How Much Does It Cost To Oppose A Trade Mark?

The cost to oppose a trade mark depends on a number of factors and can vary widely.  If you are not represented by an trade marks attorney or solicitor it can, technically, cost as little as $250.

If you are represented by a trade marks attorney or solicitor, fees will range due to these factors, and particularly whether the opposition is defended, whether the parties settle or whether the proceeding goes all the way to a decision being issued by the trade mark office. .

Broadly speaking, the cost for a trade mark opposition can be broken down into two kinds of fees.

There are official fees that are charged by the government which are fixed, and there are professional fees that are charged by your attorney (assuming you have representation).  We always recommend enlisting support from a trade marks attorney in order to get the best possible outcome.

Official fees for a trade mark opposition

IP Australia is the government agency which administers intellectual property rights and legislation for patents, trade marks, design rights and plant breeder’s rights.  It reviews its fee structure every four years with the most recent update coming into effect on 1 October 2024.  This included some new fee structures for trade mark opposition fees, some reduced fees and some fees being eliminated altogether.

One of the key changes was the introduction of a $250 fee for each additional ground asserted beyond the first three in a trade mark opposition matter.  Previously, opponents could assert multiple grounds (after the first three) at no extra cost.

For more information about IP Australia’s new fee structure and trade mark fees in particular, have a read of this article on how much it costs to oppose a trade mark, click here  or visit IP Australia’s website.

IP Australia charges an official fee of $250 to file an opposition to the registration of a third party’s trade mark, plus the new $250 per ground past the first 3 discussed above. Towards the end of an opposition proceeding (assuming it goes to a hearing), there are other official fees which are determined by the type of hearing requested. 

If you wish for a hearing by way of written submissions, the official fee is $500.  If you wish to appear in person at a hearing, the official fee is $700 per day (or part thereof) and $700 for each additional day.  This fee was reduced by $100 (down from $800) in the October 2024 fee update. However, ‘in person’ hearings have become increasingly rare.  Hearings generally take a day or less.

Alternatively, you can request a hearing by way of oral submissions via video or telephone conference in which case the official fee is $700 per day or part thereof.   Hearings typically take less than a day.

As mentioned, there is now a $250 fee payable for each additional ground asserted after the first three grounds, as well as a new $250 fee for every pending or registered trade mark after the tenth trade mark that is relied upon in certain grounds of opposition matters.

Finally, official fees also need to be paid if you seek extensions of time.  Those fees are a minimum of $150 per month. The new schedule also introduces a $500 official fee for filing late evidence in an opposition proceeding.

Why deadlines are important

We strongly encourage our clients to meet all the relevant deadlines if they’re able to do so, because extensions are not automatically granted and are generally only given in exceptional circumstances.  Adhering to deadlines ensures that you won’t have to pay extension fees and won’t need to worry whether or not the extension will be granted.

If an extension is sought, the other party can object to the extension, which may lead to a separate hearing simply to decide whether the extension is allowed or not.  That would mean those hearing fees mentioned above (plus professional efes) would be applicable simply to determine whether an extra little bit of time is granted.

In summary, the official fees for an opposition are quite modest, ranging anywhere from $250 up to about $1 000, assuming a hearing is requested and assuming the hearing doesn’t go for longer than a day, which is generally the case.

How much are professional fees for a trade mark opposition?

The main expense in an opposition proceeding are professional fees, which are the fees that your trade marks attorney or solicitor charges. At MMW Trademark Services, we have a hybrid fee structure, meaning that some of our fees are fixed whilst other costs are based on the time we spend on the matter.

Fixed fees apply to the predictable stages of an opposition proceeding, such as filing a notice of intention to oppose (or notice of intention to defend an opposition filed against a client’s trade mark application) and preparing a statement of grounds and particulars.

Opposition proceedings involve various evidence phases, and at times will involve communicating with the other party in an attempt to settle any dispute. These stages are charged on the basis of time spent, and our hourly rates typically apply (being $330 per hour for our principal attorney or $275 per hour for our other attorneys’ time).  

Different attorneys and IP lawyers will charge different hourly rates and this is where the costs can – and do – vary wildly. The time involved depends on the nature and complexity of the dispute and on a variety of other factors. For example, if the parties are attempting to negotiate a settlement, there’ll be costs for the negotiations but if parties settle early in the proceedings, your overall opposition costs would be minimised.

Typically, if the parties are genuine in their attempts to resolve the dispute the opposition will be placed into a cooling off period so as to suspend any formal deadlines whilst the negotiations occur. In the unlikely event a cooling off period is not in place it might mean negotiating at length and at the same time having to progress the opposition by filing evidence and in that case you could see higher costs. But that doesn’t mean you shouldn’t pursue a settlement if it’s commercially sensible, but it does mean that costs can be higher.  The cost can also vary depending on the volume of evidence that’s filed by both sides.  Even if you try to keep your evidence minimal or at least as minimal as possible, you never know what’s going to come from the other side. It’s not uncommon that we see thousands of pages of evidence being filed by counter parties, and it can be very time consuming to review it. We always give clients forewarning when we receive voluminous evidence.  Obviously that would take more time than reviewing evidence that is more succinct.

