3 reasons why trademark prosecution is changing

11 Jun 2021

Although the legal market is often described as one of the most conservative, this market is undergoing rapid changes. With legal tech being a potential disruptor of the legal market, trademark prosecution is currently faced with considerable changes as well. Here are three reasons why trademark prosecution is changing as we speak.

1. Trademark registration is easy

In the old days, it took quite some time, patience and expertise to register a trademark. Filing an application required filling in paper forms and corresponding with bureaucratic trademark authorities. No wonder people turned to specialist trademark attorneys for assistance.

However, things have changed. Filing a trademark is quite easy nowadays. Trademark authorities are more and more aiming to inform trademark owners, providing informative website and online application forms. This created an increase of companies and individuals filing trademarks without representation. In the Benelux, almost 41% of all trademarks were filed without representation. Before the EUIPO, the number of DIY filers increased with 35% from 2010-2017.

2. Availability searching becomes more easy

When it comes to availability searches, DIY trademark holders can get around rather easy as well. Easy-to-use trademark registries, often organized by national trademark authorities, such as TMView, enable DIY users to perform basic availability checks themselves, for free. Albeit not for free, providers of more sophisticated clearance search systems are now also aiming for trademark holders as a client, rather than for trademark firms alone.

3. The Madrid system is growing

If filing a trademark in your home country used to be difficult, then filing a trademark abroad was almost impossible without legal assistance and a considerable budget. However, with the growing number of member states with the international trademark system of WIPO (currently 122 countries), it is rather easy and cheap to file a trademark internationally. More than 64.000 trademarks were filed through the Madrid system in 2019 alone. That is a 60% increase compared to 2010. The Madrid system provides trademark holder an excellent way to register their trademark abroad, in a cheap and efficient manner.

Although the above three developments may encourage trademark holders to handle their trademark portfolio alone, they can still encounter hurdles along the way, whether with a domestic or international registration, or even when conduct an availability search. Moreover, enforcing trademarks often require specialists on the ground. For this, trademark holders will want to maintain their control, by selecting firms that suit them. Show that you are that specialist. Join TMPassport.