Does the "Trademark Package" ring a bell? Beyond its rather unflattering name, this is a major reform of trademark law that comes to us from a European regulation adopted in 2017, finally (!) transposed into French law by ordinance and its implementing decree all expenses from December 9, 2019.
"But this reform is no detail at all, since it is turning trademark law procedures as we know them upside down. Most importantly, it changes the cost of trademark registrationand adds a few other new tariffs that have a direct impact on depositors. It's this first topic that we're talking about in this post, which will be followed shortly by a second on procedural changes.
These new fees affect trademark registration as such, but also certain procedural fees.
Until now, the deposit fee was €210 for 1 to 3 classes, and €42 for each additional class. It was therefore not uncommon for depositors to choose 3 classes, without really needing them, since they had that sweet aura of freebies that you often find at the top of the supermarket shelf: "one bought, 2 free!
The problem with this system was that these deposits cluttered the registers and constituted potentially opposable prior art, even though their owners had no intention of exploiting them for one or more classes.
INPI has therefore followed the solution already adopted for several years in Europe: one fee per class. The new trademark registration fees are as follows: €190 for the first class, and €40 for each additional class. We should therefore see many more "single-class" filings, which will rationalize registers and greatly simplify, over time, the registration of trademarks. prior art searches.
The other changes mainly concern the opposition procedure (which makes it possible to prevent the registration of a trademark that is too close to your own) and renewal.
The cost of the opposition proceedings increases from €325 to €400, for a single prior right invoked. An additional fee of €150 is charged for each additional right invoked. The procedure has indeed undergone a radical change, which we explain below.
Here again, INPI has adopted a "single class" system. The cost of renewal will now be 290 € for 1 class (compared to 250 € previously for 1 to 3 classes), and 40 € per additional class.
The stated aim is to encourage applicants to spontaneously limit the scope of their trademark when it is not used in certain classes. Let's imagine a trademark to be renewed in 3 classes. Under the old system, renewal would have cost €250. Under the new rules, renewal in 3 classes will cost €370. This is a huge difference, which raises the question of the extent of renewal.
It's all the more important to renew your trademark before it expires, because beyond that date you'll still have a 6-month grace period, which entails payment of a surcharge corresponding to 50% of the normal fee. As this has increased, we strongly advise you to keep a close eye on your expiry date!
Note that you can now renew your trademark up to 1 year before it expires, as opposed to 6 months previously. To make sure you don't miss the deadline, you can entrust your filing to your trusty industrial property attorney !
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