TRADEMARKS AND BRAND PROTECTION IN 'EUROPEAN OVERSEAS TERRITORIES'

I have written an E-book with the above title that may be of interest to readers of this blog.

It's not expensive and can be purchased from Amazon here.

OHIM's new website

So OHIM has a new website (but this link might not load!) which launched on Monday.

It has been beset with problems. E-filings have been unavailable or just crashed too regularly to make it workable for many. I've heard that some firms have resorted to fax filings in order to get things filed. I imagine particularly for cases with a priority claim, but note that these filings carry an extra €150 fee. I wonder what OHIM's stance will be on refunding this excess, it's hardly the user's fault if they were unable to access the website due to OHIM server problems?

For small-time users an added problem will have been an inability to e-file will have had the knock-on impact of preventing them entering an on-line payment by credit card.

E-communications have been difficult to download. I have had letters addressed to firms in Germany and the Netherlands appear on my screen. They were not intended for me so I have ignored them but they could have been for unpublished Community Trade Marks and, if so, such communications should not be available to anyone other than the applicant/representative.

There are problems with replying (on-line) to e-communications with the reply button taking you to a search function rather than a reply sending facility. Again, I believe many have resorted to the 20th Century fax.

Questions are obviously being raised as to how vigourously tested the new system was. OHIM has a reputation for speed and efficiency and for embracing and developing new on-line tools. But here they have been left embarrassed.

Hopefully their techies will get the systems up and running as intended soon.

You would have thought they could have thought of holding off on sending some e-communications in the meantime. Thankfully that should be the case for today at least as it's Constitution Day in Spain today and a national holiday. Let's see what Monday brings.

Another separate IP jurisdiction: French Polynesia

This blog likes to explore exciting and exotic places that the writer has, unfortunately, little chance of visiting in person!

This week is no difference as it heads to Tahiti, the main island of French Polynesia.

Some of us may be used to "extending" UK trade mark registrations to the likes of Jersey and other current and former overseas British Crown dependencies and territories. A similar concept is now being applied to French Polynesia and French National trade mark registrations and other National IP rights.

The situation is not straightforward and relates to French Polynesia's unique constitutional status as an "Overseas country of France", and when they attained this status.

3 March 2004 is a key date. National IP applications filed in France before this date (and still in force, naturally) apply to French Polynesia automatically and without any action required.

Those filed between 3 March 2004 and 31 August 2013 can be "extended" to French Polynesia by making an application to the authorities in French Polynesia, namely, the Direction Générale des Affaires Economiques ("DGAE").

This news item from the French INPI in Paris explains the situation - in French, of course. Note that there is a deadline, such applications must be on file by 1 September 2015.

That does seem a long time away, but don't lose sight of it if you have French national registrations from 3 March 2004 on your records.

The "extension" applications are not exactly expensive: 2680 CFP for a trade mark, 900 CFP for designs, as examples. The CFP (Change Franc Pacifique) is pegged to the Euro and these amount to €22.46 and €7.54 respectively.

The official form is in French only (not in any Polynesian language) and it does not seem necessary to appoint a local agent in French Polynesia. In practice, having someone on the ground in French Polynesia may prove helpful but I would not anticipate any problems working with the Office for agents from Europe. A Power of Attorney is required for agents.

Community Trade Marks will continue in force in French Polynesia as will, from 7 March 2013, Registered Community Designs according to INPI's news item if I've understood it correctly. I must admit this is not how I understood it as French Polynesia is not an Outermost Region of the European Union and not part of the EU so the situation could be considered ambiguous.

It also says International treaties on intellectual property continue to apply in French Polynesia so I understand that trade mark registrations and design registrations under the Madrid and Hague systems that designate France will continue in force in French Polynesia.

It's not entirely clear to me what will happen to French applications filed from 1 September 2013 to the end of the year. However, I understand that from 1 January 2014 it is possible to file applications at the INPI and ask for an extension of protection to French Polynesia to obtain parallel corresponding rights. The applicant will then receive simultaneous protection of their IP in France and in French Polynesia. I get the impression it's a box ticking exercise on the French application form. There will be additional official fees due although if they're at a similar level already mentioned they are going to be fairly incremental.

It is expected during the second half of 2014 that it will be possible to make applications directly to the DGAE in French Polynesia. This will be of assistance for Polynesian businesses that only have a need to protect their IP locally and also, for example, for some international brand owners who may market different brands in the Pacific than they do in Europe (although other French possessions in the Pacific, New Caledonia and Wallis and Futuna, would still need to be covered through the French national route in Paris).

