Amid the excitement of the Olympics, another eagerly anticipated quadrennial event has rolled around: IP Australia’s fee updates.  Australia’s intellectual property administrators announced several changes to trade mark, design, and patent fees that will take effect starting 1 October 2024.  It is important for trade mark owners and professionals in the intellectual property field to be across these changes before they are implemented. The full update is available here.

Key changes to trade mark fees
  1. New fees for statements of grounds and particulars: A new fee structure has been introduced for filing or amending a statement of grounds and particulars (SGP) in trade mark oppositions.  A fee of $250 will now apply to the fourth and each subsequent ground claimed in an SGP.  Notably, when a section 44 ground has been included, a section 58A ground will not be considered an additional ground under this fee structure as it is considered to be an extension of section 44.  Further, there will be an additional fee of $250 charged for each of the 11th and further trade marks claimed to be substantially identical or deceptively similar to an opposed mark. These changes emphasise the importance of constructing precise and well-considered SGPs to avoid unnecessary costs.
  2. Increased fees for applications for removal: The fee for applying for the removal of a trade mark from the Register of Trade Marks for non-use has increased from $250 to $350.  
  3. Simplification of trade mark hearing fees: IP Australia has revised its fee structure for trade mark hearings, eliminating the fee for requesting a hearing and setting a flat rate of $500 for hearings by written submissions.  For oral hearings, whether in-person or via remote appearance, the uniform fee is now $700 per day (or part thereof).
  4. Late filing of evidence fee: A new fee of $500 has been instituted for the late filing of evidence in opposition proceedings.  This fee underscores the importance of meeting procedural deadlines and encourages parties to manage their cases efficiently to avoid additional costs.
  5. Updated schedule of awarded costs: Alongside these fee changes, the costs and expenses that may be awarded in hearings have also been updated.  While some items have increased significantly, these changes are unlikely to match the actual expense of opposition proceedings.  Nevertheless, these costs can be awarded against an unsuccessful party in an opposition proceeding, so the increase is material.  The full schedule of updated costs can be accessed here.
How these changes affect you

These updates necessitate careful planning and consideration by brand owners and legal professionals, particularly for contentious matters.  With increased fees and new charges, it’s crucial to have a team well versed in IP portfolio management and enforcement on your side.  Avoiding unnecessary filings, adhering strictly to deadlines and seeking expert advice on opposition matters can act to significantly mitigate the financial impact of these changes.

If you are concerned about how these updates might affect your trade mark rights or if you have pending actions that could be affected by the new fee structure, please contact our expert Digital & IP team.

You can read our recently published Australian chapter in The Global Legal Post Luxury Law Guide here.