Following stakeholder consultation by IP Australia, a number of
changes will soon be implemented to the official fees payable for
various trade mark transactions.
As owners of trade mark registrations will know, a range of fees
apply throughout the different stages of a trade mark's life
cycle from the initial filing right through to renewals. Some of
those fees are payable by 'class', referring to the 45
classes of goods and services under the Nice Classification
The fee changes, introduced by the Intellectual Property
Legislation Amendment (Fee Review) Regulation 2016 which will
amend the Trade Mark Regulations 1995, will bring IP
Australia into line with other international IP offices. In the
long run, the changes will reduce the overall official cost for
trade mark owners to register a trade mark in Australia.
When will the changes take effect?
The majority of the changes will take effect from 10
However, changes to the filing and renewal fees for
International Registrations filed via the Madrid Protocol are
scheduled to take effect from a slightly later date, on 28
What will the changes look like?
Vital changes for trade mark owners are summarised in the table
Filing - National application
The fees to file a national trade mark application will
increase from AU$200 to AU$330 per class.
The fees to file a series trade mark application will
increase from AU$270 to AU$400 per class (to
offset the removal of the registration fee).
The AU$300 per class registration fee will be
The fees to renew a registered trade mark will
increase from AU$300 to AU$400 (to offset the
removal of the registration fee).
Filing – International application (Madrid Protocol)
The fees to file an application for an International
Registration via the Madrid Protocol will be
decreased from AU$420 to AU$350 per class.
The AU$150 fee for a trade mark owner to file a Notice of
Intention to Oppose in response to a non-use cancellation
application filed against their own trade mark registration will be
What should you do now?
If you already own Australian trade mark registrations that are
coming up for renewal in the next 12 months, you may wish to renew
those marks before the fee increase takes effect on 10 October
2016. In Australia, a trade mark registration can be renewed up to
12 months before the actual renewal due date.
If you are on the cusp of filing a trade mark application, you
may be wondering whether to proceed with your application before or
after the changes have taken effect. While some commentators have
suggested postponing seeking trade mark protection until after the
changes are implemented (to avoid paying a registration fee), this
strategy ignores the importance of securing the earliest possible
'priority date' for your trade mark. As a general rule, the
earlier you file a trade mark application, the better off you will
be. This is because the date on which you file your trade mark
application establishes your priority date and this can have a
significant impact on your rights in relation to other trade mark
If you are considering filing a new trade mark application in
Australia, we think the risks of waiting until after 10 October are
outweighed by the benefits of setting yourself up for protection
from the earliest possible time.
This article is intended to provide commentary and general
information. It should not be relied upon as legal advice. Formal
legal advice should be sought in particular transactions or on
matters of interest arising from this article. Authors listed may
not be admitted in all states and territories
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The Ugg boots case revolves around who holds the trade mark rights to the word 'Ugg' in relation to sheepskin boots.
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