Brian Miller Solicitor's IP Law Blog

Sunday, 8 September 2013


Following a discovery by the EU Commission that OHIM, the body responsible for registering EU trade marks, is making a profit from its fees, the Commission plans to remove the surplus to its own funds.

As part of this review, the Commission intends to reduce the number of classes which are included in the initial one off registration fee from three classes to one. This will effectively increase costs for all businesses (but particularly small ones), who cannot ill afford this increase in costs, unless they simply decide to register an EU trade mark only in one class.

But deciding to take that strategy in order to save costs is not advisable, since if a business or organisation operates in more than one area, it will need to register in more than one class  in order properly to protect its brand. It will therefore have no choice but to pay the extra fees if it wishes to continue to do so.

OHIM fees to register a trade mark are currently €900 for an online application (€1050 otherwise), which includes three classes.  The fee for each addition class is €150 euros.  This means that, in order to sustain an application which includes three classes, the applicant will pay an extra €300 euros, an increase of 33% over the current fee for a trade mark which includes three classes.

There was a mini-hearing before the Legal Affairs Committee of the European Parliament just before the summer break, on 8 July. The issues of fees was hotly debated and member states have unanimously rejected the Commission’s legislative package, on the grounds principally that it overlooks the interests of SMEs, which the Commission hotly contests.

The debate rolls on and time will tell whether SMEs will persuade the Commission that changing from a one-fee-for-three-classes to one-fee-for-one-class approach is only going to increase the coffers of OHIM, which was the main reason for making the change in the first place!

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