Trademark Registration Costs

by Kate Mcormack - Solicitor and Trademark Attorney

This easy to follow guide covers all the costs that will be incurred when applying for a trademark.

 There are various costs involved in securing and maintaining a trademark registration. This document provides details of the costs that may be involved and advice on how to get the best deal for trademark services.

Search Fees

It is highly recommended that you have trademark searches conducted by a trademark attorney or trademark registration company prior to filing an application for registration. This is to reduce the risk of your application being opposed by another owner which can result in your application failing and loss of the Official Registry Fees that you have paid.
The cost for trademark searches can vary substantially so you should shop around to make sure that you obtain the best deal. On-line trademark registration companies, such as legalcentre.co.uk, can often offer comprehensive searching services for lower fees that high street attorneys or solicitors.

Trademark Registry Fees

Registry Fees are always non-refundable. For UK applications, they are paid to the Intellectual Property Office (IPO) and for Community applications they are paid to the Office for Harmonisation in the Internal Market (OHIM).

UK applications - IPO Costs

The basic cost for filing a trademark registration application in 1 Class is £200. This is reduced to £170 if the application is filed on-line.

For more than 1 Class of goods or services, the cost increases by £50 per Class.

If you want to file a ‘Right Start’ application, the cost is £200 whether or not it is file on-line. A Right Start application allows you to receive the Examination Report after having paid only half of the Registry Fee so that if the Examiner refuses the application, you only lose half of what you would otherwise have paid.

You can file a series of 2 marks which differ only in a non-distinctive way for no additional cost. For series of more than 2 marks, the cost is £50 for each additional mark in the series. There is an upper limit of 6 marks per series in any application.

European applications - OHIM Costs

The basic cost for filing an application for a European Community registered trademark is EURO 1050 or EURO 900 for filing on-line. This covers an application in up to 3 Classes of goods and services. The cost for each additional Class is EURO 150.

It is not possible to submit a series application for a Community trademark.

Representation Fees During Trademark Applications

Some trademark registration agents/attorneys charge by the hour and so charges may be adding up for each phone call or email that the agent makes, including those to you. Other trademark registration companies may simply charge a fixed fee for each type of work or step in the process. You should check which charging basis will apply and exactly what is covered by the fee quoted. In addition some agents operate on a guarantee basis so that if your application is unsuccessful, some or all of their fees may be returned to you. You should check the terms and conditions applying to any guarantee. Official Registry Fees are never returned.

Renewal Fees For Trademarks

IPO

UK trademarks must be renewed every 10 years. The cost for renewing a UK trademark is £200 plus £50 for each additional Class of goods and services that it covers over 2. There is a late renewal penalty of £50 for marks that are renewed up to 6 months after the renewal date.

OHIM

Community trademarks must also be renewed every 10 years. The cost for renewal is EURO 1,500 or EURO 1,300 for on-line renewals, plus EURO 400 for each additional Class over 3. The late renewal penalty for renewals made up to 6 months after the renewal date is 25% of the total renewal fee up to a maximum of EURO 1,500.

Opposition Fees in Trademark Applications

UK - IPO

The Official Fee to file an opposition against a UK trademark application is £200.

In additional to this there will usually be agent/attorney fees to pay for their advice and preparation of the opposition documents. Again, be certain to check whether such fees are charged on a fixed fee or time-related basis.

There is no Official Fee for filing a defence to an opposition but again agent/attorney fees are likely to be incurred in filing the necessary evidence.

If you wish to counterclaim for invalidity of the trademark that is being used as the basis for an opposition, the costs below will apply.

If the opposition is defended, it may go all the way to a hearing and agent/attorney fees will increase accordingly.

If you lose the opposition or defence, you may be required to pay the winning party’s costs as well as your own, which can amount to up to a maximum of £5,000.

If you need more time to file evidence during any stage of an opposition or defence, the cost for requesting an extension of time is £200.

There may also be additional expenses involved such as travel costs for attending a hearing and witness expenses.

CTM - OHIM

The Official Fee for opposing a Community trademark application is EURO 350.

Again there will be agent/attorney fees to pay and the winning party’s costs.

Any decision made by OHIM can be appealed for an Official Fee of EURO 800.

Invalidity/Revocation Costs For Trademarks

It is also possible to take action to have a trademark registration cancelled or invalidated as if it never existed.

Invalidation proceedings can be brought at any time after a trademark has been registered on the basis of any of the grounds under the Act or by a trademark owner who has trademark rights pre-dating those of the registered owner. The cost for bringing an invalidation action against a UK registered trademark is £200. Again attorney/agent’s fees will be payable for representing you in the invalidation action and the other side’s costs may be payable if you lose the action or defence.

The fee for bringing an invalidation action against a Community trademark registration is EURO 700.

You can also take action to revoke a registered trademark if the registration is less than five years’ old. Grounds for revocation include non-use and the registered trademark having become generic or misleading. The Official Fee for bringing a revocation action is £200 or EURO 700.

Other Possible Trademark Costs and Fees

Watching Fees
Many trademark agents offer watching services. This means that they will monitor the trademark Registers for new registration applications that may be confusingly similar to your registered mark. This may be necessary because you will not necessarily be notified of all new similar applications by the Examiner and cannot oppose applications if you are not aware of them. Usually fees for watching services are charged on an annual basis.

Court Fees
Once a trademark has been registered, you will need to protect the registration. This may involve having to take another business to court for trademark infringement or defend a trademark infringement action that is brought against you. There will be official Court Fees involved in bringing or defending an action in the courts as well as attorney/solicitor fees for representing you.

Graphic Designer Fees
Often you will want to use a logo in connection with your business and you may wish to have this professionally created by a graphic designer. Graphic designers are experienced in creating professional looking logos that are distinctive to your business. You should check exactly what services are being offered for any fee quoted and that the copyright in the logo will be assigned to you upon payment/completion.

Other Trademark APlication Related Fees

Other Official Fees may be involved in amending or transferring ownership of a registered trademark. These are set out on the websites of the IPO and OHIM.