Brexit (sorry!) and implications for trade mark records management

Perhaps you're a BoB (Bored of Brexit)? That's understandable as it seems to become more exasperating by the day.

Nonetheless, it will have implications on how trade mark records and data are managed. This might be pretty dull too, but it is important.

How data is managed in IP databases and on Trade Mark Registers is critical to trade mark management whether it is to ensure the proper management and advice of your business/your client's trade marks, or by having reliable information on the rights of third parties.

If Brexit does not ultimately happen - a result that may see IP professionals discovering a skill for cartwheeling - then the status quo will be maintained.

If Brexit does happen, in whatever form (hard/soft/no deal), the UK has indicated that it will continue to recognise EU rights by 'cloning' them into an equivalent UK right.

I previously speculated that this would be automatic. At the time, many thought they'd instead need to be a formal conversion procedure. Let me not be smug (and, alas, I don't know this week's lottery numbers) as I may not be right - the UKIPO's guidance states equivalent UK rights will be created with "minimal administrative burden", but it is anticipated it will be done proactively by the UKIPO.

The UKIPO's guidance states that "any business, organisation or individual that may not want to receive a new comparable UK registered trade mark or design will be able to opt out". However, to me, it seems that it will be easier (and cheaper) to allow a new right to be created so how many will go to the effort of opting out?

"this is a worldwide issue, not specific to UK businesses and attorneys"

So on Brexit day, all existing EU registrations will be cloned into a UK registration with the same details. Check how many EU registrations you have on your records... take a deep breath and realise all (or nearly all presuming many will not opt out) of these will need duplicating into a UK record - and this is a worldwide issue, not specific to UK businesses and attorneys, as it relates to anyone owning EU trade marks.

I expect many databases will have a tool (or develop a tool) to allow this to be done automatically. Nonetheless, it may represent a big increase in the number of records a business is managing. Some businesses pay per record on their IP database so the impact on their overheads is immediate.

It should be mentioned that cloned EU rights are likely to have a letter prefix to their numbers and this may require a more manual update. This currently happens when searching the UK Register whereby UK national rights are prefixed 'UK' and EU rights are prefixed 'EU', and there are different prefixes for those that are designations in International Registrations.

High lapse rate?

Of all the EU marks on the Register, how many of the owners have commercial interests in the UK? Certainly not all and so I think it's fair to anticipate a high lapse rate at renewal time. This could be the first time private practice firms have the opportunity to charge fees on these records. Some private practice firms struggle to make money on the renewals part of their business - the work involved in regular chasing clients for instructions that end up being a "not interested" is typically not money making. A high(er) lapse rate would only make this worse.

Then there are the UK clients that would often file in the UK first and then the EU (and other countries) come later as their plans to penetrate other markets firm up. These clients are going to end up with two UK registrations with a reasonable likelihood that the first (older) one will be maintained and they won't need to renew the second (cloned) one when it comes due for renewal. Nonetheless, there would still be an obligation for a private practice firm (and in-house department) to keep records of the second cloned one.

There's also International Registrations designating the EU. Here the UKIPO will support this to be cloned into an equivalent UK national right. They may alter this stance if WIPO will allow International Registrations designating the EU to have "continuation of effects" to the UK with "minimal administrative burden" (e.g. no fees).

Let's say WIPO will allow continuation of effects but will require payment of a fee. Now a UK business who has an IR designating the EU (with base mark from the UK) could now request a continuation of effects of the EU designation to the UK. This would mean they have triplicate protection in the UK (1 - the original UK national registration, 2 - a cloned national from the EU designation and 3 - a fresh (continuation of effects) designation of the UK in the International Registration). I hope you are following me, but this is not completely far fetched as it would allow a business to let the two national UK registrations lapse, maintaining their rights in the UK and EU (and any other countries designated in the IR) exclusively through the International Registration.

Those involved in data management should be prepared, and this has only explored registered EU marks, not those pending on Brexit day.

