New UK trademark fees and services in force

United Kingdom
On October 1 2009 the UK Intellectual Property Office (IPO) introduced changes that will affect future UK trademark applications.
First, applications made online will qualify for a discount of £30 off the total cost of the application, providing that full payment of the fees is made at the time of filing.
Moreover, the IPO introduced changes with regard to 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 changes are as follows:
  • The maximum number of marks in a series will be capped at six.
  • The usual application fee (£200) will apply if there are only two marks in the series.
  • There will be a fee of £50 for each additional mark in the series.
  • If, upon examination, the IPO 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.
In addition, the IPO introduced Right Start, a trademark 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. The service functions as follows:
  • 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. The applicant must then pay £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 fees must be paid in full at the time of filing.
  • The IPO 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.
Another change is that the fee for requesting an extension of time in tribunal proceedings has increased to £100.
Finally, the IPO will correspond via email for all new online applications filed on or after  October 1 2009, using the email address provided by the applicant. Online applications pending before October 1 2009 will be subject to the changes in certain circumstances.
The introduction of these measures represents another attempt by the IPO to:
  • encourage small and medium enterprises to protect their intellectual property; and
  • ensure that UK trademark applications remain an attractive proposition when compared to Community trademarks.
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 the mark is unclear.
The limitations on series mark applications had 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.
Nick Baker, Rouse, London

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