As well as reducing their fees from 1st October 2009, the UK Intellectual Property Office will also introduce their "Right Start" service. In addition, changes in the manner in which series marks are examined make it important for a series to comply with the rules from the outset.
The UK Intellectual Property Office has finally caught up with the Community Trade Mark Office (OHIM), and reduced the official fees payable when an application is filed online.
The current official fees for filing a UK trade mark application are £200 ($335) for one class, and £50 ($85) for each additional class. From 1st October 2009 if an application is filed online, so long as the fees are paid at the same time the application is filed, a the total fees will be reduced by £30 ($50). The £30 reduction in fees does not apply to postal or faxed applications, neither does it apply if the applicant delays paying the official fees.
The decrease in fees is likely to result in an increase in the number of online filings, but following the more significant drop in fees at OHIM last May, European Community member states' national offices still have a long way to go to make national filings cost effective when compared with a Community Trade Mark.
Any drop in income as a result of these fee changes is offset by another significant change in procedure. From 1st October 2009, if a trade mark application is filed online, all subsequent correspondence from the Intellectual Property Office to attorneys is sent by e-mail only. Given the significant cost benefit, it may only be a matter of time before all correspondence from the IPO (and indeed OHIM) is sent by e-mail only.
Introducing "Right Start"
An unexpected innovation from the UK Intellectual Property Office is the "Right Start" application service. When applying for a trade mark under Right Start, the application fees are halved, that is £100 ($167) for the first class and £25 ($42) for each additional class. The balance only becomes payable once the application has been examined, and a decision has been made to go ahead with publication and registration.
Right Start is clearly of benefit to applicants who are undecided about adopting a mark. However, it is easy to imagine that some might wrongly perceive it as a cheap alternative to clearance searching.
The new e-filing rules will have a direct impact on our clients as we intend to file online from 1st October to get the benefit of the fee reduction. However, we do not intend to use Right Start unless we are asked to do so, or unless we have serious doubts about the registrability of a mark.
Series Of Trade Marks
The UK is probably unique in that it accepts applications for series of trade marks, but the criteria for a valid series of marks are narrow. It has always been possible to divide a series, retaining all the marks applied for in separate applications. This is no longer possible, so getting the series right is crucial. We have summarised the changes below :
- A series can have a maximum of six marks only
- A series of two will cost no more than a standard application. However, for each mark over two, a further official fee of £50 ($85) will be payable.
- It will no longer be possible to divide a series of marks by mark. In future if the IPO decides that an application filed as a series application does not meet the series rules, it will be necessary to delete marks from the application to meet the objection. Any additional fees paid (for the third to sixth in a series) will not be refunded.
So what constitutes a series of marks? We have summarised the IPO's guidelines.
- The same word mark with a series of numbers should usually be
acceptable :
BECKGREENER1
BECKGREENER2 - Common misspellings should be acceptable :
BECKGREENER PRACTICE
BECKGREENER PRACTISE - A distinctive mark may form a valid series with non distinctive
words :
BECKGREENER TRADE MARKS
BECKGREENER PATENTS - But a non-distinctive word generally will not:
TODAY'S TRADE MARKS
TODAY'S PATENTS - Minimal stylisation should usually be acceptable:
BECKGREENER
BECKGREENER - But more pronounced stylisation may not be:
BECKGREENER
BECKGREENER
Finally, there has been an increase to £100 ($167) in the fees payable when obtaining an extension of time in proceedings before a tribunal, or to extend a missed deadline when a mark is still under examination. All other extensions of time remain with no fee.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.