Duplicate protection is not always bad. I worked on a portfolio audit once that had old East and West German registrations. Upon German reunification both registrations extended to the whole of Germany. My audit discovered the old West German registration had inadvertently lapsed - the duplicate (East) German registration came to the rescue to ensure protection across Germany. Every cloud...

Brexit and trademarks

The United Kingdom has decided in yesterday's referendum that it will leave the European Union.

Personally, I'm gutted. Having lived and worked on the continent, I regard myself as a Europhile. It may be a great shame that our younger people may not have so many opportunities to live and work in Europe.

There will be an impact on trademarks. What exactly needs to be determined? For now we do not need to worry.

The Prime Minister has indicated that he will stand down and it is his replacement who will submit the Article 50 request to the European Union that begins the formal withdrawal process. Indications are that this will take place in October and the withdrawal process will have a two-year negotiating period once submitted.

I think there's a chance of another General Election in the intervening period. This means we could be looking at between two-two and a half years before EU trademarks will no longer cover the UK.

Furthermore, I understand this negotiating period is extendable if agreed by both parties - a "cooling-off" period in trademark terms, I suppose.

Automatic re-registration?

What will happen to EU trademark (and design) registrations once the UK does leave the EU?

My hunch is that they will automatically continue to cover the UK. My reasons are:

1. There are so many of them that having a formal revalidation process would be a burden on UK IPO resources.
2. EU trademarks are searchable on the UK IPO's systems so it should be a fairly straightforward task to convert/duplicate them to become UK national registrations.
3. As for EU designations in International registrations, it should be possible, working with WIPO, to organise automatic 'Continuation of Effects' to the UK.
4. They would not want to discriminate UK businesses by making them pay to revalidate EU trademarks which they legitimately obtained thinking they had the UK covered.
5. It's certainly arguable that the UK IPO could lose out on a windfall that could be generated by a formal revalidation process, but I would argue that this would be a temporary spike (and the Office would need temporary staff for this) whereas they can bring in extra fees in a more managed way as registrations fall due for renewal and get assigned.

Reverse seniority?

I wonder if there is a need to allow seniority claims to be reversed so where an EU registration has claimed seniority from a UK registration then this UK registration can be reinstated (presuming it has since lapsed).

This may be beneficial in the case of very old prior rights where the corresponding EU registration does not date back as far. This could carry official fees for the UKIPO as I believe they would require examination. Whether such requests can restore the specification of the original UK registration or can only comprise that which is included in the EU registration (where they are different) would be a question to be answered in this eventuality.

From a practical point of view, an automatic revalidation process would negate the need to request "reverse seniority" in the vast majority of cases.

EEA and representatives

We wait to see if the UK's withdrawal from the EU will also be a withdrawal from the European Economic Area. If it remains in the EEA then the impacts on the management of trademarks will be less.

If it decides to leave the EEA then things may change more. Currently, only an Address for Service in the EEA is required for trademark matters before the UK IPO. Leave the EEA and the rules may change so that an Address for Service is in the UK only. In practice this would not be a big deal as the vast majority of Addresses for Service for UK national registrations are in the UK already, as opposed to other EEA countries. (Disclaimer: this is based on my regular scouring of the Trade Marks Journal and Register, and not on a detailed analysis of Addresses for Service.)

However, this could scupper any plans to automatically duplicate the EU Register to the UK as a large number of EU trademarks have IP representatives in other EEA countries. Perhaps these could be left be, with a UK Address for Service only needing to be appointed when there's subsequent dealings with the UK IPO.

UK Professional Representatives

Leave the EEA and the ability of UK Professional Representatives to act before the EUIPO (and other EU Offices) could be impacted. The Institute of Trade Mark Attorneys has indicated that they will "be calling on the UK Government to ensure that UK practitioners remain entitled to represent clients before the European Union Intellectual Property Office."

If UK Professional Representatives can no longer act before the EUIPO then this lucrative strand of work will go elsewhere, firms in Germany, Ireland and the big IP units near Alicante likely destinations in my view.

