Trademark Protection Costs in Business-Friendly Jurisdictions: Where to File Trademarks

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Published on 25 January 2019

In our previous article, Patent Protection Costs in Business-Friendly Jurisdictions: Where to File Patents, we discussed and analyzed the costs of patent protection in the most business-friendly jurisdictions, which possess favorable business regulations and climates and are likely to offer competitive returns on investments. In this article, we shall discuss and analyze the costs of trademark protection in the most business-friendly jurisdictions.

Why Protect Trademarks in Business-Friendly Jurisdictions?

A trademark is a form of intellectual property right that facilitates brand protection, which is crucial for companies in today's digital world. The world is a global digital village in which companies know no boundaries, with the entire world being their playground. In such a scenario, it is imperative that due deliberation be given for the development and the formulation of a trademarks strategy.

However, the processes of filing a trademark application, getting a trademark registered, and maintaining the trademark indefinitely can be an expensive affair. In the face of scathing budget cuts, multi-national corporations are resorting to smart filing strategies, with judicious thought being given about where to file.

The question of where to file trademark applications, in turn, is a business consideration that involves the assessment of: the nature of the business; the jurisdictions in which the business operates or plans to operate; first-to-file v. first-to-use considerations; the market potential and growth opportunities; the location of manufacturing centers; competitors; and, to a great extent, the trademark filing and registration costs in a jurisdiction. Given such a scenario, a good starting point for trademark strategy formulation may be to consider protecting trademarks in the most business-friendly jurisdictions.

Business-Friendly Jurisdictions

The Ease of Doing Business Index is the World Bank's flagship ranking, in which "economies are ranked on their ease of doing business, from 1–190." The ranking is based on ten parameters: starting a business; construction permits; getting electricity; registering property; getting credit; protecting minority investors; paying taxes; trading across borders; enforcing contracts; and resolving insolvency.

The Index is a powerful tool that can influence investment decisions; multi-national corporations widely rely on the Index to guide their strategic investment decisions (Ricardo Pinheiro-Alvesa and João Zambujal-Oliveira; 2012).

As per the latest rankings, the top ten easiest jurisdictions for doing business are: New Zealand; Singapore; Denmark; South Korea; Hong Kong (Special Administrative Region of China); the United States of America; the United Kingdom; Norway; Georgia; and Sweden.

Trademarks in the Business-Friendly Jurisdictions

In the year 2016, the National Intellectual Property/Trademark Offices of Denmark ("DK"), Georgia ("GE"), Hong Kong ("HK"), New Zealand ("NZ"), Norway ("NO"), Singapore ("SG"), South Korea ("KR"), Sweden ("SE"), the United States of America ("US"), and the United Kingdom ("GB") collectively received more than 1.1 million trademark applications, with close to 50% of the applications being filed with the United States Patent and Trademark Office. These numbers are based on the World Intellectual Property Indicators 2017 published by the World Intellectual Property Organization and the Statistics of Trade Marks Applications published by the Intellectual Property Department in the Hong Kong Special Administrative Region.

Since the United Kingdom and the Scandinavian jurisdictions of Denmark and Sweden are members of the European Union, European Union Trademarks registered by the European Union Intellectual Property Office are also valid in these jurisdictions. The European Union Intellectual Property Office received 369,970 trademark applications in 2016 (World Intellectual Property Indicators 2017).

The Costs of Trademark Protection in the Business-Friendly Jurisdictions

Let us now study the costs involved in protecting trademarks in the business-friendly jurisdictions. There are three categories of costs involved: official fees, attorney charges, and translation costs.

The costs are generally dependent on the number of classes of goods and services under which the trademark application is filed. The current version of 'International Classification of Goods and Services' (Nice Agreement Eleventh Edition – Version 2018) contains 34 classes for goods and 11 classes for services.

Let us consider a trademark application for a word mark that is to be filed electronically under three classes, with five items of goods to be specified under each class. For instance, the applicant could be a travel organizer wishing to register under Class 36 (Insurance), Class 39 (Travel Arrangement), and Class 41 (Education). Further, we shall consider that no priority is claimed and that the services are described on a single page.

For the above scenario, the total costs to file a multi-class trademark application specifying three classes and to get the trademarks registered are approximately $18,750. The costs are based on the assumption that the applications got registered without any objections from the respective Trademark Offices, and with no oppositions being filed after publication. As shown in Table 1, the estimated costs are spread across the two different stages of the trademark process: Trademark Filing and Trademark Registration. The costs in Singapore are inclusive of Value Added Tax, which has been added to the attorney charges.

Trademark Filing Costs and Translation Costs

The estimated trademark filing costs are inclusive of the costs of filing a trademark application in each additional class in excess of the first class in the United Kingdom, Georgia, Hong Kong, and Sweden, and the attorney charges for handling the additional classes.

The costs in Georgia are also inclusive of the official fees for requesting publication and examination, and the attorney charges for filing the requests. Whereas, the costs in Singapore are based on the specification of services being adopted from the pre-approved database maintained by the Intellectual Property Office of Singapore.

It is mandatory to translate the specification of goods and/or services into the official language in Georgia, Norway, and Sweden. The estimated costs of translating one page into Georgian, Norwegian, and Swedish approximately vary between $60 in Georgia to $117 in Sweden.

Trademark Registration Costs

An official fee is charged at the trademark registration stage in only two out of the ten jurisdictions: Georgia and South Korea. In Georgia, the estimated trademark registration costs are inclusive of the fees for the issuance of the trademark registration certificate and maintaining the trademark for the first ten-year period.

Trademark Cost Calculator

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Venkatesh Viswanath (Senior Content Strategist, Quantify IP) contributed to this article.
Exchange Rates Used: 1 U.S. Dollar = 6.31 Danish Krone; 0.74 British Pounds; 7.85 Hong Kong Dollars; 1,081.65 Korean Won; 8.09
Norwegian Krone; 1.45 New Zealand Dollars; 8.71 Swedish Krona; and 1.34 Singapore Dollars