We are all aware of the requirements to grant protection to an EU Trademark: (i) it must be distinctive and not descriptive; (ii) it must be registered. From 1 October 2017, the requirement of graphical representation has been abolished when filling an application for an EU Trademark.
Among the areas where the blockchain protocol may be applied, IP Law certainly plays an important role.
For instance, blockchain may inspire images and logos registrations. It is worth mentioning that already a few enterprises are envisaging the usage of blockchain technology for collecting contemporary art and, broadly speaking, creative operas.
This is the case of projects like Tutelio (http://www.tutelio.it/), a platform which will soon be launched and that allows artists and creators to protect their operas with the help of blockchain.
Moving on to trademarks, there are reasonably a few questions arising from the recent expansion of a such a disruptive technology. The first and legitimate skepticism concerns the issue of whether or not it will be possible to register a Trademark using Blockchain. We must admit that such concerns may allegedly become more than appropriate, if we think of the fact that the thriving market of Trademarks is controlled by one Government agency throughout the European Union (EUIPO).
This is certainly not a dilemma that can be sorted smoothly. The thought that the Blockchain technology might swoop into the Trademark registration flow is something that, although at first glance may appear premature, it is already actually happening, for instance, in the US.
In the United States, for instance, the online platform Cognate (https://cognate.com/) is in fact using blockchain to file trademarks in the US territory.
That platform grants registration to the so called “chain marks” (or CMs) in a faster and less expensive way. It takes one day and about $40 while before government agencies such as USTPO or EUIPO it can take up to 12 months and the registration fees are dramatically higher.
Notwithstanding the above, it still remains unclear whether or not chain marks are to be considered enforceable in Courts, just like trademarks. On that regard, EUIPO seemed to be open to this opportunity. According to Mark Kaufman, co-chair of Blockchain IP Council, “the EUIPO is looking very seriously and actively at using blockchain to records and enforce IP Rights”. [1]
If such a possibility will be granted, we will assist to a serious revolution in the Trademarks registration and litigation’s workflow. Chain marks will be recognized as a new standard of registration and will offer the same level of protection as traditional marks or unregistered marks, whose protection is weaker, but still enforceable. A chain mark or similar will then be useful in litigation, if only to prove first use. [2] The US IP system seems already to be moving in this way.
On the other hand, it might be worth suggesting that this scenario may lead to confusion and conflicts between two different types of registration, both enforceable in the first place and subjects to same protection. To avoid this drawback, the best case would drive to an integration of the two systems. The blockchain will, therefore, have to take the burden to integrate each countries’ trademark database. According to Mark Kaufman “it is a cultural change that would require changes in Laws”.
[1] How Blockchain will change Intellectual Property – Trademarks and Brands, 27 February 2018, Ellie Mertens, New York, Managing Intellectual Property, www.managingip.com.
[2] How Blockchain will change Intellectual Property – Trademarks and Brands, 27 February 2018, Ellie Mertens, New York, Managing Intellectual Property, www.managingip.com.