If they can continue representing though then they will be well placed to continue the UK's strong level of representation before the EUIPO. Such work could also be supplemented by corresponding UK filings too.

However, we may see a change in filing strategy. If the UK is an added country to consider in filing programmes then the attractiveness of an International trademark may increase. The rationale being the more countries to be covered, the more attractive it is to use.

Scotland

In Scotland the people were in favour of remaining in the European Union. This may now lead to another Scottish referendum and further implications to trademarks. I've blogged previously on what could happen in this event.

Gibraltar and Northern Ireland

Gibraltar (overwhelmingly) and Northern Ireland (much more narrowly) also voted to remain in the European Union - the out votes of England, in particular, and Wales tipping the balance towards leave.

Politically I cannot see Northern Ireland looking to go it alone or look to instead form a part of a united Ireland and so will find itself alongside England and Wales (with or without Scotland).

Gibraltar is unlikely to make a bid for independence or accept co-hegemony from Spain (as the Spanish Government was keen to offer early on). Its local trademark system currently allows for the re-registration of UK or EU trademarks, but they may close the door on EU trademarks (which have more doubtful enforceability anyway).

Jersey

The Channel Island of Jersey lies outside of the European Union and its citizens were not entitled to vote in the referendum.

However, their trademark legislation allows for the automatic protection of EU trademarks to the island (i.e. without the need to re-register them locally). Conversely, UK national registrations must go through a formal re-registration process and get a local registration.

They would need to change their local law to stop EU trademarks providing protection to Jersey. I understand discussions in recent years saw them happy with the status quo but the UK's withdrawal from the EU may make them revisit this issue and we could perhaps anticipate an entirely revamped trademark law in Jersey (neighbouring Guernsey has taken its own route and runs a very efficient Registry).

Conclusion

Nothing changes overnight. There is no need to take action just yet. I think by "pro-actively" filing in the UK now then you may end up with duplicate UK registrations in the future. Keep your ears and eyes open as things become clearer.

New EU trademark regulations - some practicalities

23 March 2016 will see some fundamental changes to trademarks in the European Union.

Gone will be Community Trade Marks to be replaced with European Union trade marks.

The Office for Harmonisation in the Internal Market (OHIM) will become the EU Intellectual Property Office (EUIPO).

The new names are clearer but what else may change that trademark owners and representatives should note? Scroll down to the bottom if you don't have time to read all this.

New fee structure

Official fees will change. It's generally good news.

The initial filing fee will be reduced by €50 to €850. However, rather than getting "three classes for the price of one" as with the current fees, the new initial filing fee covers one class only. Trademark cluttering is considered a concern in the EU and this is a step towards discouraging it.

If you need to cover two classes then the additional class fee for the second class is €50 so for such applications there will be no fee differences under the new and old systems.

For the third class upwards, the fee will be €150 per class. It is for these multi-class applications where it will get more expensive.

If you do have a three class or more application to file then you may want to consider filing it before 23 March.

Conversely, if you have a one class application, you could consider holding off filing until 23 March or after. It is not normally recommended to delay filings and the official fee saving is fairly small but could be taken advantage of if you have a priority filing.

Renewal fees will come down significantly with the basic fee dropping from €1350 to €850. The Office will apply the fee due at the time of renewal though to avoid "tactical" timing of renewals. If you've already paid future renewals using the old fees, don't worry, you'll be reimbursed. If you've done these renewals through a third party then you may need to 'nudge' them so money returned to them can make its way to you!

There will be some small fee decreases for the likes of oppositions and revocations in due course too. N.B. Application and renewal fees presume filings are made online.

Misleading invoices

The Office does not send invoices out . However, their name change may see an upsurge in activity from scammers. A cursory check of the UK Company Registers does not show any newly incorporated companies containing "EU Intellectual Property", but such entities may be being set up in other countries.

It is important that trademark owners and representatives remain vigilant.

In terms of payments to the Office, we can anticipate a need to update the beneficiary name details for the Office for when payments are made to them by bank transfer for payment of fees or to top up current accounts.