Where can extra costs be incurred during a trade mark opposition?

Sometimes parties engage in strategies to strengthen their position (which is sensible), such as trying to amend their trademark application in the course of an opposition. 

If it is a completely ordinary amendment that doesn’t require scrutiny, then that’s fine. But if the amendment could potentially affect the outcome of the opposition, then it’s crucial to review it thoroughly as you may actually want to oppose that amendment where opposition is available.  Effectively, this means you are running two oppositions on different matters/reasons, which inevitably leads to higher costs.  If nothing else, such a strategy, if employed by a counter party, can alter the course of an opposition and the advice connected to the prospects for success.

These types of factors make it hard for the MMW Trademark Services team to give our clients an accurate overall cost estimate for how much an opposition will cost. We don’t know if it will settle. We don’t know how complex and voluminous the evidence will be. What’s more, some factors are not actually predictable. You just never know what’s going to happen. However, we do try and provide our clients with stage-based cost ranges.  We suggest that a proceeding that does go all the way to a decision can cost anywhere from around $5000 to about $20,000 depending on these factors, but, also largely depending on whether we brief a barrister to represent a client at the hearing stage of the process.

Costs associated with each stage of a trade mark opposition

The first stage of the opposition is filing the initial documents. Essentially that is the filing of a notice of intention to oppose (when you are the Opponent), followed by the filing of a statement of grounds and particulars. If the Applicant files notice that they intend to defend your opposition after that, you need to file evidence in support of your case if you’re an opponent. Typically preparing evidence in support would see around 8 hours involvement, but if it was a very simple case it could be as little as 3 hours, whilst in a more complex case, the time involved could be upwards of 10 hours.  Our approach is to ask the client to give us detailed instructions about the facts so that we can give them a more accurate cost estimate at the outset.

The cost estimate might also be updated as you go along the stages. For instance, you might think it will take three hours to review the evidence from the other side, but that really is subject to what evidence is presented.  As mentioned earlier, if we get thousands of pages, then it’s unlikely we are going to be able to review it and advise the client in a three-hour timeframe.

In a nutshell, we encourage clients to contact us as soon as possible and give us as much information as they can about the case, as well as provide any communications that may have occurred between the parties before the opposition has commenced.  This helps us to give our clients a more accurate cost estimate based on their specific situation.  Remember, there are also costs associated with the hearing in addition to the official fees, and that will depend on whether the client attends the hearing.

Will I need to pay for a barrister to assist with my trade mark opposition matter?

If you attend the hearing, then we may recommend engaging  a barrister at fees which can vary from around $5 000 up to around $12 000.  If you are relying on written submissions rather than an oral hearing, you might see costs at a lower range whereas the fees to engage a barrister to draft those submissions and represent you at an oral hearing may be at the higher end.  These fees may also, of course, fluctuate depending on who is engaged.

These aren’t unusual fees for a hearing, however, are not costs you are forced to incur. If the counter party requests a hearing, you do not have to participate (even if it would be recommended). Or, if a counter-party requests a hearing by way of oral submissions (being most expensive), you could opt to file only written submissions to save some of the cost.  In summary, there are a lot of variables in quoting for opposition costs.

A summary of trade mark opposition costs

In conclusion, it may cost as little as $250 or it could be $15 000 or more to prosecute a trade mark opposition depending on all the various factors we’ve mentioned.  When clients initially hear those figures, they are often shocked and we understand and appreciate this response.  However, it is worth noting that costs are staggered, as oppositions usually take 18 months or longer (assuming you go all the way to a hearing a decision). The unsuccessful party may also be ordered to pay the successful party some costs.  It’s worth noting however, that these are in accordance with a set scale and may not cover all costs incurred. As set out in our earlier article, October 2024 also saw a drastic increase in the costs that might be awarded, which can be seen here. Therefore, proceedings that have commenced since that time will allow successful parties to recoup a much larger portion of costs than under the previous scale.

As noted above, our office has fixed fees for certain stages of the proceedings. Where fees are charged by the hour, these will be estimated as accurately as possible along the way.

Should I file written submissions for a decision in an opposition or should I attend a hearing?

This very much depends on the matter and on client. If costs are not an issue, it may be our recommendation to have Counsel appear at the hearing via telephone or video conference – particularly where the other party has requested a hearing of this kind or indicated that they intend to appear at one.  

The reason for this recommendation is because you never know what the other side is going to say at the hearing.  And even if you decide not to appear at the hearing, that doesn’t stop the other side from being there. Essentially, if the other side is being represented at an oral hearing, you want to level the playing field.  This will ensure you have someone on your side to provide counter arguments or facts to support your case. Most oppositions are complex, however, there are times where they are somewhat simple such that it may not be necessary to file submissions or attend a hearing and therefore it may be reasonably ‘safe’ to avoid these costs.

If you are considering opposing another party’s trade mark application, please contact us.  The experienced MMW Trademarks Services team would be more than happy to review your situation and provide a preliminary assessment at no cost, and with no obligation.