News

April 2009

Reduction in Community Trade Mark Fees

You may have heard rumours that the Community Trade Mark (CTM) fees are being reduced, and we are very pleased to report that this has now been confirmed by OHIM. A draft Regulation is being considered by the Commission which will result in a 40% reduction in the total official fees payable, from start to finish. As soon as the Commission has agreed the terms of the Regulation, it will be published in the official journal which is expected to take place in the first week of May (referred to below as “the relevant date”).

So what does this mean in practice?

The fee changes are as follows:

	Current fee (€)	New fee (€)*
CTM application fee (paper)	900	1050
CTM application fee (e-filing)	750	900
CTM application fee – collective mark	1300	1800
CTM registration fee	850	0
CTM registration class fee	150	0
CTM registration fee – collective mark	1700	0
CTM registration class fee – collective mark	300	0
Addition fee for late payment of registration fee	25% (max 750)	0
Madrid Protocol registration fee	1450	870
Madrid Protocol registration class fee	300	150
Madrid Protocol fee – collective mark	2700	1620
Madrid Protocol class fee – collective mark	600	300

* Effective on the day following publication in the Official Journal of the EU, most likely around the first week of May 2009.

** The new Madrid fees become effective 3 months after the Commission notifies WIPO, i.e. 3 months after the effective date. During those 3 months, Madrid applicants will continue to pay the old fees. If protection is refused for one of those applications, OHIM will refund a portion of the fees according to today’s rules. Once the new Madrid fees come into effect, there will be no refunds in the event of refusal.

Perhaps the most relevant of these changes are summarised below:

• The official fees for filing a CTM online covering up to 3 classes currently amount to €750. As from the relevant date, the filing fees will increase slightly to €900 but this will be far outweighed (see below) by the abolition of the registration fees;


• The official registration fees for a CTM covering up to 3 classes are currently €850. However, as from the relevant date, these will no longer be payable;


• Therefore, the total official fees for a CTM (including filing and registration fees) will decrease from €1600 to €900, as of the relevant date.


• If you or your client have pending CTMs, where at the relevant date you have not yet received a notification from OHIM asking for payment of the registration fees, then no registration fees will be payable, so the total official fees for the CTM will be €750; and


• All additional class fees at filing remain at €150.

Do you need to do anything?

Our advice is to consider filing any new CTM application prior to the relevant date. This will mean you will only be charged €750 to file the application and there will be no registration fees payable. If you file the CTM application after the relevant date, then these fees will increase to €900. Whilst this still represents a significant saving, you can save an additional €150 by filing prior to the relevant date.

If you would like to learn more, then please feel free to get in touch with your usual contact at Forresters or email us at london@forresters.co.uk or birmingham@forresters.co.uk.