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Legal Update

Cheaper CTMs for the Credit Crunch Era

6 April 2009
Mayer Brown Legal Update

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 patent and trade mark applications in the UK, (down 12% in 2008).

The UKIPO describes the consultation process as looking 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.

For further information, please contact:

Tel: +44 20 3130 3843

Tel: +44 20 3130 3897

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