Cheaper Community Trade Marks for the Credit Crunch Era

Author:Ms Mary Bagnall
Profession:Mayer Brown
 
FREE EXCERPT

Originally published 6 April 2009

Keywords: community trade marks, credit crunch,

OHIM, Office for Harmonization in the Internal Market, community

trade mark, CTM, fee reductions, UKIPO

On 1 May 2009 Official fees for obtaining Community trade mark

(CTM) registrations will be significantly reduced in the light of a

substantial cash surplus built up by OHIM, (the Office for

Harmonization in the Internal Market, the not for profit

organisation responsible for CTMs).

The total official fees for obtaining a CTM will be reduced from

1600 Euros for an electronically filed application in up to three

classes of goods or services to just 900 Euros (and 1,050 Euros for

paper filed applications).

Rather than dividing official fees between application and

registration, all the official fees will be paid at the outset on

application (as is the case with UK national trade mark

applications, for example). A separate registration fee which

included a fee of 150 Euros per additional class over three has

effectively been abolished, which is particularly good news for the

proprietors of trade marks with a specification covering numerous

classes.

There will also be fee reductions for CTMs filed via the Madrid

Protocol, from 1450 Euros to 870 Euros.

Transitional Provisions

Under the transitional provisions governing the new fee

structure, if a pending CTM application has not yet passed to the

registration stage (where the OHIM issues an invitation to pay the

registration fee), by 1 May 2009 no registration fee will now be

payable, resulting in a total official fee of 750 Euros for an

electronically filed application or 900 Euros for a paper filed

application.

Thus if a new CTM application is filed before 1 May 2009 it will

be cheaper than when the new fee structure comes into effect on 1

May 2009. As a result, if you are considering applying for a

CTM, submitting the application to OHIM before the new fees come

into effect will save at least €150 and €500 in

the case of collective marks.

For Madrid Protocol designations, the new fees take effect 3

months after the Commission notifies WIPO, i.e. 3 months after 1

May 2009.

In removing an additional payment from the registration process

it is hoped that the overall time from filing to registration will

be reduced by at least eight to ten weeks, although this may be

over optimistic.

UKIPO Fee Review

Not to be outdone, the UKIPO announced last month a review of

its fees prompted by a decrease in demand for...

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