As highlighted in recent announcements, IP Australia is set to implement significant changes to its fees and allowance schedule, including trade mark opposition fees, starting from 1 October 2024.
These adjustments will have a significant impact on trade mark owners, and are particularly relevant for those engaged in trade mark oppositions in Australia.
Key changes to fees – Oppositions
Currently, the opposing party is able to include as many grounds within its Statement of Grounds and Particulars as are applicable and rely on numerous trade marks within that Statement of Grounds and Particulars without incurring additional fees.
From 1 October 2024, the new fee structure will mean increased costs for the opposing party:
- for Grounds of Opposition: three grounds are included and a fee of $250 will be charged for each additional ground in the Statement of Grounds and Particulars
- for prior trade marks: the first 10 are included, and a fee of $250 fee will apply for each additional prior trade mark.
There are a handful of other relevant changes to existing fees. They are:
- Filing for the removal of a trade mark for non-use will increase from $250 to $350
- Request for a hearing via written submission will increase from $400 to $500
- Request for an oral hearing will increase from $600 to $700
- Request for a decision to issue on a matter outside of a hearing has been repealed, from a fee of $400
- Filing late evidence in an opposition proceeding will now incur a fee of $500.
Key changes to costs – Oppositions
The fee adjustments reflect not only an increase in the cost of conducting a trade mark opposition in Australia, but also provide for greater recovery of costs to the successful party. The successful party in opposition cases will see a significant increase in recoverable costs, with awards potentially doubling.
How to minimise costs
Parties can minimise the impact of the new changes by considering the following:
- if appropriate, filing non-use applications, Statements of Grounds and Particulars, Statement of Grounds and Particulars amendments, and late opposition evidence prior to 1 October 2024 (although we note that late opposition evidence is rarely accepted in Australia)
- for hearings held by written submissions or orally, filing and paying for the hearing request prior to 1 October 2024.
The full summary of changes to fees across all rights can be viewed here.
How we can assist
Please contact any of our trade mark experts for a discussion on the repercussions that these changes may have on your brand portfolio and the protection of your trade mark rights in Australia.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.