The Fee Reform of Trademark Registration: You Can Have a Cake and You Can Also Eat It

Author: Kristina Vilkiene, Assistant Attorney-at-Law in METIDA

metida13Last week the European Commission presented a package of initiatives which should improve, simplify and make the European Union trademark registration system more efficient. One of the most important changes which will affect trademark applicants is the new fee system for filing an application which is considered to be the principle of “one-class-per-fee”. Due to this change, the application fee will decrease by around 14% for those who seek to get a trademark protection at a EU level for only one class of goods or services.

According to the current system, a fixed fee is applied to the Community trademark registration for up to 3 product classes. Meanwhile, under the revised system of fees both The Office of Harmonization for the Internal Market where Community trademarks are registered and the national trademark offices will have to convert to one fee for one class system. In Lithuania, this is the exact fee system that is used for applications to register trademarks.

Currently, a fee that is applied to filing the Community trademark application is beneficial to companies which are truly in need for trademark protection in three classes of goods or services. Moreover, in trademark rights there is a principle “who is faster in time is also faster in law”, therefore, quite often the application for trademark is filed before it is entered into the market and before the marking of a particular product or a service. And in this stage of creating a trademark as well as filing an application for it to be registered, the applicant does not always know and is not capable of making an accurate estimation of the necessary trademark protection scope in regards of goods and services. Thus, the application is filed indicating a wider list of goods and services. This is associated with the applied in both the European Union and Lithuania trademark registration system according to which it is forbidden to fill in trademark’s application for new classes of goods and services, after the application has been submitted.

The new fee system will be useful for the applicants who are in need for trademark registration in one goods or services class, and also for those who are in need for protection in at least three classes. The currently used fee for filing an application for Community trademark registration is EUR 900 which encompasses three classes. It is suggested that the new application fee which will encompass only one class will be EUR 775. The additional second and third goods and services classes would cost EUR 50 and EUR 75 respectively. This implies that filing an application for three classes will cost as much as previously – EUR 900, however, this fee will decrease when filing an application encompassing one or two classes.

Under the current system where the application costs the same for one, two and three classes of goods or services quite often the application of Community trademark registration were filed for all three classes of goods and services only because this number of classes is in the fixed fee of filing the application. Therefore, after changing the fee for filing the application and calculation of additional classes of goods and services, the decrease of “excessive” and “sleeping” trademarks (trademarks which are not in use and unnecessary) in the Community trademark register is expected.

The new regulation which will change the 1995 Commission’s regulation regarding the fees paid to The Office of Harmonization for the Internal Market will be accepted by the Commission as the legal act implementing other legal acts, therefore, for its initialisation a preliminary approval from a relevant committee regarding OHIM fee system is needed. The first committee meeting will have taken place by the summer in hopes to get the new regulation accepted until the end of 2013.

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