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In a previous article I explained the distinction between brand, trade name and trade name and mentioned the possibility of requesting subsidies for legal consultancy within the framework of a trade mark filing.

Now, for SMEs wishing to register their brand or model can take advantage of the operation "PI check" and receive a refund of a portion of their filing fees. This program is an initiative of the European Commission, EUIPO (European Union Office for Intellectual Property) in collaboration with national IP offices including BOIP for trademarks and models..

Please note that this possibility is limited in time, you can request a PI check for 5 periods. The first period begins on January 11, 2021.:

5 periodes

What expenses are reimbursed?

Only basic rights  can be partially reimbursed:

  • For the registration of a Benelux trademark, 122 euros can be reimbursed (50 % of 244 euros).
  • For the registration of a Benelux model the maximum reimbursement is 75 euros (50 % of 150 euros).
  • The PI check is also used for trademark or model registration applications in the European Union.

The maximum reimbursement is capped at a maximum of 1,500 euros.

You can request a partial refund for several makes and models at the same time. Only basic fees can be partially refunded. For the registration of a Benelux trademark, 122 euros can be reimbursed (50 % of 244 euros). For the registration of a Benelux model the maximum reimbursement is 75 euros (50 % of 150 euros).

Who can request it?

To be eligible for an IP check, your company must meet the official definition of an SME established by the European Commission. The number of employees, turnover and annual balance sheet are among the criteria. Generally :

  1. an SME employs less than 250 people
  2. an SME has an annual turnover of less than 50 million euros
  3. the balance sheet total of an SME does not exceed 43 million euros.

The allocation of the PI check is subject to the following conditions:

  1. The PI check can only be requested by companies that meet the definition of an SME, as established by the European Commission.
  2. The PI check must be requested by the company itself from the EUIPO, using the special form. The IP check cannot be requested by an IP professional who handles your trademark or model registration request.
  3. Each entrepreneur can only request one PI check in 2021. The request may relate to several Benelux or European brands or models.

When to submit your request

Warning : to benefit from the PI check, it is necessary to make an official request to the EUIPO before to file your application for registration of a Benelux or European trademark or model.

If you request a PI check after submitting your trademark or model registration application, you will not be awarded the PI check. It is therefore important to take this into account when planning your requests.

Which procedure to follow?

To benefit from the program, you must complete the following two steps:

  • Request the PI check.
  • Use the PI check (after its allocation by the EUIPO).

During each period, a total grant of € 4 million is made available. PI check requests are processed in order of arrival. It is therefore possible that the stock of PI checks is exhausted by the time you make your request. Do not wait to send your request!

  1. Requests for the allocation of PI checks are made to the EUIPO during one of the aforementioned periods using the specific form (the link to this form can be found in paragraph 7).
  2. Ask for your PI check before submitting your trademark or model registration application to BOIP or EUIPO.
  3. To request a PI check you need the following information:
  4. - Your bank details and a bank account statement mentioning the name of your company as account holder, as well as your IBAN number and your BIC / SWIFT code.
    - Your VAT number
  5. Once your PI Check request has been sent, you will receive an email confirmation with your reference number. This number will be used in all correspondence, keep it carefully! However, it is not necessary to mention this number in your trademark or model registration application (s) with BOIP.
  6. In principle, the allocation of the PI check by the EUIPO takes place within one month. You will then receive an official grant decision. As requests are processed in order of arrival, we cannot guarantee that PI checks will still be available within the given period.
  7. If your request is denied within a certain period, you can submit a new request during another period. If you send multiple requests during the same period, only your first request will be honored.
  8. Your trademark or model registration request with BOIP must be made within 30 days of the official grant decision. If you have not yet received a decision from EUIPO when you register your trade mark or model, you do not qualify for a refund.

How to activate your PI check:

  1. To activate your PI check, click on the link mentioned in the official grant decision that EUIPO sent you. After having attached the proof of payment (provided that the information provided at the time of the request is correct) the amount of the PI check will be paid to you by EUIPO within one month.
  2. Activate payment for your PI check within 30 days of your trademark or model registration request. The refund is not linked to the acceptance of your registration. If your registration request is refused, you can still benefit from the refund.

Conclusion

During a trademark registration, sometimes significant costs (for an SME) must be incurred.

Therefore, before proceeding with the filing, it is important to seek advice and have a prior analysis carried out by an experienced lawyer or jurist.

The aim of this analysis is to find out if it is really interesting for you to register a trademark and if so in which categories to register it and in which geographical area.

It is then necessary to check if the envisaged mark meets the legal conditions and if there are marks registered previously by competitors which could be opposed to the mark which you wish to deposit.

There are also (sometimes), depending on the region or country where your company is located, subsidies allowing you to be reimbursed for part of this legal analysis prior to filing your trademark.

You have questions relating to this subject, do not hesitate to contact me by sending me an email. at the address indicated in the “contact” section.

Sources:

Recover part of the deposit fee (boip.int)

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