New website

We can imagine that there will be a new website address - and euipo.europa.eu currently redirects to the current OHIM website at oami.europa.eu.

I imagine a redirection in the other direction will be put in place on or after 23 March, but users may wish to update their favourites accordingly.

Many will recall the problems faced in late 2013 and early 2014 with the Office's revamped website. Let's hope these are not faced again or you may see IP practitioners take to social media in less than jovial moods.

Speaking of which, watch out in case the Office adopts new social media handles.

If the website does go down for whatever reason then TMview should remain available for trademark searches. Be wary though that if there are problems with the Office's website that TMview may not be able to access the EU database and search results may be missing EU applications or registrations.

Old specifications for class headings

The IP TRANSLATOR case changed a previous interpretation at the Office that registrations for class headings covered the entire class and specifications were not to be interpreted literally.

Trademark owners of registrations filed before 22 June 2012 that covered class headings (and therefore thought they were getting entire class protection) can now file Declarations stating the protection they require.

• The deadline is 24 September 2016
• The goods and/or services, other than those clearly covered by the literal meaning of a class heading, must be indicated in a "clear, precise and specific manner"
• Such goods and/or services indicated must have been in the same International Class in force at the time of the application and contained in the alphabetical list for that class

If the deadline is not acted upon then any specifications for class headings will be interpreted literally (the means what it says approach).

EEA representation

Trademark owners and representatives from Iceland, Liechtenstein and Norway, which together with the EU member states make up the European Economic Area, will be able to act directly before the Office.

Applicants from these three nations would have often covered the EU through an International Registration but may now choose to file directly.

International Registrations

A practical disadvantage to designating the EU in an International Registration was the time it took to obtain protection as there is a more long-winded publication process.

This will now be shortened by five months, but if you take into account processing times at the Office of origin and WIPO, it is still quicker to file directly, even more so if your application can fulfil the Fast Track conditions.

At this time, there has been no word of a change in Individual fees for designating the European Union in an International Registration. I imagine it's only a matter of time before they are aligned with the new regular official fees.

There will be further changes in October 2017, but the key changes you may wish to look into now or very shortly are:

1. Update records and database with the new name e.g. change Community Trade Mark to European Union trade mark.
2. Update schedules of charges to show any new official fees and any pre-populated template documents containing the current fees.
3. If you have any three classes or more applications to file then get them on file soon, if possible.
4. For any one class applications, particularly where you have the security of a priority claim, you could hold off filing until after 23 March.
5. Be as alert as ever to misleading invoices.
6. Get ready to update beneficiary name details for making bank transfers to the Office.
7. Bookmark a new website address.
8. Review pre-22 June 2012 registrations for any that contain class headings and begin preparations to clarify the protection.
9. Docket the deadline of 24 September 2016 for such cases.

The Catalan Way (and IP)

Wednesday (11 September 2013) marked an impressive show of support for the independence of Catalonia, currently an autonomous part of Spain, when a human chain, the Catalan Way, spread for 400km/250 miles.

Its inspiration was drawn from the Baltic Way of 1989 which preceded the re-establishment of Estonia, Latvia and Lithuania as independent countries from their occupation by the Soviet Union.

Catalonia is one of the wealthier parts of Spain and the current economic woes of the Eurozone have increased desire for independence. Football has widely been an outlet for Catalan pride with the world famous FC Barcelona, as well as the Catalonia national team (although unrecognised by FIFA or UEFA)

With a population of over 7 million it would be larger than some existing EU member states, and this is just the population of the current autonomous community; it excludes that of the Valencian Community and the Balearic Islands which are also part of the Països Catalans within Spain. (Perhaps of note is that OHIM's home of Alicante is in the Valencian Community although this is a predominantly Spanish-speaking city.)

The Catalan language is also more widely spoken than some other national languages within the EU.

I have previously blogged on Scotland and if she votes for independence in 2014 what the impact could be on trade mark rights. Should the Catalans involved in this recent human chain get their way and Catalonia becomes independent then I would envisage a similar approach.

