology is able to provide. It enhances the transparency of the IP landscape and reduces the cost for the IPR holders.
 
Disclaimer: The opinion expressed in this article is exclusively the personal view of the author and binds in no way the employer entities (EUIPO, EU Delegation to China).
 
1 Günther Marten is Minister-Counsellor at the EU embassy in Beijing since Oct. 2016. He is in charge of developing institutional IP co-operation between EU and China and supporting European businesses. He joined EUIPO, Alicante/Spain, the managing agency for the EU trade mark and design system, in 1995 and held various significant positions. Previously he worked in the European Commission in Brussels as legal advisor.

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