| |
 |
N. 33, May - June 2007
|
|
|
 | IP & RTD: Articles
 |
|
|
|
Community Trade Mark Fees at the OHIM – An Initiative
for Revision
Mark Kennedy
Office for Harmonization in the Internal Market
Relations with Users, Website and Publications - GAERD
|
|
|
When the Office for Harmonization in the Internal Market appeared on
the international trade mark scene in 1994, the Community trade mark right it
would launch into the IP world only two years later was very much an unknown
force. With thirteen trade mark protection systems already operating in the
European Union of that day, there was much uncertainty as to how the CTM would
fit into the IP marketplace of the time, in particular with relation to the
number of expected filings in its initial years.
When calculating the costs involved in managing the new CTM system,
and with expected filing figures based on nothing more than an educated guess,
the EU legislators had to establish a set of fees which would balance the
overheads involved in running the OHIM while at the same time offer businesses
trading in the EU a cost-effective IP right accessible to SMEs and large
corporations alike.
At close of play on April 1st 1996, the first day of CTM filings, the
opening year forecast of 15,000 applications had, in that single day, been
topped by more than 7,000. The year 1996 would end with more than 45,000 CTM
applications on file, and filings over the subsequent years would confirm the
overall upward trend. In only ten years, the CTM has well surpassed any and all
expectations as to the number of applications that would be made before the
OHIM.
It soon became obvious, both to those running the financially
autonomous OHIM and to the business and industry communities using its CTM
protection system, that the original filing fee of €975 and the
registration fee of €1,100 no longer reflected the true costs involved
in running the system nor were they realistic fees for the IP right offered in
the ever expanding and increasingly competitive EU market place in which the
CTM exists. On top of this were the spiralling monetary surpluses being
generated by the OHIM each year, leading to a current budget surplus of around
€200 million, and a possible €375 million surplus in 2010 if the
current fee regime and filing figures were to be maintained.
Though a clear enough indicator of the popularity of the CTM in
itself, the increasing budget surpluses evidently had to be addressed and a way
of balancing the annual budget as stipulated in Article 139 of the Community
Trade Mark Regulation became necessary. This led to the adoption by the
Commission of Regulation (EC) No 1687/2005 of 14 October 2005 in which a number
of fee reductions were implemented, as well as the introduction of financial
incentives for users opting to use the Office’s e-filing systems. The
main fee reductions undertaken were:
Fee
|
Original
|
New
|
CTM Application*
|
€975
|
€900
|
CTM Application e-filed (new)
|
- - - - -
|
€750
|
Extra Class Fee
|
€200
|
€150
|
CTM registration Fee*
|
€1,100
|
€850
|
CTM Renewal*
|
€2,500
|
€1,500
|
|
* Over 90% of OHIM’s overall
financial revenue is generated by these three fees alone.
A number of other modifications to different OHIM fees were also
implemented in this Regulation, and can be consulted on the
OHIM website.
The principle of reinvesting the money spent on CTMs back into the
companies paying the filing fees in the first place was, to some extent,
fulfilled by carrying out this first fee reform, though it had slightly less
repercussion on the increasing budget surpluses. Nevertheless, a combination of
factors made it clear to the Commission that further action needed to be taken
if OHIM’s revenues “continually exceed
the financial means that are needed to ensure the proper fulfilment of the
tasks of OHIM and reserves become structurally
disproportionate”, as stated in a December 2006
Communication from the Commission to the European Parliament and the Council
outlining a proposed mechanism to revise OHIM fees on a regular basis.
The Commission proposes to introduce a method of regular review of
the fees received by OHIM based on the financial perspectives of the Office and
to manage the budget reserves using a predetermined formula. This formula
would, in the Commission’s view, have three fundamental
advantages:
-
A guarantee of the Office’s
financial autonomy: the potential depletion of reserves and any
subsequent need for possible subsidies would be avoided, as would the excessive
accumulation of cash reserves.
-
A more realistic fee for
users: the fee charged would accurately reflect the costs involved
in managing the CTM system, benefiting users throughout the EU.
-
A technically feasible
solution: the process by which any such revision formula would be
implemented would not seem to imply any technical or legislative difficulties.
The ‘comitology’ procedure as provided for in the CTM Regulation
would be used.
Though yet unconfirmed, the actual details of the initiative itself
would be based on a number of specific factors, the most important of which is
that the revision of fees would take place on a regular basis, possibly
annually. This would ensure that any fluctuations in CTM applications, and
therefore in income, would be taken into account.
It is also proposed that the basis of the review should concentrate
on the application, registration and renewal fees, these being the three main
sources of OHIM’s income, and that reduction or increase should be
proportionate to their relative weight. This does not, however, exclude the
implementation of the revision mechanism to other fees.
The Communication invited the Parliament and the Council to submit
any observations they may have on the content of the initiative, and once this
has taken place, a concrete legislative proposal would be made by the
Commission. No specific calendar for such a proposal has been laid down, though
it is expected that comments from the Council and the Parliament on the initial
Communication will be delivered before the end of the second quarter
2007.
|
| |
|
|
