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Published on 21 February 2018

In one of our previous articles, Go Green: File Electronically and Pay Reduced Costs, we discussed the 'Go Green' initiatives of Patent offices around the world, in addition to comparing the costs of filing patent applications through electronic and non-electronic means. In this article, we shall discuss the 'eco-friendly' initiatives of Trademark offices around the world. We shall also compare the costs of filing trademark applications through electronic and non-electronic means.

Eco-Friendly Initiatives of Trademark Offices

As the global community strives to conserve energy, reduce pollution, and live sustainably, ‘eco-friendly' has become an undisputed buzzword that is being used in technological innovation and brand promotion across a wide spectrum of sectors and industries.

In an attempt to reduce their carbon footprint, cut costs, and improve efficiency, several National Intellectual Property/Trademark offices across the globe have launched their own eco-friendly initiatives. As part of these initiatives, these offices offer either an incentive (i.e. discounted fees) for paperless (i.e. electronic) filing or impose surcharges for non-electronic filing. The Trademark offices in several jurisdictions, including Cambodia and Qatar, have joined the bandwagon recently.

In fact, when asked about the USPTO's decision to sharply increase the fees for non-electronic filing, Mary Boney, the USPTO Trademark Commissioner, remarked, “Lawyers have got to start filing electronically – if not, it'll cost you” (World Trademark Review; 2016).

How Much Does Eco-Friendly Trademark Filing Cost?

Let us now study the costs involved in filing electronic trademark applications. As is the case with other types of trademark costs, the costs are generally dependent on the number of classes of goods and services under which a trademark application is to be filed.

For the purposes of this article, we shall assume that an application for a word mark specifies three items of goods or services and is to be filed under a single class in the top twenty jurisdictions (excluding Russia): Argentina (AR); Australia (AU); Brazil (BR); Canada (CA); Switzerland (CH); Chile (CL); China (CN); European Union (EU); Hong Kong (HK); Indonesia (ID); India (IN); Japan (JP); South Korea (KR); Mexico (MX); Thailand (TH); Turkey (TR); Ukraine (UA), United States (US); and Vietnam (VN) (World IP Indicators 2016). Also note that the European Union will be considered as a single jurisdiction.

We shall further assume that the United States is the priority jurisdiction and that the applications in the other jurisdictions are to be filed through the Paris Convention.

The estimated official non-electronic filing costs vary from $37 in Ukraine to $1,189 in the European Union, while the estimated official electronic filing costs vary from $37 in Ukraine (no incentive) to $1,011 (15% savings over non-electronic filing) in the European Union.

Summary of Electronic Filing Incentives

Of the 19 jurisdictions, 10 jurisdictions offer a financial incentive for filing trademark applications electronically (Figure 1), with the average estimated savings across the 10 jurisdictions being approximately 19.7%. Turkey and the United States offer the largest incentives for filing electronically, with an estimated savings of around 33% over non-electronic filing. India, Japan, and Indonesia, on the other hand, offer the least incentives, with an estimated savings of around 10%. Some jurisdictions, including the Asian jurisdictions of China, Hong Kong, Thailand, and Vietnam, and the European jurisdictions of Switzerland and Ukraine, do not offer an incentive for electronic filing at this time.

The above costs are inclusive of the official fee for claiming a priority in Brazil, South Korea, and Turkey. The European Union has not been included in the figure, since its inclusion would skew the axis range and diminish the visibility of the other values on the graph.

Customizable Trademark Cost Calculator

Interested in getting such costs calculated? The Global IP Estimator, a flagship product from the stables of Quantify IP, is an international Intellectual Property cost calculator. The Global IP Estimator offers what traditional Intellectual Property docketing software does not - it can instantly and accurately calculate the worldwide costs for a single patent, trademark, design, or utility model. The calculations may be fine-tuned to include or exclude specific fees for various stages in the process (such as patent maintenance fees or trademark filing fees).

The Intellectual Property budgeting capabilities of many law firms and Fortune 500 companies have undergone a significant transformation since the addition of the Global IP Estimator to their toolbox. To see what we can do for you, email us at qipcontact@quantifyip.com, or call us at +1-808-891-0099.

Venkatesh Viswanath (Senior Analyst, Quantify IP) contributed to this article.

Exchange Rates Used: 1 US Dollar = 17.22 Argentine Pesos, 1.31 Australian Dollars, 3.26 Brazilian Real, 1.27 Canadian Dollars, 0.98 Swiss Francs, 6.62 Chinese Renminbi, 0.84 Euros, 7.81 Hong Kong Dollars, 13,521.10 Indonesian Rupiah, 64.54 Indian Rupees, 112.16 Japanese Yen, 1,084.32 Korean Won, 18.65 Mexican Pesos, 32.59 Thailand Baht, 3.91 Turkish New Lira, 27.00 Ukraine Hryvnia, and 22,720.5 Vietnamese Dong.

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