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.

Kuwait to increase trademark fees significantly

It has been reported through various sources that in December 2015, the fees for trademarks in Kuwait will increase significantly.

I understand this will include filing, publication and registration fees. Furthermore, I believe that applications already on file will be subject to the new publication and registration fees (if they're not becoming due imminently). This is not something that would have been anticipated when originally filing applications and applicants are going to need to budget for some substantial additional fees.

Can anything be done to alleviate these fee increases? Yes, applications can be filed now and will be subject to the existing application fees. A legalised Power of Attorney is required for Kuwaiti applications but this can be late filed so it seems advisable not to delay if you want to take advantage of the current application fees.

However, examination does not happen that quickly in Kuwait so you are going to need to budget for the increased publication and registration fees.

Looking ahead

Kuwait is a member of the Cooperation Council for the Arab States of the Gulf, usually known as the Gulf Cooperation Council (GCC). The other members are Bahrain, Oman, Qatar, Saudi Arabia and the United Arab Emirates.

As the states look to implement a unifying trademark law (not a unitary law) this fee increase may be a reflection of this. The official fees of Saudi Arabia and the United Arab Emirates are some of the most expensive in the world. Kuwait's fee increase could be seen as a way of them putting their fee structure in line with the two members that receive the most trademark applications.

Therefore, could we see fee increases in Bahrain, Oman and Qatar too? I feel it is fair to anticipate doing so. It could be sensible to consider filing in these countries sooner rather than later if they're likely to be of commercial interest in the future. Bahrain and Oman are members of the Madrid Protocol and can be designated in International applications. If there are fee increases locally, expect them also to elect to increase the Individual fees payable to them under the Madrid Protocol.

Hong Kong: expected official fee changes

Hong Kong is expected to make changes to their official fees from 30 March 2015.

Trademark filing fees will go up, whereby renewal fees will go down. Renewal fees for design registrations will also decrease.

What to do?

If you have any new trademark filings, you are advised to get them instructed as soon as possible so you can avail yourselves of the current (lower) official fee.

If you have any trademarks or designs falling due for renewal imminently but from 31 March 2015 onwards, these can be renewed after 30 March to ensure a lower official fee is paid.

For any renewals due from 31 March onwards entrusted to us, we will make conscious efforts to pay the new lower fees. Of course, it might be that the introduction of the fee changes is delayed.

WIPO - Official fees

WIPO have recently issued Information Notice No. 29/2013 explaining how to pay official fees to them for registrations under the Madrid Protocol.

Those of you that deal with WIPO will know they can be a bit of bureaucratic organisation and the language of their Information Notice may be testament to this.

If you do not have a deposit account with WIPO - and many firms don't - then you will probably be required to transfer payment of official fees by bank transfer and this is why the Information Notice has issued. WIPO are regularly being short changed as users do not instruct their bank that they are to incur all the bank charges. This causes a headache and delay with WIPO and the user when it is necessary to request a second payment, which is usually fairly incremental.

If you have a deposit account with the UK Intellectual Property Office and you are filing a Madrid application through them as Office of origin then you can ask them to make the official fee payment (in Swiss francs) on your behalf and debit your deposit account. However, not many Offices of origin offer this service.

If you're based in Switzerland or Liechtenstein (or even in the Italian exclave of Campione d'Italia) then making payments in Swiss francs is not difficult. But most of us will not have a Swiss bank account.

Payment by credit card is not available at the time of filing Madrid Protocol applications because these are filed through an appropriate Office of origin and not WIPO directly. Nevertheless, I understand it is possible to wait for an Irregularity Notice to issue and then make payment by credit card through WIPO's E-payment tool. This is not exactly ideal as again it results in a delay.

WIPO also released their latest magazine 'Madrid Highlights' this week and this contained two fees related features.

Firstly, they will soon be launching a new on-line tool for filing Subsequent Designations with a credit card payment facility. This will not help with the initial filing of a Madrid application but I anticipate it making adding countries to an existing International Registration substantially easier - and hopefully quicker.

Their Madrid Tips section also explains some scenarios regarding the official fees payable for renewals. These can seem ridiculously complicated at times although if you can use WIPO's E-Renewal tool this should auto-calculate the correct fees for you.

Libyan Trade Marks Office resumes operations

It has recently been announced that the Libyan Trade Marks Office has resumed its activities and will recommence receiving the filing of trade mark applications.

This follow the time of unrest following the 2011 Libyan Civil War and the overthrow of Colonel Gaddafi.

Perhaps reflecting its status as a pariah state over the last decades, Libya has been a special case with respect to trade marks for many years.

In the late 1970s the Office basically ceased to operate. However, in this time it was possible to file applications - and the Office quite happily took the fees - but applications then sat in a perpetual state of limbo. The Office was also quite happy to receive renewal fees 10 years down the line.

This changed in the early 2000s when Libya unilaterally cancelled any old registrations and pending applications and required trade mark owners to file fresh applications.

I worked for a Swiss company in 2008 when Switzerland and Libya had a diplomatic row following the arrest of one of Colonel Gaddafi's son in Geneva. This led to repercussions for Swiss companies with business interests in Libya and, with respect to trade mark owners, the issuing of an edict prohibiting Swiss applicants for making applications for trade marks.

The resumption of activities has also seen the restrictions on Swiss applicants removed.

