International Trademark Protection Costs: Upper Middle-Income Economies

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Published on 25 January 2019

In one of our previous articles, Global Patent Strategy: Patent Protection Costs in Five Upper Middle-Income Economies, we illuminated the costs of protecting inventions and innovations (i.e. the costs of patent protection) in the upper middle-income economies of Kazakhstan, Mexico, Malaysia, Russia, and Thailand. In this article, we shall delve into the costs of brand protection (i.e. the costs of trademark filing and registration) in certain upper middle-income economies. These developing economies may be attractive destinations for inclusion in an international trademark filing strategy on the basis of: growth or market potential; Foreign Direct Investment inflows; consumer spending potential; favorable Intellectual Property and/or business regulations.

Upper Middle-Income Economies

The Ease of Doing Business Index is the World Bank's flagship ranking from 1-190, in which "economies are ranked on their ease of doing business." 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, twelve upper middle-income economies feature in the top 50. These are: Macedonia (Former Yugoslav Republic), Malaysia, Mauritius, Thailand, Russia, Kazakhstan, Belarus, Montenegro, Serbia, Romania, Mexico, and Bulgaria.

Of the twelve economies, Romania and Bulgaria are member states of the European Union. Likewise, the economies of Belarus, Russia, and Kazakhstan are member states of the Eurasian Economic Union. Malaysia and Thailand, on the other hand, are member states of the Association of Southeast Asian Nations.

Trademark Filings in the Upper Middle-Income Economies

In the year 2016, the National Intellectual Property/Trademark Offices of Belarus, Bulgaria, Kazakhstan, Macedonia, Malaysia, Mauritius, Mexico, Montenegro, Romania, Russia, Serbia, and Thailand collectively received more than 600,000 trademark applications. Of these, about two-thirds of the total applications were filed with the Russian Federal Service for Intellectual Property and the Mexican Institute for Industrial Property, with Kazakhstan, Malaysia, Mexico, Romania, Russia, and Thailand receiving more than 20,000 trademark applications. These figures are based on the numbers published in the World Intellectual Property Indicators 2017.

The Madrid Protocol and the International Trademark System

Of the twelve jurisdictions, Belarus, Bulgaria, Kazakhstan, Macedonia, Mexico, Montenegro, Romania, Russia, Serbia, and Thailand are members of the Madrid Protocol. The Protocol is administered by the World Intellectual Property Organization and facilitates the international filing and registration of trademarks in a cost-effective and streamlined manner in over 100 countries, with Samoa being the latest to join the bandwagon on December 4, 2018.

A trademark registered under the Madrid Protocol is valid for ten years from the date on which the mark is recorded in the International Register and can be renewed for successive ten-year periods.

International Trademark Protection Costs

Let us now discuss the costs involved in protecting trademarks in the upper middle-income economies and, subsequently, getting them registered. Typically, there are two categories of costs involved: official fees and attorney charges.

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 the '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 with a single priority claim that is to be filed electronically under four classes in the aforementioned jurisdictions. For instance, the applicant could be a travel organizer wishing to register under Class 36 (Insurance and Foreign Currency Exchange Services), Class 39 (Services Related to Travel Arrangements), Class 41 (Education Services), and Class 43 (Services for Providing Food, Drink, and Temporary Accommodation).

We shall assume that a multi-class international trademark application designating the aforementioned Madrid Protocol member countries is to be filed with the United States Patent and Trademark Office as the originating office, with a multi-class trademark application being filed under the Paris Convention in Mauritius. In Malaysia, on the other hand, since it is not legally permissible to file multi-class trademark applications, we shall assume that four separate trademark applications are to be filed under the Paris Convention.

In Malaysia and Mauritius, the duration of a trademark registration is in line with the international standard. A trademark registration in these two countries is valid for ten years from the date of filing of the application and can be renewed for successive ten-year periods.

For the above scenario, the estimated costs of trademark protection under four classes, from filing through registration, add up to approximately $10,400. The costs are based on the assumption that the applications get registered without any objections from the respective Trademark Offices, with no oppositions being filed after publication. As shown in Table 1, the costs are spread across the two different stages of the trademark process: Trademark Filing and Trademark Registration. The costs are inclusive of Value Added Tax (which has been added to the attorney charges in both Malaysia and Mauritius), and are exclusive of the attorney charges for the filing of the international trademark application under the Madrid Protocol.

International Trademark Filing Fees

The estimated costs of filing the international trademark application under the Madrid Protocol are inclusive of the basic international application filing fee, the certification fee charged by the United States Patent and Trademark Office, the complementary fee for the designation of each Madrid Protocol member state of interest (except those in respect of which an individual fee is payable), the supplementary fee for filing in an additional class beyond the third class, and the individual fees in the applicable Madrid Protocol member states.

The complementary fee is applicable to six of the ten jurisdictions (i.e. Kazakhstan, Montenegro, Macedonia, Romania, Serbia, and Russia). Bulgaria, Belarus, Mexico, and Thailand, on the other hand, charge individual fees for the international application, in addition to a fee for filing in each additional class beyond either the first class (Mexico and Thailand) or the third class (Bulgaria and Belarus).

The approximate individual fees vary between $151 in Mexico to $609 in Belarus, while the approximate additional class fees vary between $21 in Bulgaria to $1,272 in Thailand.

Trademark Filing and Registration Costs in Malaysia

The estimated costs of trademark protection in Malaysia are inclusive of the attorney charges for: filing the application in each additional class beyond the first class, handling the priority claim, filing a statutory declaration of ownership, and handling the advertisement and registration of the trademark in each additional class beyond the first class.

Trademark Filing and Registration Costs in Mauritius

The estimated costs of trademark protection in Mauritius are inclusive of the official fees for filing the application in each additional class beyond the second class and the official fee for claiming a priority. The costs are also inclusive of the attorney charges for: filing the application in each additional class beyond the second class, handling the priority claim, registering a Power of Attorney with the Industrial Property Office of Mauritius, and obtaining the registration certificate.

Trademark Cost Calculators

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Venkatesh Viswanath (Senior Content Strategist, Quantify IP) contributed to this article.
Exchange Rates Used: 1 U.S. Dollar = 0.99 Swiss Francs, 34.49 Mauritius Rupees, and 4.14 Malaysian Ringgit
Note: The estimates and fees depicted in this article are based on the Official Fee Schedules as on October 3, 2018