In September 2008 the Office for Harmonisation for the Internal Market (OHIM) proposed a reduction in fees for European Community trade mark applications. Last month the Fees Committee chaired by the European Commission approved this package of fee changes producing a 40% reduction in the cost of a Community trade mark.
Under the current European system for registration of a Community trade mark there are two fees to be paid: i) the application fee of 900 euros (750 euros for an electronically filed application); and ii) the registration fee of 850 euros. The registration fee requires to be paid only if the result of the examination by OHIM is positive and there is no valid opposition to registration of the trade mark.
Under the new package of fee charges, the registration fee is to be abolished and there will be a small offsetting increase in the application fee: 1050 euros for a paper or fax application and 900 euros for an electronically filed application. The draft Regulation implementing these changes now needs to be prepared for adoption by the European Commission, following which it will be published in the Official Journal. These fee reductions will take effect the day after publication in the Official Journal, which is expected to be within a matter of weeks.
The UK has been very supportive of OHIM's move to reduce fees for Community trade marks and has followed suit with an announcement from the UK Intellectual Property Office (UKIPO) of a public consultation into its trade mark fees and procedures. The proposals, which include a reduction in application fees for e-filed applications, are designed to encourage and to help new and existing users of intellectual property to register UK trade marks by introducing procedural changes and making the payment terms more flexible and affordable. The proposals from the UKIPO have particular focus on helping businesses to continue to protect their intellectual property despite the current economic downturn. David Lammy, Minister of State for Intellectual Property, said:
"In the current economic climate, there is a risk that businesses will not protect their intellectual property, which will harm both those businesses and UK competitiveness in the longer term…The consultation looks at measures which will help businesses to continue to register intellectual property rights in a downturn and continue to meet the needs of all customers."
One of the most significant proposals in the UKIPO consultation is its proposal of an early assist application service to allow applicants to obtain an early indication of the prospects of a trade mark application without having to commit to paying the full application fee. This service would provide for 50% of the standard application fee for filing e-filed trade mark applications to be paid at the time of filing. Once the application has been examined for registrability and an examination report issued, the applicant would have a choice as to whether to proceed to publication or to let the application lapse. If the applicant decides not to proceed with the application, it will have paid only half the current official fees. This procedural change reflects the current European trade mark application system.
The UKIPO has also proposed a reduction of £30 for e-filed trade mark applications from the standard cost of £200 where all the application fees are paid at the time of filing and a reduction of the fee payable to oppose the registration of a new mark.