1. Community Trade Marks would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
2. Spanish National Trade Marks would automatically cover Catalonia or they would require revalidation locally in Catalonia. However, the latter option would penalise local companies who have previously needed to register in Madrid when their trade mark is only really needed on a local basis.
3. International Registrations designating the European Community would automatically cover Catalonia (this presumes Catalonia is automatically accepted as a new member of the EU).
4. International Registrations designating Spain would need to have Continuation of Effects applications filed. There would be some small costs involved to cover WIPO's administration.

Back in 2006 - some time before this recent wave of ever expanding TLDs - the .cat TLD came into play for the Catalan-speaking community. However, it would be likely that a new two-letter ccTLD would be introduced for Catalonia, should it become independent.

As someone that grew up when there was the USSR, Czechoslovakia and Yugoslavia and then saw them disintegrate, I have had an avid interest in new countries.

However, independence - perhaps more so when you're a part of the "EU Club" anyway - might not always be the answer. Denmark and the Netherlands have developed a different approach. Taking Denmark as an example, the Kingdom of Denmark includes Denmark proper, the Faroe Islands and Greenland. It's arguable that this set up gives independence in many respects (e.g. neither the Faroes or Greenland are, through choice, part of the EU, unlike Denmark proper) whilst being able to share some of the infrastructure. In this instance trade mark registrations granted by the Danish Patent and Trademark Office cover the Faroe Islands and Greenland, and there is no provision to register locally in either the Faroe Islands or Greenland.

This is a world that is becoming smaller in many respects and in my field of trade marks the Madrid Protocol is a clear indication of this. Yet we may have to take into account more and more countries as desires for self determination can be realised.

Croatia: Welcome to the EU!

Croatia joined the EU today (1 July 2013). From an intellectual property perspective Croatia will now be covered by Community Trade Marks and Registered Community Designs.

A page on the Irish Patents Office website does a good job of explaining the impact of Croatian accession on existing EU trade mark and design applications and registrations.

It also provides a useful reminder for trade mark owners to be vigilant to avoid the spammers who may take this opportunity to solicit for trade mark "services".

Ahead of accession, Croatia has already aligned its specification terms for trade marks - it being a harmonised Office on TMClass. It has yet to be integrated in the search facility of TMView but as it is possible to conduct on-line trade mark searches through the State Intellectual Property Office website we can anticipate that they will come aboard TMView quite soon. However, it is not yet possible to file on-line Community Trade Mark or Registered Community Design applications in the Croatian language through the OHIM website. I expect OHIM to offer a Croatian filing option soon.

Croatia becomes the 28th member state of the European Union joining:

Austria
Belgium*
Bulgaria
Cyprus
Czech Republic
Denmark
Estonia
Finland
France
Germany
Greece
Hungary
Ireland
Italy
Latvia
Lithuania
Luxembourg*
Malta
Netherlands*
Poland
Portugal
Romania
Slovakia
Slovenia
Spain
Sweden
United Kingdom

* part of Benelux for trade mark and design registration purposes

Got a Registered Community Design, got Europe?

As my 'Got a CTM, got Europe?' blog proved popular and continues to receive regular hits - and following on from my blog on the rising importance of registered designs - it seems worthwhile to write about protecting designs throughout Europe.

As before, I will use the definition provided by Wikipedia for Europe.

We will focus on the applicant being from a member state of the Hague System (Geneva Act) e.g. an applicant from the European Union. This rules out applicants from non-Hague countries such as the United States. However, a US applicant with "a real and effective commercial or industrial establishment" or "habitual residence" in a member state could take advantage of the system. Ownership could also be through a trust company incorporated in, say, the EU and then licensed back. However, there is no provision for the recording of a license at WIPO against a Hague International Registration which could make this less desirable.

