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21.08.2009 18:08

UK: New trade mark fees and services

On 1 October 2009, the Trade Marks Directorate of the Intellectual Property Office is introducing a number of changes that will apply to applications for new trade mark registrations.

Trade mark application e-filing discount

Regardless of the method of application, it currently costs GBP200.00 to apply to register a trade mark for goods or services that fall in one class. It also costs GBP50.00 for each additional class(*1 - see footnote). However, from the 1 October 2009, applications made through the online application form (e-TM3), which include the full payment at the time of filing, will qualify for a discount of GBP30.00 off the total cost. This also applies to the fast track application service.

The cost of filing an application through other methods (post, fax etc) will remain at current levels. Furthermore, because the discount applies only to e-filed applications where full payment is made at the time of filing, applicants utilising the period of grace to make payment will not qualify for the discount.

Right Start application service

Right Start is a new trade mark application service which may be used as an alternative to the standard application service. With a Right Start application you initially pay GBP100.00 (which includes one class of goods or services), and GBP25.00 for any additional classes included in your application; this represents half of the standard application fees.

In return for this half payment, we will examine the application to assess whether it meets the requirements for registration and issue a report of our findings. Only if you decide to proceed with your application will you need to pay the balance of fees (namely GBP100.00 plus GBP25.00 for each additional class above one).

The service has the following features and benefits:

Before making the application telephone assistance is available for applicants who need help completing the application form;

Right Start applications must be filed via the e-filing route and the initial fees (as set out above) paid in full at the time of filing;

We will email the examination report to you in accordance with our standard turnaround times (currently around 10 business days) and we will let you know whether we consider the mark to be registerable and inform you of any confusingly similar marks already on the register;

If there are any problems identified in the report we send you, you can discuss them, informally, with the examiner over the telephone and, if applicable, agree acceptable methods for overcoming any problems;

If you decide to proceed with your application you must pay us the balance of fees (GBP100.00 plus the balance of any additional class fees with which you wish to proceed) within 14 days of the date of the examination report. Payment must be made through our associated online fee payment services (using a deposit account held with us or a debit or credit card);

If you decide not to proceed with your application, no further fees will be payable and the application will be deemed abandoned.

Please note that the e-filing discount (see above) does not apply to Right Start applications. In addition, the new series fee (see below) will still need to be paid in full for each mark in the series beyond two.

Applications for a series of marks

A series application consists of a number of marks which are essentially the same and where any differences are not significant (for example the same word mark shown in CAPITALS, in italics, and in plain lower case lettering). Currently, the number of marks that can be applied for in a series application is unlimited and there is no additional cost for consideration of a series of marks. For applications filed on or after 1 October 2009 the following changes will apply:

The maximum number of marks in a series will be capped at 6;

There will be no additional fee for the 1st and 2nd marks in the series, however, for each mark beyond the first two (i.e. marks 3, 4, 5 & 6) an additional fee of GBP50.00 will be required to meet our additional costs;

It will not be possible to divide an application on the basis of the marks in the series (divisions of goods and services will still be possible). This means that if, upon examination, we decide that the marks do not constitute a valid series then it will be necessary to delete marks from the application until a valid application remains. No refund of any series fee paid will be made in these circumstances.

Extension of time fee

It should also be noted that on the 1 October 2009, the fee for filing Form TM9 to request an extension of time in tribunal proceedings, or to extend a missed deadline in examination matters, will be increased from GBP50.00 to GBP100.00.

Any questions arising from this notice should be directed to Lynda Adams, +44(0) 1633 811110.


(*1) We use an international classification system. This system splits all goods and services into 45 separate classes.

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