Does Europe lack brands? Professor Beebe talks about the impoverishment of the EU brand

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“Over 77% of the top 20,000 English words match identically to an EU trademark registration, and the few remaining words have negative connotations. This rises to 91% when translational similarities are taken into account. into account.

Is the European trademark system a victim of its own success? That was the question posed by Professor Barton Beebe of the NYU School of Law during the annual Sir Hugh Laddie Lecture at UCL-IBIL on November 9.

Beebe argued that “trademark exhaustion is the most significant challenge the trademark system will face in this century” and that, contrary to conventional wisdom, the supply of words for trademarks is not not inexhaustible.

Together with Professor Jeanne C. Fromer of the NYU School of Law, he has previously conducted research on USPTO data, which showed “high levels of trademark exhaustion”. For example, about 75% of English words in everyday use already correspond identically to a registered trademark in the United States, as well as 55% of common surnames. In other words, he said, “All the best words are already claimed.”

The EU trade mark system

Beebe and Fromer have now turned their attention to the EU, which he described as a “microcosm” of the global trademark system, due to the 24 official languages ​​and the integration of national markets into the EU. He concludes that the situation is even worse in the EU than in the United States

Based on the analysis of almost 2 million trademark applications in the dataset published by the European Union Intellectual Property Office (EUIPO), Beebe said that more than 77% of the 20 000 most common English words correspond identically to an EU Trademark Registration (EUTM) – and the few remaining words have negative connotations (such as ‘difficult’, ‘kill’, ‘least’, ‘poor “, “sorry” and “the worst”). This proportion increases to 91% when translational similarities are taken into account.

The position is particularly bad in some classes, such as class 25, where more than 80% of common words already have identical matches, rising to 94% once close similarities are included. The result, he said, is that it becomes increasingly difficult to come up with new brand names and applicants resort to longer, less punchy brands and those made up of multiple words.

The pattern is similar when languages ​​other than English, especially Romance languages ​​such as French, Italian and Spanish, are studied. And it is particularly pronounced with words common to several languages: 54 of these 55 universal words are already taken in the EU (with the exception of “republican”). As a result, an increasing proportion of single-word marks are made up of coined terms.

Clutter of brands

This results in greater “brand hoarding”, with many similar brands for the same or similar products owned by unaffiliated entities. This trend is supported by data on opposition rates and the number of opponents to the EUIPO.

Is clutter a problem? The results show, Beebe said, that “the granting of trademark rights entails real costs for the public domain” and that “the supply is no longer sufficient to meet all the demand”. He speculated that we are now in “a state of peak branding”.

Although there are no easy answers to the problem, he suggested several options that could be explored to address it. These include the introduction ex officio application review (which the EU system currently does not have), dropping the notion of translational similarity, requiring tighter specifications, stricter use with a requirement of intent to use (which currently does not exist in the EU) or improving usage enforcement or charging higher rent for shorter or more common words.

None of these solutions are straightforward, Beebe said, but the data suggests something needs to be done: “Burnout and clutter may prove to be among the most intractable problems facing the global trademark system. might face in this century.”

The conference can be viewed on YouTube. Details of previous Sir Hugh Laddie Annual Lectures can be found on the UCL website.

Image by James Nurton

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