Community Trade Marks Fee Reduction

We are very pleased to report that Community Trade Mark (“CTM”) fees are to be reduced.  The reduction is to happen on the 1st of May, 2009 when the registration fee will be abolished and the application fee will be slightly increased. The following table shows how the official fees for new CTM applications in up to three classes varies over the coming months.

New CTM applications in up to three classes – official fees

File before May to get the most benefit
Pending applications will only incur a registration fee if the opposition period has passed and a request for payment of the registration fee has been sent by the CTM office.  That means that applications filed now will get the greatest fee reduction, incurring neither a registration fee nor the increased application fee. 

Don’t designate the EU in an International application until August
The new fees will not become effective for CTMs designated in International (Madrid Protocol) trade mark applications until three months after the fee change comes into place i.e. not until 1 August. 

The main reason for using the International registration system is one of cost.  It is generally cheaper to obtain protection using the system than not.  However, as shown above, for applications filed between now and the beginning of August, that is not the case for the CTM.  Given this, and the drawbacks inherent with the International registration system, applicants should seriously consider filing a separate application for a CTM, rather than designating the CTM in an International application, for all applications filed before the beginning of August.

Separate CTM or Designated in an International Application?

There are good reasons why applicants should consider obtaining protection as a CTM separate from the International registration system, even after August.  With the reduction in fees, the extra cost, per country, is small.  One reason for considering this is that CTMs can have much broader specifications than those accepted in other jurisdictions such as the U.S..  Also, an application can cover up to three classes before charges start to increase.  An International application cannot have a broader specification than that used for the home application or registration and this can be unduly restrictive for the CTM, particularly if based on a U.S. mark.  Whilst the CTM will become vulnerable to revocation for non-use, this only happens five years after the CTM is actually registered and only becomes the case in relation to those goods or services for which the CTM has not been used.  The broader specification allowable in a CTM application gives, therefore, greater protection for a number of years after filing the application.  It allows for expansion of the goods or services in relation to which the applicant uses its mark without the need to file further applications.

If you have any questions, please ask your usual Venner Shipley contact or Kate Széll.

Kate Széll 27 Mar 2009

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