Trademark Fees (Global)
1. What types of fees are generally associated with maintaining a trademark portfolio?
The cost of seeking protection of a trademark through registration depends largely on the jurisdiction and the goods and services it covers. Trademark rights are usually acquired on a territorial basis. Additionally, a particular trademark may cover a wide variety of classes of goods and services or it may be fairly limited. Brand owners engaged in different lines of business across multiple jurisdictions will most certainly face higher costs than, for example, a local business with just one product.
The cost of registering and maintaining a trademark portfolio is directly related to the internal costs of administrating each registration (including employee time), trademark clearance costs, fees charged by local government offices, as well as attorney’s fees for the prosecution of the respective registrations. Other costs include maintenance and enforcement of rights, including pursuing infringing or adverse uses.
This fact sheet deals in general with the costs that may normally be expected when a person or company seeks protection of its trademarks through registration as well as the costs of maintaining such registrations.
2. What considerations should be taken into account before filing a trademark application?
There are important issues to consider when choosing a trademark for a new product or service. Stronger or more distinctive marks are easier to register and to protect. Likewise, it is advisable to conduct clearance searches in the countries where the mark is going to be filed or used to determine if the mark is inherently registrable and available. All of these factors have an impact on the costs associated with registering and maintaining that mark in the long run.
Considerations for Selecting a Trademark
Although local trademark lawyers or agents charge additional fees besides the ones charged by the trademark offices around the world, they provide valuable advice and guidance on trademark availability, use, the application and registration procedure, and your rights vis-à-vis others. All of this may likely provide you with stronger trademark rights and cost savings. In fact, certain jurisdictions require applicants seeking registration of a trademark to be represented by qualified counsel.
3. Do I have to file separately in each country where I desire a trademark registration?
However, in certain cases, applicants also have the alternative to employ multilateral registration mechanisms that allow simultaneously registering a trademark in various jurisdictions, rather than filing a single application in each country. Each of these multilateral registration mechanisms has its own fee schedules and procedures.
The main multilateral registration mechanisms are:
4. What factors impact the fees for filing a trademark application?
- Community Trade Mark, which covers all members of the European Union;
- Madrid System, which covers all members of the Madrid Union;
- ARIPO (African Regional Industrial Property Organization), which covers several English-speaking African nations; and
- OAPI (African Intellectual Property Organization), which covers several French-speaking African nations.
Most national offices charge trademark application fees based on the number of classes of goods or services covered by the application (see Single Class vs. Multi-Class Trademark Applications
). The specific classes into which goods and services will fall is determined in the vast majority of countries by an international treaty called the “Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.” However, certain countries like Canada, Venezuela and China adopt different rules for classification or forego classification all together.
Filing fees may be influenced by the format of the application and how the application is filed.
For example, in Canada, filing fees range from CND 250 to CND 300 (excluding lawyer fees). If an applicant submits a trademark application online, via the Canadian Intellectual Property Office website, the applicant is charged with a fee of CND 250. Otherwise the applicant is charged the prescribed application fee CND 300. Similarly, if an application for registration of a Community Trade Mark is filed online via the OHIM Website, the applicant will benefit from a € 150 reduction on the basic fee for an individual mark. A USD 50 reduction is also available where trademark applications are filed with the U.S. Patent and Trademark Office through its online system.
Another example is China. The Chinese State Intellectual Property Office charges a basic trademark application fee that covers a designation of goods and/or services of up to ten related items. Further fees may apply for each additional item in excess of this amount.
5. Do national trademark offices charge other fees during the processing of an application?
Yes. Sometimes during the normal course of registering an application for registration of a trademark, certain events trigger the need to pay additional fees. Examples of such situations include:
- Certain trademark offices may charge additional fees in the case of late filing of documents, when submitting documents in response to observations made by the office’s examiner or to correct deficiencies in applications.
- Once a trademark application has been deemed accepted for publication, certain trademark offices around the world charge a separate fee for this service (which may depend on the length of the description of goods and services or the number of items covered).
- In some countries, including the United States and Canada, a Declaration of Use often must be filed before the application can pursue to registration, and such a filing (or even time extensions to make such a filing) can carry fees. In the case of the United States, the U.S. Patent and Trademark Office charges a USD 100 fee per class for filing a Statement of Use and a US $150 fee per Class for extensions of time to file a Statement of Use. The Canadian Intellectual Property Office charges CND 400 to file a Declaration of Use.
- Certain trademark offices around the world charge a separate fee for the grant or issuance of a trademark registration certificate.
Qualified and experienced legal counsel will provide assistance in determining the potential cost of pursuing a trademark registration and will minimize the need to pay more fees than strictly required. For instance, due to legal or strategic considerations, it may be desirable to divide the goods or services covered by a single application in order to pursue two or more individual registrations.
However, certain obstacles may arise during the process of registration that will require additional expenditures of time and money, including lawyers’ fees. These situations include unforeseen refusals or third-party claims regarding the right to register the mark.
6. What are the costs associated with maintenance of a trademark after registration?
Once a mark has been registered in the jurisdictions of interest, the owner’s rights are perpetual if properly maintained. However, most trademark registrations are issued for a limited term, usually 10 years. Prior to the due date, the registration must be renewed to prevent expiration. In some countries there is a grace period, which allows renewal with payment of a fine, and there are provisions to restore a lapsed registration under certain limited circumstances.
Additionally, certain countries require that an affidavit confirming use of the mark in commerce must be submitted within a certain number of years after a registration has been obtained or within a prescribed deadline. For instance, in the United States, an affidavit of use must be filed in the sixth year after the registration has been granted (this is referred to as a Section 8 Affidavit, which has a per class filing fee of US$100).
In the Philippines, an affidavit of actual use must be filed within 3 years from the application date irrespective of whether the application has been granted or not. This application filing fee may range from PHP 800 to 5500, depending on the date of filing and other factors. Alternatively, the trademark owner must prove special reasons for non-use. If this is not done, the registration may lapse and be cancelled immediately, even though the renewal is not due until ten years after registration. Similar evidence of use must be filed every time the registration is renewed.
Certain changes during the normal course of business that affect a particular registration might also require recordation with the relevant trademark office in each jurisdiction. Common examples include changes of ownership (such as assignments and mergers), registration of licenses, restrictions to the list of goods or services covered by the registration, and changes in the domicile or place of business of the mark’s owner.
Additional INTA Resources
- (Accessible to INTA members only) – access links to fee schedules where available under the country profiles or use the Advanced Search feature for a list of all available fee schedules.
Topic Portal: Registration
Fees for International Registration Applications Under the Madrid Protocol
Trademark Fees (United States)
Filing a Trademark Application in the United States
Filing for a Trademark Outside of the United States
Maintenance and Renewal
Country Guides: Essential Information on Trademark Protection Worldwide
- searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in 75 jurisdictions (Accessible to INTA members only)