Benefits of the Hague system, contrasting to the Madrid Protocol for trade marks, are:

1. There is no need for a base registration.
2. You can designate your own country (e.g. the EU) in an application.

This means a single International application can be made to cover the home country of, say, the European Community plus Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Croatia, Georgia, Iceland, Liechtenstein, Macedonia, Moldova, Monaco, Montenegro, Norway, Serbia, Switzerland, Turkey and Ukraine.

For the sake of argument, if we were to file one design with seven reproductions and no deferment of publication it would cost CHF 1560 (approximately €1300/$1630) in official fees.

The inclusion of the European Community would not provide protection to any further territories within Europe but outside of the European Union with the exception, as far as I understand, of the Isle of Man. My understanding extends further to it not providing protection to Gibraltar, as I have previously blogged.

Nevertheless, the Isle of Man is covered by a registration in the United Kingdom. A registration in the United Kingdom is required to provide automatic protection to Gibraltar. It also provides protection to the Sovereign Base Areas of Akrotiri and Dhekelia (as I cannot see that design legislation was delegated to the Republic of Cyprus government). It is this same law, dating from when Cyprus was a British colony, that still appears to be in force to protect designs in the Turkish Republic of Northern Cyprus ("TRNC"). The TRNC, recognised only by Turkey, has not introduced design legislation of its own.

Obtaining a Registered Design in the United Kingdom, under the same criteria as the International filing above, would cost £60 in official fees (approximately €75/$95).

Such a UK Registered Design would need to be extended to the Channel Islands. Official fees here are £120 in Jersey (approximately €150/$190) and £100 in Guernsey (approximately €125/$155) plus an official fee of £22 (approximately €28/$35) each to the UK Designs Registry for the certified copies required to substantiate the applications locally.

Kosovo introduced a new designs law in 2011 with the assistance of OHIM. With official fees of €40 (approximately $50) it is also inexpensive.

The EU designation will cover Denmark, but a Danish national design registration is required to provide protection to the remote Faroe Islands. Denmark operates a deposit system for designs meaning they are registered quickly and efficiently. The basic fee is DKK 1200 (approximately €165/$205).

This means a significant part of Europe can be covered by six simple applications at a very reasonable cost (official fees of approximately €1911/$2395).

Many businesses will consider protection for Gibraltar, the TRNC and the British bases on Cyprus, the Channel Islands and Faroe Islands as unnecessary. The estimated combined population is little over half a million with over half of this figure made up of the TRNC's population, although this figure is disputed. Omitting filings to cover these territories will see official fees drop to approximately €1340/$1680).

You may have agent charges on top of the official fees and, with the probable exception of a Hague filing, agent fees will be more expensive than those charged by the Design Offices. I can speak for my firm and know we can provide very reasonable costs for coordinating the filings.

Further afield, the only remaining European states to have design legislation are Belarus, Kazakhstan and Russia. In these countries designs are more expensive due to higher official fees, agent charges and more vigorous examinations resulting in increased chances of objections. However, as the rest of the continent can be protected so inexpensively there can be room left in budgets to pursue registration in these three emerging markets that form a Customs Union.

ROSPATENT and OHIM meeting in Alicante

As I coincidentally prepare a presentation on 'Trade Marks in Russia', I was interested to learn of ROSPATENT, the Russian IP Office's visit to OHIM at the end of last week.

Joining the TMView project was discussed. The Russian Trade Marks database is now on-line and they use established codes so hopefully this is something that can be implemented relatively easily. Russia's EU neighbours Finland and Latvia are the latest countries that will come on board TMView soon as reported on their website this Monday.

EuroClass "accession" could be something that requires substantial work and not being privy to discussions between the two Offices, I'll just have to speculate that ROSPATENT were looking at some practical pointers on how to get started/further progress. Compiling a list of acceptable terms for goods and services is a task for the Office concerned and Russia, not being an EU member, is not obliged to follow any kind of European harmonisation. As OHIM does not have Russian as an official language, if ROSPATENT was looking at a "quick" win by replicating OHIM's acceptable terms then this would still involve an enormous translation effort.