Libya remains a cumbersome and relatively expensive jurisdiction in which to file trade mark applications. Along with a Power of Attorney, filing requirements include a Certificate of Incorporation/Extract of the Commercial Register and a certified copy of the "home" registration. These documents require translation into Arabic and legalisation up to the Libyan Consulate.

Fees are payable at filing, publication and registration. It will remain to be seen how quickly applications can now move forward to registration.

Official fees in Africa

Africa may represent a significant region where brand owners will look to secure registration of their trade marks in the coming years. As some begin to file trade marks more regularly they may come up with some surprisingly high official fees. I write this piece as, unfortunately, I have come across official fees being quoted that are difficult to believe. One example I can recall is an agent quoting an official fee of £300 when in reality it was under a third of this.

It would be easy to suggest that corruption is endemic in Africa. Some may think it is fair game for a local agent to make a quick buck out of (wealthy) western brand owners. I would disagree with this but it is important we look at this objectively - and corruption is far from an exclusively African problem.

Official fees will often be paid in local currencies which can have unpredictable exchange rates with the major world currencies particularly when inflation can easily get out of control. There is appreciation that African agents may use a liberal exchange rate to ensure they are never out-of-pocket. Furthermore, some of the 'additional official' fees may be making their way to the Trade Marks Offices to ensure 'smooth handling' of an application. This is speculation but many trade mark owners will have ethical policies in place that they should be wary of unknowingly supporting such methods which could be construed as tacit acceptance of such payments.

It should also be noted that the cost of living and doing business can be high in some African cities. For example, Luanda, the Angolan capital, is astonishingly expensive.

Some agents will include other expenses with the official fees. I can recall in the 1990s an African agent for a certain jurisdiction being based in another city to the Trade Marks Office. They sent a messenger on a 'mission' to despatch our application to the Trade Marks Office. This sounded almost exciting; please bear in mind I have been a messenger myself but trips across London to the UK Patent Office at Southampton Buildings did not produce quite the same adrenaline rush! In Africa, where postal services are often unreliable, sending a messenger to another city, even with overnight stops, would probably have been cheaper than flying.

I think we would consider these expenses justified although we should encourage African associates to be transparent about them. Here is a continent where paper applications are often still required and official fees are made by cheque or draft so a physical presence at the Trade Marks Office can be required to make filings. In Morocco, on-line applications are possible but we can anticipate it being some time before other African countries can offer such a facility although Nigeria should be applauded for its recent efforts.

To cut to the chase, I undertook some research to find out the official fees from official sources and I quote them in a table below so you can cross reference to any quotes you may receive. I have quoted for trade mark applications in one class. For some countries, such as Kenya, foreigners must pay fees in US dollars. In other countries, payment in the local currency is required so you can use a currency convertor such as XE to find out the rough amounts in your local currency or the currency quoted to you.

I was unable to find the data for all countries. I could not track down the official fees for Ghana, but I can quote the individual fees they request under the Madrid Protocol; normally individual fees are in the region of the national official fees. Quoting their own regulations, the fees for The Gambia were come to by consulting with the fees for Ghana, Kenya and the UK although none were directly followed. However, they state (correctly) that they are significantly cheaper than the UK fees.

Of course, the links I base my findings on could contain out of date information but I feel we can take most of them at face value.

I hope this is a useful resource. Conversely, this may leave you a little bewildered with filing in Africa but this is where, in particular, South African firms and firms from the British Islands (many African countries are Commonwealth members with UK derived legislation), and elsewhere (for example, Belgian firms often have good contacts in Belgium's former colonies) can help you if need be from "Cairo to Cape Town" - to use the vision below of Cecil Rhodes, a somewhat controversial figure in African history but probably the most well-known person to hail from my home town of Bishop's Stortford.

Jurisdiction	Fee	Notes
Algeria	14000 DZD
ARIPO	$160	One designated country
Botswana	240 BWP	Fee for “large company”
The Gambia	$200	Overseas applicant
Ghana	129 CHF	Madrid Protocol Individual Fee (first part)
Kenya	$200	Foreign applicant
Lesotho	120 LSL	For a body "other than a small entity" Equivalent to 120 ZAR (currencies are pegged at par)
Madagascar	80000 MGA
Malawi	12 MWK
Mauritius	300 MUR
Morocco	1200 MAD
Mozambique	950 MZN
OAPI	400000 CFA	Equivalent to €609.80 (currencies are pegged)
Réunion	€200	Electronic filing fee of a French application which covers Réunion
	€900	E-filing fee of a CTM application which covers Réunion
Rwanda	50000 FRW	Rwanda may change its currency as part of East African economic cooperation
St Helena	£50	A UK registration is a prerequisite to obtaining local protection in St Helena. This would cost £170 in official fees (online filing) plus £20 in official fees to obtain the Certified Copy required to substantiate a St Helena application
Seychelles	300 SCR
South Africa	590 ZAR
Sudan	15 SDG	Based on a computer translation of the Arabic webpage which did not make perfect sense in English
Tunisia	271700 TND
Tanzania	5000 TZS	For the mainland/Tanganyika Trade Marks Registry
Zambia	?	Official fees have been omitted from the website even though there is a place for them
Zimbabwe	$200

If you have any corrections to the above or can advise the official fees for other African countries then please include a comment below. Citations would be appreciated.

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.