What will happen with renewals is unclear. For example, you could have a French national case filed on 10 March 2004 and could therefore extend this to French Polynesia, say, by the end of this month. The French registration will fall due for renewal by the end of March 2014 so perhaps there will be a box tick option to have this renewed to cover French Polynesia too.

The world gets smaller yet here we are with another new and separate IP jurisdiction. As France may grant more autonomy to its overseas possessions, we could see this scenario repeating. Keep an eye out for New Caledonia, in particular, with an independence referendum slated in the next few years.

A look back at 2012

OHIM has recently declared "a year of achievement".

The Cooperation Fund which uses the vast surplus built up by OHIM to improve systems and processes in trade marks across the EU has been well utilised.

TMView has been an extraordinary success. When I first blogged in December 2011, just 14 out of 27 Registers were available on TMView. Now 25 out of 27 are available including the major EU Registers.

Cyprus and Greece are the only countries not on board yet and they may not be joining up any time soon. My Cypriot associate has a more accurate reflection of the local Register on its own database than the local Office does, and Greece's well documented economic woes may mean it considers bringing its Trade Marks Register on board to be a low priority but the Cooperation Fund could help here.

Croatia should join the EU in July 2013. Its Register is already available on-line and I can anticipate that it should not be too much trouble in adding it to TMView's capabilities.

With full clearance searches in the EU costing a small fortune and therefore often being impractical, TMView is a very useful tool in conducting preliminary searches for trade mark proprietors with costs constraints on them. It is also challenging the commercial search companies to become more innovative in their search solutions; if you're going to pay for something then it needs to offer more than what you can get for free elsewhere.

Further international cooperation has been announced by OHIM and WIPO to link TMView with WIPO's Global Brand Database. The latter is very much more "work-in-progress" in that it currently contains only International Registers and those from Canada, Algeria and Morocco. Nevertheless, it is going to be a welcome link. In particular, US trade mark proprietors may like the ability to conduct initial screening for two key markets, Canada and the EU, through the same (free to use) platform.

Moving on to the EuroClass tool, which has also been praised by me in the past. While only one additional country has reached the final goal of harmonisation with OHIM, the EuroClass project now has all EU members on board with the exception of Latvia. WIPO is also on board, as is the USPTO and the Swiss Federal Institute of Intellectual Property. They have now been joined by the Japan Patent Office. Japan can represent a mysterious Far Eastern jurisdiction at times but now we have available to us all acceptable terms to enable us to draft specifications for filing in Japan (either nationally or through the Madrid Protocol).

Croatia is also on board with EuroClass in good time for its accession to the EU in mid-2013.

The IP Translator decision also made a significant impact on specifications in the EU.

OHIM's Seniority Tool is also making progress. Back in May when I first blogged on this project, it seemed to be making a slow start. However, if I go back to one of my examples from then, namely Irish Registration No. 94544 - which was not showing any seniority information at the time - we now see that seniority is reflected in its 'Status' and in a separate 'Seniority' field which links to the relevant Community Trade Mark record.

OHIM are also in a mood to celebrate 10 years of the Registered Community Design during 2013.

There has also been a lot going on down in Geneva this year at WIPO. Early in the year they introduced their 'Highlights' newsletter to better publicise themselves. This launched a number of new online services including Madrid Portfolio Manager. These should continue to improve users dealings with WIPO and to make WIPO more efficient too.

The Madrid Protocol has seen some notable increases in its membership during 2012 with the Philippines,  Colombia and New Zealand all coming on board with Mexico joining them in February. Who will accede to the Madrid Protocol in 2013? Will it see the waiting game with India come to an end? We may see one or more of the large ASEAN economies - Indonesia, Malaysia and/or Thailand - join up.

As for the Hague Union for designs, progress has been slower. Tajikistan and Tunisia became available during 2012. South Korea is expected to join up and the United States is getting closer. These will be significant countries to accede to Hague.

2012 has been a good year in the administration of IP rights, particularly trade marks. It is not just big players like OHIM and WIPO that are showing innovation and improvements. Closer to (my) home and the UK Intellectual Property Office has announced major enhancements to its services. Of course, as a fairly large developed country these should perhaps not be unexpected. However, with OHIM's Cooperation Fund and WIPO's support for systems for IP Offices in the developing world, 2013 could be a year of enhancements worldwide too.

Happy New Year!

Trade Marks and Tax Havens

Having recently returned from a trip to Gibraltar, I thought I'd write a piece on tax havens and intellectual property, specifically trade marks. It'll explore some jurisdictions in western Europe and the Caribbean and won't be an exhaustive tour of all tax havens; the definition of 'tax haven' varies depending on your sources anyway. The term 'tax haven' is often applied negatively these days but my aim is not to label these places - I have visited many of them, visited one regularly on business, and even lived in another and certainly did not regard myself as a tax exile.

