Alert 341 Europe - New UK Trade Mark Fees and Services in Force


On 1 October 2009 the United Kingdom Intellectual Property Office (UKIPO) introduced changes that will affect future United Kingdom (UK) trade mark applications.

1. E-filing discount
Applications made online will qualify for a discount of £30 off the total cost of the application, providing full payment of the fees is made at the time of filing.

2. Applications for a series of marks
Previously, the number of marks that could be applied for in a series application was unlimited and there was no additional cost for consideration of a series of marks.
 
The new changes:
  • the maximum number of marks in a series will be capped at six;
  • the usual application fee will apply if there are only two marks in the series;
  • for each additional mark in the series, there will be a fee of £50;
  • if, upon examination, the registry decides that the marks do not constitute a valid series, it will not be possible to divide the application.  Instead, marks must be deleted from the series until a valid application remains.  It will still be possible to divide goods and services.
  • there will be no refund of any series fees for marks deleted from the application.
3. Right Start applications
Right Start is a new trade mark application service which may be used as an alternative to the standard application service, particularly where there is uncertainty over whether the mark is registrable.
 
How it works:
  • applications must be made online;
  • half the fees must be paid at the time of filing.  Therefore, the first payment is £100 for one class and £25 for any additional classes (there is no £30 e-filing discount for a Right Start application);
  • if the application is for a series of marks, any series fees must be paid in full at the time of filing;
  • the registry will examine the application and issue a report with its findings as usual;
  • if the applicant proceeds, the balance of the fees is payable within 14 days of the date of the examination report;
  • if the applicant does not proceed, no further fees are payable and the application will be deemed abandoned.
4. Extension of time
The fee for requesting an extension of time in tribunal proceedings has increased to £100.

5. Correspondence via email
The IPO will correspond via email for all new e-filed applications filed on or after 1 October 2009, using the email address provided by the applicant.

NB: Online applications pending before 1 October 2009 will be subject to the new changes in certain circumstances.

Our Comment
This is another attempt by the UKIPO to encourage SMEs to protect their intellectual property and to ensure that UK trade mark applications remain an attractive proposition when compared to community marks. The Right Start procedure is likely to be of most use to applicants without the benefit of advice from professional advisers. However, it may occasionally be of use even to those with professional advisers in situations where the registrability of marks is unclear.

The limitations on series mark applications have been long expected, as applicants have historically been able to use such applications to test the water and have a number of marks examined for registrability for the cost of a single application fee.

For more information, email our United Kingdom Head of Brands Group Nick Baker at nbaker@iprights.com.