IP Australia is poised to implement important changes to its fee and allowance schedule, including adjustments to trademark opposition fees, starting from 1 October 2024. These updates will have a substantial impact on trademark owners, particularly those engaged in opposition proceedings. Understanding these changes is essential for businesses and individuals navigating trademark registration and disputes in Australia.
Key Changes to Opposition Fees
Currently, opposing parties can rely on multiple grounds and trademarks within their Statements of Grounds and Particulars without incurring additional charges. However, from 1 October 2024, the fee structure will change, introducing new costs for those involved in trademark oppositions:
- Grounds of Opposition: Opposing parties can include up to three grounds in their Statement of Grounds and Particulars. For each additional ground, a fee of $250 will be charged.
- Prior Trade Marks: The first 10 prior trademarks can be cited without extra fees, but any additional prior trademarks will incur a fee of $250 per trademark.
These changes are designed to streamline the process and manage costs, but they will result in higher expenses for opposing parties who use extensive grounds or trademarks in their challenges.
Other Fee Adjustments
In addition to opposition fees, several other fee changes will take effect:
- Filing for Removal of a Trade Mark for Non-Use: The cost will increase from $250 to $350.
- Request for Hearing via Written Submission: The fee will rise from $400 to $500.
- Request for Oral Hearing: The cost will increase from $600 to $700.
- Request for Decision Outside of a Hearing: This option, previously available for $400, has been repealed.
- Filing Late Evidence in Opposition Proceedings: A new fee of $500 will be applied for filing late evidence.
These adjustments reflect the increasing administrative and legal costs associated with trademark proceedings and aim to better align IP Australia’s fees with the complexity of modern opposition cases.
The changes to opposition fees also include provisions for the recovery of costs by the successful party in opposition cases. These costs are set to increase significantly, potentially doubling in some cases. This adjustment is intended to provide greater cost recovery for parties who successfully defend their trademarks in opposition proceedings, making the process more equitable.