Gibraltar

It can be tax efficient to own intellectual property by entities based in such tax havens. It is argued that this deprives Governments of significant income that could aid development, but I won't discuss any ethical issues. I'm also not a tax expert and will not look at the best jurisdiction for tax purposes. Furthermore, I will not advise on how easy it is to incorporate and manage companies in the referred jurisdictions.

I will look at the internal trade mark systems of such tax efficient locations. Given that a home jurisdiction can impact on how protection of trade marks in other countries is obtained there are things to be considered from this perspective, and the work involved in the management of such a trade mark portfolio. Any increases in trade mark costs are likely to be easily offset by the tax savings, but a trade mark owner (specifically those responsible in-house for the trade marks) who is thinking of such an ownership model should consider their additional budget required and resources (e.g. people) required to effectively manage this.

Beginning with Gibraltar, 'the Rock' is rebranding itself as a non-tax haven. Nevertheless, taxes are not as 'invasive' here as they are in other places.

Gibraltar has an ambiguous situation with respect to trade marks. As I have blogged before, OHIM considers Community Trade Marks to cover Gibraltar. This is based on an understanding of Gibraltar's status with the EU under Article 299(4) of the Treaty of Rome. However, there do not appear to have been amendments to Gibraltar's local Trade Marks Act to reflect this. As a Common Law jurisdiction, it should enact local legislation to reflect any European or International arrangements in place and so I believe the enforceability of a CTM in Gibraltar is questionable.

The existing trade marks law provides for the re-registration of United Kingdom National registrations.

Conversely, Gibraltarian companies can own Community Trade Marks and, being a part of the European Union, there is the possibility to file Madrid Protocol applications based on such Community Trade Marks. Perhaps a word of caution - although I admit I do not have personal experience of this situation - I would anticipate some designated countries would issue Provisional Refusals/Office Actions seeking clarification of the applicant's nationality; perhaps this could even come from WIPO. However, I think these could be overcome once and they would not arise again.

This could create a bizarre and unique situation where the home mark you base your Madrid Protocol application on does not actually cover your home jurisdiction.

Remaining on the Iberian Peninsula and the Pyrenean co-principality of Andorra has a trade marks law dating from the 1990s (its first trade mark legislation). Andorra has not joined the Madrid Protocol although it is a quick registration jurisdiction and would have little trouble meeting Madrid Protocol examination deadlines. Despite being sandwiched between France and Spain, neither French or Spanish enjoy official status; Catalan is the official language. Andorra is not part of the European Union and therefore not covered by a Community Trade Mark, although it uses the Euro.

Another mountainous European principality, Liechtenstein, has more registered companies than it does citizens. The local Trade Marks Office works efficiently and Certificates are issued quickly; note that there are no provisions for trade mark oppositions in Liechtenstein. At 400 Swiss francs (around £270/$425/€335) for the initial filing fee it is not the cheapest country around particularly when the population is little over 30,000. If you need to use an agent, quite possible if your Liechtenstein company is just a tax vehicle that employs few people, then expect high agent charges in this extremely wealthy country. However, Liechtenstein is a member of the Madrid System, and its simple domestic trade mark system minimises the risk of "central attack". Liechtenstein is not a member of the European Union although it participates in the European Economic Area.

Neighbouring Switzerland is also famed for its low tax status, most notably the Canton of Zug. Swiss domestic trade mark law is robust and efficient although with many well known and sophisticated businesses and a population attractive to foreign brand owners, its Trade Marks Register is much larger than that of smaller jurisdictions. Switzerland has been at the forefront of international trade marks being an original signatory to the Madrid Agreement effective 15 July 1892. Also dating from 1892 is the 'German-Swiss agreement concerning mutual recognition of patent, design and trade mark protection' that means use of an identical German trade mark, which is registered for the same goods/services in Germany and Switzerland, counts as valid use in Switzerland (and vice-versa) provided the owner has a place of business/legal seat in either country. I am not aware that this agreement would extend to German owned Community Trade Marks, and most will know that the proudly neutral Swiss have not joined the European Union and so CTMs do not provide coverage ordinarily.

Within the EU, the world's only remaining sovereign Grand Duchy, Luxembourg follows Liechtenstein and Switzerland in boasting wealth and low taxes. Covered by a Benelux Trade Mark (covering a market of over 28 million people) or a Community Trade Mark (covering a market of over 500 million) this would be one of the more difficult of tax havens to get a domestic trade mark registered because of larger numbers of existing trade mark registrations. Luxembourg has membership of the Madrid System (in addition to the European Community being a party to the Madrid Protocol).

