Trademark Protection Costs in Europe: Southern Europe

Published on 28 April 2019

In our previous article, Patent Protection Costs in Europe: Southern Europe, we illuminated the costs of protecting inventions and innovations (i.e., the costs of patent protection) in the Southern European economies of Greece, Italy, Portugal, and Spain. In this article, we shall delve into the costs of brand protection (i.e., the costs of trademark filing and registration) in the top Southern European economies.

Southern Europe

For the purposes of this article, the region of Southern Europe refers to the region encompassing the following countries and territories: Albania, Andorra, Bosnia and Herzegovina, Croatia, Gibraltar, Greece, Italy, Malta, Montenegro, Portugal, San Marino, Serbia, Slovenia, Spain, the Former Yugoslav Republic of Macedonia, and Kosovo. This classification is in line with that followed by the Department of Economic and Social Affairs of the United Nations.

Trademark Filings in Southern Europe

In the year 2016, the National Intellectual Property/Trademark Offices of Albania, Andorra, Bosnia and Herzegovina, Croatia, Greece, Italy, Malta, Montenegro, Portugal, San Marino, Serbia, Slovenia, Spain, and Macedonia collectively received close to 275,000 trademark applications, with about two-thirds of the total trademark applications being filed with the Italian Patent and Trademark Office and the Spanish Patent and Trademark Office. Along with Italy and Spain, Portugal was the only other jurisdiction to receive more than 25,000 trademark applications.

However, as the countries of Croatia, Greece, Italy, Malta, Portugal, Slovenia, and Spain are also 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. These figures are based on the numbers in the World Intellectual Property Indicators 2017 report published by the World Intellectual Property Organization.

How Much Does Trademark Protection Cost in Southern Europe?

Let us now discuss the costs involved in protecting trademarks in the top three Southern European economies (i.e., Italy, Portugal, and Spain) and, subsequently, getting them registered. Typically, 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 the 'International Classification of Goods and Services' (Nice Agreement Eleventh Edition – Version 2018) contains 34 classes for goods and 11 classes for services.

It is legally permissible to file multi-class trademark applications in all three jurisdictions. While a trademark registration in Italy and Spain is valid for ten years from the date of filing of the application, a trademark registration in Portugal is valid for ten years from the date of registration.

Let us consider a trademark application for a word mark 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 further consider that the services are to be described on a single page, which is to be translated into Italian, Portuguese, and Spanish.

The estimated costs of trademark protection under four classes in Italy, Portugal, and Spain, from filing through registration, are approximately $5,700. 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.

Trademark Filing Fees and Translation Costs

In all three jurisdictions, the estimated trademark filing costs are inclusive of the official fees for filing a trademark application in each additional class beyond the first class and the attorney charges for handling the priority claim. In Italy and Spain, the costs are also inclusive of the official fees for claiming a priority, in addition to the attorney charges for handling the application in each additional class beyond the first class.

Further, the trademark filing costs are also inclusive of the costs of translating the single page of the description of services into the respective official languages (i.e., Italian, Portuguese, and Spanish), which vary from $63 in Spain to $75 in Italy.

'Go Green' Incentives for Electronic Filing

The estimated trademark filing and registration costs are inclusive of the Go Green incentives offered by the Portuguese National Institute of Industrial Property for filing the trademark application electronically and the Spanish Patent and Trademark Office for filing the trademark application electronically and paying the trademark registration fees electronically.

While the Spanish Patent and Trademark Office offers a 15% discount on its official fees, the Portuguese National Institute of Industrial Property offers a substantial discount of 50% on its basic trademark filing fee and the fee for filing an application in each additional class beyond the first class. Both these fee reductions are in line with the fee reductions offered by the respective Offices for patents.

The Italian Patent and Trademark Office, on the other hand, does not offer any incentive for electronic trademark filing (unlike the heavy incentives offered by the Office for electronic patent filing).

Trademark Registration Fees

An official fee is charged in the registration stage in all three jurisdictions. In Spain, the estimated trademark registration costs are inclusive of the attorney charges for handling the issuance of the trademark in each additional class beyond the first class.

The Madrid Protocol and the International Trademark System

All three jurisdictions 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 of recordal of the mark in the International Register and can be renewed for successive ten-year periods.

International Trademark Protection Costs in Southern Europe

We shall now assume that a multi-class international trademark application designating Italy, Portugal, and Spain is to be filed under the aforementioned four classes with the United States Patent and Trademark Office as the originating office. For this scenario, the estimated costs of trademark protection are approximately $1,550. The costs are exclusive of the attorney charges for the filing of the international trademark application under the Madrid Protocol, and 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.

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 Portugal and Spain, the supplementary fee for filing in an additional class beyond the third class in Portugal and Spain, the individual fee for the designation of Italy, and the fee for filing in each additional class beyond the first class in Italy.

International Trademark Cost Calculators

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