Changes to the UK Trade Mark rules and revised OHIM fees

August 2009

Changes to the UK Trade Mark rules and revised OHIM fees set to open up trade mark registrations to increased numbers

In this edition of Hill Dickinson’s IP insight, we consider the changes to the Trade Mark Rules which the UK Intellectual Property Office will bring into effect this October and changes to Community Trade Mark Fees.

Change ahead
The Trade Marks Directorate of the UK Intellectual Property Office (IPO) are introducing a number of changes effective from 1 October 2009 that will apply for new trade mark applications filed on or after that date. The purpose of these changes is, amongst other things, to further promote the IPO’s registration services to small businesses that may have previously been put off from registering trademarks because of the perceived costs associated with such registrations.

Set out below is an outline of the main changes:

E-Filing of trade mark application: e-filing discount
Currently, whether you file your trade mark application on-line via the e-filing application or use the traditional method of a postal application it costs the same to apply to register a trade mark. £200.00 for the first class and £50.00 for each class in the same application.

From 1 October 2009, applications filed online via the e-filing application will qualify for a discount of £30.00 of the total cost of the application. This discount also applies to applications filed under the fast track service.

Applications filed via traditional methods (by post or fax) on or after 1 October 2009, charges will remain at the current fee levels.

The discounts only apply to e-filing since the application fees must be paid upon filing of the application.

Right Start application service
Right Start is a new service offered by the UK Intellectual Property Office which can be used as an alternative to filing a standard trade mark application.

With a Right Start trade mark application you only have to initially pay £100.00 application fee (for one class) and £25.00 for each extra class. This represents half the standard application fees. A Right Start application must be filed via the e-filing route and application fees paid at the time of filing.

For this the UK Intellectual Property Office will examine the application to assess whether the application meets the requirements for registration and as such is registrable and advising of any confusingly similar marks which may already be on the Register. A report on their findings will be issued in around 10 working days from application. Upon receipt of the report you can then decide whether you wish to carry on with the application and at this point you will be required to pay the balance of the application fees if you decided to carry on with the application. If a decision is taken after receiving the examiner’s report that you no longer wish to pursue the application then no further charges will be incurred.

Applications for series marks
Under UK Trade Mark Law a trade mark application can be filed for a series of marks. This is an application for a number of marks which are essentially the same but where any differences are not significant. For example, a word mark shown in CAPITALS, italics and in normal lower case lettering. At the moment there is no extra charge for filing a series application nor is the number of marks contained in a series limited.

For applications filed on or after 1 October 2009 the following changes will apply:

• An upper limit of 6 marks per series will be introduced
• There will be no additional cost for the 1st and 2nd marks in a series but for marks 4, 5 and 6 an additional fee of £50.00 per mark will be charged

Currently if a series application is objected to on the basis that the marks do not form a series, then the applicant has the option to either delete marks from the series or divide the application and carry on with separate, single mark applications. After 1 October 2009 division of applications on the basis of marks in the series will no longer be allowed. So if upon examination the examiner decides that the marks do not form a valid series then the offending marks will have to be deleted to allow the application to continue. It should be noted that refunds of series fees will not be paid under these circumstances.

The benefits
The changes outlined above have been proposed by the IPO so as to move towards greater efficiency whilst reducing the cost of registering a trade mark. The IPO sees these changes as important so as to encourage small business in particular to use its registration services. The Right Start Scheme is especially geared to this and provides small business owners with a cheaper route to registration at the initial stages. These changes also come hot on the heels of the restructured fees for Community Trade Marks announced by OHIM in May 2009.

OHIM reductions
With effect from 1 May 2009 the Office for Harmonization in the Internal Market (“OHIM”) abolished the need for payment of a registration fee and also adjusted certain other official fees.

Before 1 May 2009 once a Community Trade Mark was due for registration a fee of €850 was payable for an application in three classes of goods and/or services with an extra fee of €150 per class of goods and/or services.

Now proprietors of Community trade mark applications filed on or after 1 May 2009 will no longer be required to pay a registration fee. Any applications that were filed before 1 May 2009 but reach registration after that date will also benefit from the abolition of this fee.

Changes to the application fees were also made and came into effect on 1 May 2009 and these are set out below.

There has been a slight increase in application fees but this is to take into account the abolition of the registration fee.

The benefits passed on
With both the changes by the UKIPO and OHIM to registration procedures/costs there is what seems to be an understanding that both the costs and procedure to register a trade mark should be made easier so as to open up the process to smaller businesses and entities Europe wide.

These developments should be seen a benefit to those who have previously been dissuaded from seeking registrations on the basis of costs alone and as a result of the abolition of the registration fee, we have reduced our charges for filing a Community trade mark application, inclusive of official fees, in 3 classes of goods/services to £1800.00 plus VAT from £3300.00 VAT.