Maintaining a francophone connection we will move on to the Channel Islands. The French language has official status in Luxembourg and the Channel Islands, albeit most use being in administrative or ceremonial circumstances. The larger of the two Channel Islands, Jersey, is in the midsts of revamping its IP laws. For now, the trade mark law allows for the re-registration of United Kingdom National Registrations (as per Gibraltar) and for the automatic protection of Community Trade Marks. This latter situation is different to Gibraltar as it is due to legislation enacted locally in Jersey. On the contrary, whilst a Jersey company can file for a Community Trade Mark (and it would provide protection to the island), it could not base a Madrid Protocol application based on a Community Trade Mark as it not a part of the European Union.

If it doesn't confuse matters further, International Registrations designating the United Kingdom also have automatic coverage to Jersey but a Jersey company cannot file a Madrid Protocol application based on a United Kingdom National trade mark. It's easy to see why Jersey wants to introduce new IP legislation as currently it is far more straightforward for foreign applicants to protect their trade marks in Jersey than it is for local applicants to protect them at home.

Just to the north, Guernsey has already introduced a far more sophisticated trade mark system, modelled to some extent on how the UK IP Office operates, and it wants to be seen as a very forward thinking and progressive intellectual property hub; it is planning on being the first jurisdiction worldwide to introduce Image Rights registrable protection.

The trade mark system allows for direct applications (although if you have a UK trade mark or CTM in place you can use this to 'support' your Guernsey application and benefit from lower official fees). Guernsey is not a member of the European Union or the Madrid Protocol.

We will remain in the 'Atlantic Archipelago' - the term British Isles, although currently geographically correct, is controversial in Ireland (the British Lions rugby team has been the British and Irish Lions since 2001). Ireland provides similar benefits to Luxembourg in being a member of the European Union and a party to the Madrid Protocol.

Perhaps useful to North American brand owners is that Ireland is an hour closer to them than continental Europe. This might not sound much but consider 09.00 in Los Angeles is 17.00 in Dublin, but 18.00 in Paris, (Gibraltar and Luxembourg). Ireland is also natively English-speaking, although so is Gibraltar and you would be hard pressed to find a business person not fluent in English (or French or German) in multilingual Luxembourg.

Moving to sunnier climes and the Cayman Islands, where there is a need for a UK registration or CTM registration or International Registration designating the UK to form the basis of a local application. Additionally, there is no membership of the Madrid Protocol.

The Bahamas can at least boast an independent trade mark system where registration in the UK or CTM is not a prerequisite. However, a single class system that uses the archaic former British classification is in place. This means you would need to 'translate' specifications of goods into the International Classification when ready to file in most other countries, there is no provision for service marks and the Madrid Protocol is unavailable. It can also take some time to obtain registration; the Registry's indication that this can "take up to 18 months" does not match my experience that has taken around double this timeline at times.

Returning closer to home (well closer to home for me and just a 30 minute flight away) and we have the Isle of Man. The birth place of the late Bee Gees brothers and the resting place of Sir Norman Wisdom, the island also lays claim to having the oldest parliament in the world, The High Court of Tynwald.

The Isle of Man is a self-governing Crown Dependency and the United Kingdom does not normally interfere with its internal legislation. However, when it comes to trade marks, the UK Trade Marks Act 1994 covers the Isle of Man automatically (and there is no separate local registration possible). Under Section 108(2), "references in this Act to the United Kingdom shall be construed as including the Isle of Man", and a Community Trade Mark is also effective although the Isle of Man is not a part of the European Union. Furthermore, the UK Government ratified the Madrid Protocol "with respect to the United Kingdom and the Isle of Man". A Manx company can therefore take advantage of the Madrid Protocol, although as with the EU-Gibraltar nationality entitlement example above, I would not be surprised in receiving the odd Office Action from overly ardent examiners requiring ownership clarification.

As with the examples of Ireland and Luxembourg and, to a lesser extent, Switzerland above, a Manx company (by virtue of its home jurisdiction being effectively the United Kingdom for trade mark purposes) would have to contend with having to deal with more crowded Trade Mark Registers domestically.

Do not overlook a general ownership concern for companies from Gibraltar, Jersey, Guernsey, the Cayman Islands and the Isle of Man. The foreign affairs of all of these are managed by the United Kingdom and the fact they do not have diplomatic recognition themselves can create issues in some foreign countries. Some explanations and proof that Gibraltar, etc. provide reciprocity to nationals of their country may need to be filed with a foreign Trade Marks Office.