Russia's relationship with the EU - or perhaps more accurately, with certain EU states - is very much up-and-down. Political factors may play a part in how fast progress is made in bringing Russia into the family of TMView and EuroClass. Nevertheless, this appears a positive step in the direction of cooperation and OHIM should be commended on their international outreach efforts as should ROSPATENT for wanting to come on board.

Where's the value in Europe Part 2‏

Like a good DJ, I do requests (received from my last blog). I will now explore the value of a trade mark registration based on the size of a country's economy.

Any of these comparisons can, of course, result in "lies, damned lies, and statistics". The parameters of this mini-study have been comparing a country's official fee for filing a trade mark application with its economic clout. The latter is harder to define but I've used a country's gross domestic product at purchasing power parity ("GDP (PPP)"). Some countries are relatively wealthy but with higher costs of living resulting in less purchasing power. To most brand holders, I would suggest PPP is important - whilst most want their brand to be an indispensable part of a consumer's life (e.g. Apple, Coca-Cola), most products are not absolute necessities so when money is tighter, people concentrate on essentials (although, of course, these can also be branded).

The cost of a trade mark application (in one class) divided by $billion GDP (PPP) based on International Monetary Fund data from 2011 would work out as follows for the EU:

European Union   €0.06

Spain   €0.08

United Kingdom   €0.09

France   €0.09

Germany   €0.10

Italy   €0.10

Benelux   €0.21

Poland   €0.36

Sweden   €0.45

Portugal   €0.47

Greece   €0.70

Czech Republic   €0.73

Romania   €0.76

Austria   €1.02

Finland   €1.08

Slovakia   €1.31

Ireland   €1.36

Hungary   €1.42

Denmark   €1.52

Lithuania   €2.28

Bulgaria   €3.23

Slovenia   €4.24

Cyprus   €4.32

Latvia   €5.17

Estonia   €6.88

Malta   €10.68

No surprise that the EU comes out on top, but what could be an interesting statistic is that the original six members (France, Germany (West Germany at the time), Italy and the three Benelux countries) plus the UK and Spain represent over 75% of the GDP (PPP) of the EU. Filing in these six jurisdictions separately costs just over a third more than filing a Community Trade Mark application. For sure, there could be some agent fees on top of these amounts but there is less chance of oppositions and should there be any they could be fought independently with no bearing on the other countries. This is clearly looking at things quite simplistically but it offers food for thought.

I have kept the figures at one class as I think this is relevant to all trade mark owners. The EU's "three classes for the price of one" approach is not a huge benefit to all and, in any case, it does seem there is some desire out there for them to change this as the Register becomes more crowded.

There is value in Europe, although the jurisdiction offering the best value compared to GDP (PPP) is China with a comparable figure of €0.01. The US also offers the same value if TEAS Plus can be used and India's figure sits at €0.02 and so is also cheaper.

Other key jurisdictions are as follows:

Japan   €0.11

Mexico   €0.11

Canada   €0.14

Brazil   €0.23

Russia   €0.28

Australia   €0.42

If we look at some other known expensive countries:

Saudi Arabia €1.62

Belarus €4.33

United Arab Emirates €5.59

Turkmenistan €8.30

Iceland €12.08

Uzbekistan €14.39

Bear a thought for tiny and remote Tuvalu - where its .tv domain name Registry makes a significant contribution to its GDP - where the comparable figure is €6756.76! We file trade mark applications directly with the Tuvaluan Trade Marks Office although, unlike its domain name counterpart, it does not receive too many applications.

Where's the value in Europe?

We know what great value the CTM provides to European Union wide trade mark protection. But where do the other member states sit in comparison?

Clearly, IP Offices have operational costs and it is generally regarded that they should be self-funded by their official fees yet at the same time this unique European situation sees them competing with OHIM. (You could argue that the Secretary of State Trademark Departments are in competition with the USPTO in the United States, but I don't feel this is quite the same comparison.)

