How Much Does It Cost To Oppose A Trade Mark?
The cost to oppose a trade mark can vary widely, depending on a number of factors. If you are represented by a trade marks attorney, it could cost $1000 or it could cost $15,000 due to these factors.
Broadly speaking the cost can be broken down into two kinds. There are official fees that are charged by the government, and those are fixed, and there professional fees that are charged by your attorney, assuming you have representation, which of course we recommend. In terms of official fees, there’s an official fee of $250 to file an opposition to registration of a third party’s trade mark. Then, toward the end of an opposition proceeding, assuming it goes to a hearing, there are official fees to request or appear at a hearing. The fees for this stage are determined by the type of hearing requested. This is quite new for IP Australia. Up until very recently there was a single hearing fee, but now they are charging different fees now, depending on the kind of hearing that you want to request.
For example, if you wish to appear in person at a hearing the official fee is $800 per day. However, you receive a discount of $400 if you had already paid the hearing request fee, which means you’re talking about a total of $800 to request a hearing and appear in person. Assuming it’s a day or less, which is generally the case. We’ve never had an opposition hearing that went for longer than a day.
Alternatively, you can request a hearing via video or telephone conference, and that’s the case for all hearings currently because of the COVID restrictions. And in that case, the official fee is $600 per day. And again, that would be reduced down to $200 if you’ve already paid your $400 request fee. So, you’re looking at a total of a $600 fee to request a hearing and appear by video link or telephone link.
Alternatively, if you don’t want to have a formal hearing and you just want to file written submissions, you still need to pay a fee for that hearing by way of written submissions, and that’s a $400 fee. It’s worth noting that it’s not possible to avoid paying an official fee at the end if you wish to have a decision, because there’s now a fee of $400 for a decision to be issued. So, we do advise clients to at least request a hearing on the written record. That way you can file submissions in support of your case, because you’re going to have to pay an official fee anyway.
Finally, there are also official fees if you seek extensions of time to do certain things, such as file evidence, and those extension fees are $150 per month. We do strongly encourage clients meet all the relevant deadlines if they’re able to do so, because extensions are not automatically granted and they are generally only given in exceptional circumstances. Under COVID-19 sometimes it simply isn’t possible for people to meet deadlines and that’s perfectly understandable, but subject to exceptional circumstances, we do recommend people simply meet their deadline so they don’t have to pay those fees, and they don’t need to worry about 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 – which means, those above hearing fees applicable just to determine whether an extra little bit of time is granted.
In summary, the official fees for an opposition are quite modest, and they range anywhere from $650 up to just over $1,000, assuming the hearing doesn’t go for longer than a day, which is generally the case. The main expense in an opposition proceeding are professional fees, which are the fees that your attorney charges. At Mark My Words, we have a hybrid fee structure, meaning that some of the costs we charge are fixed fees and other costs are based on time spent. Fixed fees apply to 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 attempt to settle any dispute. These stages are charged for on the basis of time spent, and that’s at an hourly rate of $275 with our office. Different attorneys and IP lawyers will charge different hourly rates. And this is where the costs can and do vary wildly. The time involved varies greatly depending 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 then there’ll be additional costs for the negotiations, and depending on what stage of the proceedings those negotiations occur. For example, if they settle early in the proceedings that means that your overall opposition costs would be minimised.
However, if you’re negotiating at length, and at the same time having to progress the opposition by filing evidence, then you could see higher costs than you would otherwise. But it doesn’t mean you shouldn’t pursue a settlement if it’s the commercially sensible thing to do, but it does mean that cost can be higher. Cost can also vary depending on the volume of evidence that’s filed by both sides. So, even if you try to keep your evidence minimal or 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 that. We always give clients forewarning when we receive voluminous evidence and seek their instructions as to whether or not they want us to review it in detail.
Obviously that’s going to take more time than it would to review evidence that is more succinct. Another factor that can lead to cost more are the tactics that are employed by the other side. Sometimes you have parties engaging in tactics, such as trying to amend their trademark application in the course of an opposition. If that’s a completely ordinary amendment that doesn’t require scrutiny, then that’s fine. But if it’s an amendment that would potentially affect the outcome of the opposition, then you really want to have a good look at it, and you may actually want to oppose that amendment, so effectively you’re running two oppositions, which inevitably leads to higher costs. It’s these factors that make it hard 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.
And those are just some of the factors that go into play. Some factors are not actually predictable. You just never know what’s going to happen. We do try and provide our clients with stage based cost ranges. So, the first stage of the opposition is filing those 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. And we would give an estimate to the client based on the complexity of the case. For example, if it’s a simple proceeding it could be a three hour involvement to prepare that estimate, in a more complex case it could be 10 hours or more. So, what we would do is really ask the client to give us detailed instructions about the facts so that we can give them an accurate cost estimate at the outset.
The cost estimate might be updated as you go along. 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 comes from the other side. As mentioned above, if you get thousands of pages then it’s unlikely you’re going to be able to review it and advise the client in a three hour timeframe. So, 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, and any communications that have occurred between the parties before the opposition has commenced, so that we can give them an accurate cost estimate based on a very specific situation. And then of course there are costs associated with the hearing in addition to the official fees, and that will depend really on, again, whether you attend the hearing.
If you attend the hearing, then you may have to engage a barrister, and in that case you might have barrister’s fees and they can vary from $4,000 up to $10,000. If relying on written submissions rather than an oral hearing you might see that lower range, to engage a barrister to draft those submissions and attend the hearing may be at the higher end. Fees fluctuate from barrister to barrister. Those aren’t unusual fees for a hearing, but it would be certainly less if you don’t engage a barrister and your attorney presents your case at the hearing. And of course, if you just file written submissions and you don’t attend the hearing, then the cost would be lower. So, there’s a lot of variables in quoting for opposition costs.
In conclusion, it may cost $1000 or it could be $15,000 or more depending on the various factors. Of course, when we say this to clients we are met with shock, which we can appreciate. It is worth noting that costs are staggered, as oppositions take (assuming you go all the way to a hearing a decision) 18 months or longer. The unsuccessful party may be ordered to pay the successful party some costs – however, these are in accordance with a set scale and do not cover all costs incurred.
As noted above, our office has fixed fees for certain stages of the proceeding. Where fees are charged by the hour these will be estimated best as they can be 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 client. Our recommendations, if costs are not an issue is to appear at the hearing via telephone or video conference. Particularly where the other party has requested a hearing or indicated they intend to appear at one. When we say for the client to appear, we mean via their representatives. We suggest this because you never know what the other side is going to say at the hearing, and if you don’t appear at the hearing that doesn’t stop the other side from appearing at the hearing. Essentially, if the other side is being represented at an oral hearing you want to ‘level the playing field’ so to speak; to be sure you have someone on your side to provide counter argument or facts to support your case. Of course, if you have a very straightforward case and you’re very confident that you’re going to succeed, whatever rabbit the other side might try to pull out of a hat so to speak, you may determine that it is not necessarily cost-effective to attend the hearing.
If you are considering opposing another party’s trade mark application please contact us and we are happy to review your situation and provide a preliminary assessment at no cost, and with no obligation.
