South Africa – Anticipated Increase in Official Fees for Trade Marks, Patents and Designs – 1 October 2019
Earlier in 2019, the Companies and Intellectual Property Commission (CIPC) indicated that official fees for South African trade marks, patents and designs were to be increased. In addition, a distinction was in future to be drawn between small and large entities, insofar as the filing and renewal of trade marks, patents and designs are concerned.
We initially expected that the fee increase would be effective as from 1 July 2019, but were later advised that the changes were on hold. We have now been advised that the date of implementation is likely to be 1 October 2019.
Our understanding is that the official fees for trade marks, patent & design applications, and for corresponding renewals, will increase significantly insofar as large entities are concerned. In addition, a general 5% official fee increase will be applied to all other official fees, and provision is to be made for a regular annual increase of 5% going forward.
The anticipated revised official fees for applications and renewals are set out below. These are subject to confirmation once the changes have been officially promulgated.
The proposed definition of a small entity is complex and is based on the definition of a “small enterprise” as contained in the National Small Enterprise Act, No. 102 of 1996, as amended. In many instances it may be difficult to ascertain readily whether an applicant qualifies as a small entity. We are of the view (at this stage at any rate) that it may be preferable to pay official fees at the large entity rate unless one is absolutely certain that the applicant qualifies for the lower rate.
Furthermore, our understanding is that applicants claiming small entity status will be required to lodge a prescribed declaration attesting to the fact that they qualify for the reduced rates, at the time an application is filed (or possibly within a few months of filing). Similarly, owners renewing and wishing to take advantage of the small entity reductions will likewise be obliged to lodge a declaration attesting to the fact that they comply with the requirement for small entity status, at the time of making a renewal payment. If no such declaration is lodged, large entity rates will apply.
Our recommendation is that owners (other than individuals) of trade mark, patents and design registrations that fall due for renewal after 1 October 2019 consider renewing prior to this date, if possible. A further alternative is to consider renewing the relevant patents and design registrations to term. Should you require further information in this regard, please contact P.Renewals@spoor.com (for patents and designs) and TMRenewals@spoor.com (for trade marks) for a cost estimate.
We will keep you apprised of developments in this regard.