I will base a definition of "value" on a country's official fee and its population. The table below represents a one-class trade mark filing and it should not be surprising that the largest countries provide the best value with the eight most populated EU countries immediately following OHIM. Both Spain and Italy present excellent value in covering their national jurisdictions although value is relative when it comes to Italy given the length of time (a few years) it takes for an application to mature to registration.

Country	Official Fee (€)	Population	Price per million of population (€)
European Union	900	502672151	1.79
Spain	118	47150819	2.50
Italy	173.72	60397353	2.88
France	200	64709480	3.09
United Kingdom	205	62353795	3.29
Germany	300	81757595	3.67
Poland	279	38163895	7.31
Benelux	240	27906526	8.60
Romania	200	21466174	9.32
Portugal	116.61	10636979	10.96
Sweden	170	9347899	18.19
Czech Republic	200	10512397	19.03
Greece	216	11125179	19.42
Hungary	278	10013628	27.76
Slovakia	166	5424057	30.60
Finland	215	5350475	40.18
Lithuania	140	3329227	42.05
Austria	359	8372930	42.88
Bulgaria	328	7576751	43.29
Ireland	247	4467854	55.28
Denmark	317	5547088	57.15
Cyprus ᵅ	102.52	801851	127.85
Latvia	179	2248961	79.59
Slovenia	250	2054119	121.71
Estonia	185.33	1340274	138.28
Malta	116.47	416333	279.75

ᵅ excludes northern part of Cyprus

When it comes to applications in three classes, the picture changes a little. We make this comparison as some EU National Offices, like the OHIM, have a basic official fee including up to three classes.

Country	Official Fee (€)	Population	Price per million of population (€)
European Union	900	502672151	1.79
France	200	64709480	3.09
Germany	300	81757595	3.67
Italy	241.72	60397353	4.00
United Kingdom	325	62353795	5.21
Spain	270	47150819	5.73
Benelux	240	27906526	8.60
Poland	509	38163895	13.34
Romania	300	21466174	13.98
Portugal	177.45	10636979	16.68
Czech Republic	200	10512397	19.03
Greece	276	11125179	24.81
Hungary	278	10013628	27.76
Slovakia	166	5424057	30.60
Sweden	329	9347899	35.20
Finland	215	5350475	40.18
Austria	359	8372930	42.88
Bulgaria	328	7576751	43.29
Denmark	317	5547088	57.15
Lithuania	210	3329227	63.08
Ireland	417	4467854	93.33
Latvia	237	2248961	105.38
Slovenia	250	2054119	121.71
Estonia	274.79	1340274	205.03
Cyprus ᵅ	307.56	801851	383.56
Malta	349.41	416333	839.27

ᵅ excludes northern part of Cyprus

You may note that not all EU countries use the Euro so there has been some exchange rate conversions for some official fees. Please forgive any errors in my maths too! Some of the data sources I have used may contain inaccuracies.

The tables do not take into account professional fees which can vary although Europe is becoming fairly aligned. Please don't misconstrue this comment as there can, of course, be some large differences between firms but, generally speaking, they are not as wide as they could be considering this is a block of over 500 million people.

Austria, Denmark and Ireland are standouts for me in terms of being expensive especially with most agents being based in the respective capitals. As beautiful as Vienna, Copenhagen and Dublin are, none are particularly cheap and overheads can be high.

The same can be said for Paris and London, but France and the UK arguably offer some of the best value (outside of OHIM) because of the fair number of direct applicants. I cannot comment for the French INPI so much but the UK IPO is very geared towards assisting "Do-It-Yourself" applicants. Also whilst Paris and London are home to the majority of French and British IP firms, provincial firms are not insubstantial in number.

Foreign trade mark owners will continue to gravitate towards the Community Trade Mark but national routes will continue to offer a less expensive alternative for local applicants who maintain national client bases and who are yet to be able to exploit the Common Market.

However, as the CTM Register, in particular, becomes cluttered some trade mark owners may look to register in key national markets separately where opposition rates are far lower and whilst searching the EU is expensive and time-consuming. I am almost certain not every CTM owner has a comprehensive watch in place for all Trade Mark Registers in the EU.