IP Australia’s October 2024 Fee & Costs Award Review Brings Some Good News on Trade Mark Matters
IP Australia recently announced changes to its fee structure as well as to its schedule of recoverable costs in oppositions and similar matters, which come into effect on 1 October 2024. It is IP Australia’s first update since October 2020 which is in line with the agency’s four-year fee review policy.
The update contains a number of official fee changes involving trade marks, patents, designs and plant breeder’s rights and it follows a 15-month review process which included extensive industry and public consultation.
In my view, the most welcome (and long overdue) adjustment is the dramatic increase in costs that can now be recovered in opposition/removal proceedings and other similar matters. These levels had not changed in many years and historically, costs had been far too low in relation to the actual costs incurred by the parties involved. Thankfully, this update will go some way to levelling the playing field.
How does IP Australia’s fee review affect trade mark matters?
As a trade marks attorney, I was obviously most interested in how trade mark matters in particular would be impacted by this official fee review.
In the October 2024 update, some trade mark fees remain unchanged, others have decreased (in one instance, the fee has been removed altogether). To be fair, the couple that have decreased are not ‘run of the mill’ fees, but fees that very few would incur. Additionally, some new fees have been introduced.
As mentioned, my view is that the most welcome announcement of this update is the increase in costs that can be recovered by a third party if their opposition proceedings are successful, or, by the Applicant if they are successful in defending an opposition.
The increases range from 50% to 385% – and although the costs that can be awarded may remain below the actual costs incurred in opposition matters, the new structure is nevertheless a timely improvement. This significant change may deter parties from filing oppositions that are perhaps frivolous. We are aware that some opponents do file simply in the hopes the applicant does not defend the opposition. With the possible costs to be awarded against an unsuccessful party rising so dramatically, we hope this may lead to fewer such oppositions, or, perhaps motivate parties to settle these disputes.
Changes to IP Australia’s fee structure for trade marks
IP Australia reviews its fees every four years.
Full details of its Cost Recovery Implementation Statement (CRIS) can be found on IP Australia’s website. The full details of the fee changes and cost recovery changes can be seen here and here, but in the meantime, here’s a snapshot of some of the changes:
- Trade mark filing fees remain unchanged
- Fee for a request for a hearing by the Registrar of Trade Marks decreased from $400 to zero
- The fee for an oral hearing in person (for each day or part thereof) decreased by $100 to $700
- $100 fee increase for filing an Application for Removal of a Trade Mark
- New $500 fee for late filing of evidence in opposition proceedings
- New fee structure for trade mark opposition fees, including the introduction of a $250 fee for each additional ground asserted beyond the first three. In the past, opponents could assert multiple grounds at no extra cost.
- New $250 fee for every pending or registered trade mark after the tenth trade mark that is relied upon in opposition matters
New fee structure for trade mark opposition fees
While I believe that the most notable change in the October 2024 fee schedule is the significant increase in costs recoverable for trade mark opposition matters (which applies to opposing a trade mark application as well as opposing the removal of a trade mark on non-use allegations), another key adjustment is the introduction of a $250 fee for each additional ground asserted after the first three have been asserted.
This additional fee may result in opponents being more cautious and more strategic in their use of grounds, because they will no longer be able to assert multiple grounds at no extra cost. This fee will also apply when a party amends their Statement of Grounds and Particulars in a away that would result in more than three grounds being nominated.
The $250 will also be partially recoverable as an out-of-pocket expense (capped at $500) should costs be awarded to the opponent.
More information on IP Australia’s updated CRIS
If you have any queries about the new fee schedule or want to discuss any aspect of trade marks and our fees, you’re welcome to have an obligation-free chat with one of our friendly experts at MMW Trademark Services. We have built a reputation for affordable legal services in the field of trade mark law – so please get in touch via our website or by calling us on 03 8288 1432.