Management of trade mark portfolios in tax havens can be complicated at the best of times but when these are your home jurisdictions - and thus impacting on your global trade mark portfolio - you will see there can be some added obstacles to navigate.

I'll conclude with a table summing up various places visited in this blog.

Jurisdiction	Currency	Time Zone	Local registration	Community Trade Mark	Madrid Protocol
Andorra	Euro	CET	Yes	No	No
Bahamas	Bahamian dollar (pegged to US dollar 1:1)	EST	Yes	No	No
Cayman Islands	Cayman Islands dollar (pegged to US dollar 1:1.2)	EST	Yes but must be based on UK National or IR, or CTM Registration	No	No
Gibraltar	Pound sterling (Gibraltar pound also in circulation (same value))	CET	Yes but must be based on UK National Registration	Questionable	Yes (based on a CTM)
Guernsey	Pound sterling (Guernsey pound also in circulation (same value))	GMT	Yes	No	No
Jersey	Pound sterling (Jersey pound also in circulation (same value))	GMT (proposal to switch to CET defeated in 2008 referendum)	Yes but must be based on UK National Registration	Yes	No
Ireland	Euro	GMT	Yes	Yes	Yes (based on national trade mark or CTM)
Isle of Man	Pound sterling (Manx pound also in circulation (same value))	GMT	UK is local	Yes	Yes (based on a UK trade mark)
Liechtenstein	Swiss franc	CET	Yes	No	Yes
Luxembourg	Euro	CET	Benelux is local	Yes	Yes (based on a Benelux trade mark or CTM)
Switzerland	Swiss franc	CET	Yes	No	Yes

Seniority Tool from OHIM

In addition to their TMView and EuroClass projects, OHIM is also heading up a cooperation tool with EU National Offices surrounding seniority.

As a quick briefing to those outside of the EU and not completely familiar with the concept of seniority, this allows earlier registrations in EU member states to be 'packaged' into a Community Trade Mark. The national registrations can then be allowed to lapse and renewal fees can be saved; significant savings can be achieved if there are a number of registrations across EU member states.

Named the 'Seniority Tool' this has an aim of harmonised seniority databases. It is not particularly well publicised so far and only 15 National Offices (out of 25) are participating at this moment in time: Benelux, Bulgaria, the Czech Republic, Estonia, France, Greece, Hungary, Ireland, Lithuania, Portugal, Romania, Slovakia, Slovenia, Sweden and the United Kingdom. The non-participation of Germany, Italy, Poland and Spain is particularly noticeable.

OHIM's literature on the Seniority Tool states:

"Several national offices and other national administrations such as enforcement authorities often treat earlier trade marks as 'expired' or 'cancelled', even when seniority has been claimed under the CTM Regulation for that mark. To better comply with Directive 2008/95/EC, EU national offices need to update their databases to include information regarding seniority. By harmonising the seniority information among national offices, the Seniority Tool will help better achieve this goal effectively."

Seniority has been used apprehensively by practitioners, and while the absence of case law will continue to make many nervous at relying upon it, having seniority information on national databases in addition to the OHIM database should add some confidence to the concept.

According to OHIM, four of the participating National Offices, namely, the Czech Republic, Hungary, Ireland and Portugal have implemented the seniority tool into their Office website so I've checked out examples in the latter two databases to see how this works.

Unfortunately, Irish Registration No. 94544 for HEINEKEN shows as 'Removed' and no seniority information is referred to in the database, not even in the 'Notings' field. Not the most encouraging of starts and we must hope that the use of the word "implemented" by OHIM means "implementation in progress" and not "implementation completed".

For Portuguese Registration No. 148893 VIMTO (which I cannot link to) we do have a status of "REGISTRATION LAPSED - Seniority claimed for CTM" so here we have an example of how the tool is meant to work. I could anticipate there may be a need for some education of authorities here to ensure they look beyond the words "REGISTRATION LAPSED" when checking a registration's status.

In the United Kingdom - yet to implement this tool - where relative grounds examination is not performed, the Office does nevertheless notify owners of national marks should a potentially similar later application be advertised for opposition purposes. Conversely, they do not, as a matter of course, notify owners of earlier Community Trade Marks. It will be interesting to note if they may end up sending out notifications to owners of national registrations which have lapsed but are subject to a claim to seniority. I would anticipate not, but the underlying intention in such scenario is to keep the national registration and the benefits this entails (albeit within a CTM to avoid duplication and excess renewal fees).

OHIM continue to invest in tools that fit their name of being an "Office for Harmonisation" although let's hope this one does not prove to be a white elephant when many could prefer the continued (and rapid) development of TMView and EuroClass.

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.