Pushing the boundaries

As national IP registries are encouraged to become innovation agencies and to offer non-core tools and services, we once again identify those leading the way – and the offices trailing behind

There is little doubt that a significant portion of trademark counsel are being asked to conduct more work with the same, or sometimes fewer, budgetary resources. The non-core tools and services being developed and offered by IP offices – from online filings to dispute mediation – are becoming increasingly important for ensuring that practitioners can work effectively despite fiscal pressures.

It is for this reason that one year ago World Trademark Review launched the first IP Office Innovation Ranking, an ambitious project to identify the leaders in this field. It featured an exhaustive research period, in which we reached out to over 100 counsel in 40 jurisdictions. The final results included some shining examples of offices going above and beyond their core functions – with the EU Intellectual Property Office (EUIPO), French Intellectual Property Office and Singaporean Intellectual Property Office highlighted as pushing the boundaries of what IP agencies can do.

To that end, today and tomorrow we present the second edition of the IP Office Innovation Ranking. To ensure sufficient global coverage and to recognise the growing efforts in smaller jurisdictions, we have expanded the number of trademark offices in this year’s ranking to 50. In order to fully analyse the pioneers in this area, we examined the following three areas in particular detail:

online capabilities;

value-added propositions; and

public outreach efforts.

Once again World Trademark Review has partnered with leading service provider Alt Legal, which assisted in researching the more technical online metrics. In all, we contacted over 100 counsel around the world and invited them to offer their insights on the non-core services provided by their local registries.

While every effort has been made to ensure that the information is up to date and accurate, new services are constantly being introduced to this ever-evolving IP landscape.

The offices for review were selected based on the top 40 offices by total trademark applications by class count in 2016, as listed by the World Intellectual Property Organisation. We asked over 100 trademark practitioners across the globe for information on non-core tools and services offered by their local trademark office, while service provider Alt Legal provided information on the technical metrics of website accessibility and third-party data access. The feedback that we received was then applied to each metric – rated between whether it was fully accomplished, partially/somewhat accomplished or not accomplished at all. The exception was for trademark e-filings and website functionality, which were rated with a subjective figure (between zero and five) based on the experiences of local users (with zero being non-existent, one being poor and five being an excellent experience). The final ranking tallied these figures and added an internal weighting. The image colour coding used in the ranking tables is for editorial purposes and does not represent the exact final ratings for each office. All information is based on respondent feedback.

METHODOLOGY

The offices for review were selected based on the top 40 offices by total trademark applications by class count in 2016, as listed by the World Intellectual Property Organisation. We asked over 100 trademark practitioners across the globe for information on non-core tools and services offered by their local trademark office, while service provider Alt Legal provided information on the technical metrics of website accessibility and third-party data access. The feedback that we received was then applied to each metric – rated between whether it was fully accomplished, partially/somewhat accomplished or not accomplished at all. The exception was for trademark e-filings and website functionality, which were rated with a subjective figure (between zero and five) based on the experiences of local users (with zero being non-existent, one being poor and five being an excellent experience). The final ranking tallied these figures and added an internal weighting. The image colour coding used in the ranking tables is for editorial purposes and does not represent the exact final ratings for each office. All information is based on respondent feedback.

Value-added propositions

In the last 12 months, there have been some considerable steps forward in terms of value-added services being offered by IP agencies. To identify the leaders in this field, we looked at four key areas:

trademark dispute mediation;

brand-based facilitation;

IP legal advice for small and medium-sized enterprises (SMEs); and

liaising with enforcement agencies.

The latter two metrics have seen considerable growth since last year – 70% of the 50 offices that we examined regularly work with enforcement agencies, while 82% offer dedicated support for SMEs.

In fact, some offices have really upped their game with small business assistance in recent months. The Swedish IP Office, for example, met around 5,000 SMEs throughout 2017, according to Tom Kronhöffer, partner at Ramberg Law. This included 600 in-person discussions, while 4,400 users participated in seminars organised by the office. The Chilean registry has focused on free e-learning tools in an effort, according to one respondent, to “enhance and disseminate knowledge on IP matters among entrepreneurs, SMEs, researchers, universities, research centres and members of the judicial system”. A similar model is being undertaken in India, with long-term and short-term training courses being conducted for SMEs focusing on IP issues. Even more positively, the Indian IP Office offers a 50% reduction in fees for medium-sized enterprises and start-ups.

Turning to the metric of dispute mediation, just over one-quarter of the offices at which we studied host any such service. This is a marginal increase on last year’s figure, suggesting that there has been no breakthrough in terms of this becoming a widespread offering. However, in those jurisdictions where it is available, respondents were nearly all positive. A user in Thailand, for instance, describes the local registry’s mediation service as “very effective” and claims that of 155 trademark cases using it to date, there has been a 60% rate of success. For comparison, the UK Intellectual Property Office reports that 70% of its mediation cases settle on the first day, with a similar success rate at the EUIPO’s free mediation service.

Put your money where your mouth is

While mediation may be showing marginal signs of growth, the same cannot be said of the facilitation of trademark-based lending. The IP offices of Singapore and Korea were the first to offer this innovative financial service and remain the only offices to have fully embraced it – meaning both offices are joint top of the value-added propositions ranking (table 1). In fact, beyond trademark-based lending, the South Korea Intellectual Property Office also operates a platform, IP-Market, dedicated to IP transactions and transfers – another example of how it is committed to rights holders exploiting commercial value from their intellectual property.

There is also an interesting example of funding trademark owners at the Italian IP Office (UIBM). According to Luigi Mansani and Maria Luce Piattelli, Hogan Lovells, the UIBM recently introduced two programmes to inject funds in an effort to kickstart enterprises. The first, Marchi 3+, is dedicated to small businesses established in Italy which are interested in expanding their trademark portfolio internationally. The UIBM has a pot of nearly €4 million for the project, which will go to eligible companies to help them develop their brands outside of Italy. The second programme, Marchi Storici, is designed to relaunch historical Italian brands. UIBM has a further €4.5 million on offer to small businesses which own valid Italian trademarks filed before January 1967. Again, the funds will be used to relaunch these brands both locally and internationally – demonstrating a real commercial focus at the UIBM over the last 12 months.

Overall, the research for the first part of this project reveals a renewed effort by offices to launch value-add proportions for users. Registries in Australia, Italy, Thailand, Indonesia and the Philippines have made particularly bold strides, and respondents expressed hope that there will be further efforts in the year to come.

In part two, "Online trailblazers – the IP offices breaking new ground in digital services", we look at the web tools and services offered at registries around the world.

Table 1: Value-added propositions