The European Union Intellectual Property Office recently launched the “Early Screening Tool,” which leverages AI capabilities to bring a paradigm shift to how companies deal with trademark registration. This new system introduces automatic reviews before filing for trademarks to determine any conflicts or concerns for prospective holders before actual filing takes place. This new development is one of several initiatives put forth by EUIPO’s five-year digital transfiguration strategy for increased accessibility to trademark screening resources.
AI-powered screening identifies conflicts and descriptiveness issues
The Early Screening Tool uses sophisticated AI software to assess new trademarks against registered trademarks and give immediate warnings for any likely infringement before actual filing takes place. The program points out infringement of prior rights by searching for any overlap or similarity among prior trademarks of the European Union, domestic trademarks within the EU, domain names, and company names to ascertain any possible infringement for rejection of rejection.
Notably, this tool also deals with concerns of descriptiveness and non-distinctiveness, though this functionality is still at the beta stage. The AI system compares products and services term by term and is expected to point out terms that are identical, similar, or dissimilar to any terms already registered as marks. It is anticipated that this comparison functionality is still required to improve its accuracy further before being widely adopted.
Key screening functions include:
- Multiple database prior rights conflict detection
- Identification of descriptiveness and non-distinctiveness
- Comparative analysis of goods and services on a term-by-term basis
- Historical opposition and cancellation information for existing trademarks
- Risk assessment before applying is automated
Strategic implementation requires careful consideration of confidentiality
In spite of this, while being very helpful for clearance analysis for trademarks, care should be taken for confidential/strategic trademarks because of ambiguous policies on data management. Unlike commercial searching tools like Saegis, evidence searched trademarks are not publishable or accessible to third parties, but at the same time, no guarantee is provided that they are treated confidentially, anonymized, or automatically deleted from EUIPO databases.
The utility is most effective as a secondary verification step in clearance searches, occasionally offering additional information not uncovered by standard searching techniques. Attorneys have advised its use for routine searching but not for significant trademark filings until best practices for confidentiality policies have been developed and implemented. This approach balances their clients’ concerns for protection while harnessing effective use of the utility’s capabilities.
From testing, it is also apparent that the comparison functionality offered by the tool is not effective for making reliable determinations or observations, especially regarding similarity determinations for goods and services classification categories. This also tends to result in incomplete comparison processes of the software being tested. Expectations are being created regarding further enhancements to this new tool as it develops beyond its beta stage.
Digital transformation supports EUIPO’s modernization strategy
The launch of the Early Screening Tool is also in line with EUIPO’s five-year strategy to improve its overall intellectual property services through digital innovation and artificial intelligence integration. This new project indicates the office’s efforts to make its trademark registration system more user-friendly for all-sized enterprises within the European Union to minimize or overcome rejection rates and associated fees associated with filing trademarks.
EUIPO’s new AI-driven “Early Screening Tool” is a major step forward for trademark pre-filing analysis and provides helpful conflict detection functionality, but also raises serious questions relating to confidentiality requirements. While its present state is not entirely reliable at present, it is helpful to use it as additional information within trademark clearance analysis. One hopes to see future improvements to this technology being developed as part of EUIPO’s digital strategy to create new functionality to take full advantage of this new tool for trademark filing.
