Effective 1 October 2024, IP Australia will implement a revised fee structure for trade mark opposition proceedings, with a particular focus on introducing incremental costs for the inclusion of multiple grounds and prior trade mark rights. These adjustments represent a marked departure from the current framework and will necessitate more precise and judicious strategies in opposition matters. Below, we outline the key amendments to the fee structure and examine their broader implications for trade mark owners.
The full summary of changes to IP Australia fees across all rights can be viewed here.
Key Amendments to the Fee Structure
Grounds of Opposition – Incremental Fees
One of the most significant changes includes the introduction of a $250 fee for each ground of opposition beyond the initial three included in the Statement of Grounds and Particulars (SGP). Previously, opposition proceedings in Australia have permitted the inclusion of multiple grounds without additional financial consequence. This has frequently led to a proliferation of grounds being raised, irrespective of their relative strength or relevance.
Under the new structure, opponents will now be required to pay $250 for each additional ground beyond the third, compelling them to scrutinise the strategic merit of each ground before its inclusion in the SGP.
Example: An SGP nominating sections 58, 60, and 42(b) incurs no additional fees. However, the addition of a fourth ground, such as section 62A, will attract a fee of $250.
Trade Marks Cited Under Section 44 – New Fee Structure
A further substantive change involves the imposition of fees where opponents rely on multiple prior registered or pending trade marks. A fee of $250 will be levied for each trade mark cited beyond the initial ten. This amendment serves to temper the previously unrestricted reliance on multiple trade marks, ensuring that opponents are more selective in the marks they choose to rely upon.
Example: An opponent nominating 20 trade marks under section 44 will incur a fee of $2,500 ($250 for each trade mark beyond the first ten).
Late Filing of Evidence – Fee Introduction
The introduction of a $500 fee for the late filing of evidence in opposition proceedings marks a significant procedural change. This fee applies to the late submission of Evidence in Support, Evidence in Answer, and Evidence in Reply. The imposition of this fee reflects IP Australia’s intent to discourage procedural delays and promote compliance with established evidentiary timelines. It also provides compensation for the administrative burden borne by IP Australia and the other parties involved in addressing such requests.
Hearing Fees – Restructuring
IP Australia has also updated its fee structure for hearings:
- The $400 hearing request fee has been abolished entirely.
- A flat fee of $700 will apply to all oral hearings, regardless of whether they are conducted in person or via video. This replaces the previous hearing appearance fees of $600 (video) and $800 (in person).
- A written submission hearing fee will increase from $400 to $500.
Non-Use Removal Applications – Fee Increase
The fee for applying to remove a trade mark for non-use under section 92 will increase from $250 to $350. This adjustment reflects the rising administrative costs associated with processing such applications and aligns with the broader revisions across IP Australia’s fee schedule.
Increased Costs Recovery for Prevailing Parties
In addition to the fee increases, IP Australia has significantly expanded the potential for costs recovery in opposition proceedings. Previously, successful parties could recover between $3,000 and $5,000 in costs, an amount that rarely reflected the true costs incurred. Under the new structure, costs awards could exceed $10,000, with further increases for more complex or extended hearings, particularly those involving witnesses.
This shift materially alters the financial dynamics of opposition proceedings. The increased risk of substantial adverse costs awards may deter frivolous or weak oppositions, while also incentivising early settlement negotiations. For opponents with strong grounds, the potential for higher costs recovery enhances the attractiveness of pursuing opposition, knowing that a successful outcome will yield a more meaningful financial return.
Managing the Transition: Pre-1 October 2024 Filing Considerations
Given the fee increases, trade mark owners should carefully consider your procedural strategies leading up to the implementation of the new fee structure. The following considerations could be applicable:
- File SGPs early: Where possible, file Statements of Grounds and Particulars, amendments, and late evidence submissions before 1 October 2024 to avoid incurring the new fees.
- Strategically assess grounds: Prior to filing, scrutinise the necessity of each ground of opposition and the number of prior trade marks cited to minimise fees.
- Consider settlement: With the potential for adverse costs awards now significantly higher, settlement discussions should be explored early in the opposition process to avoid the financial risk associated with protracted opposition proceedings.
Next Steps
The impending changes to IP Australia’s fee structure represents a subtle but significant shift for trade mark oppositions. The introduction of incremental fees for additional grounds and trade marks, coupled with increased costs recovery, demands a more considered and strategic approach to opposition proceedings. As the 1 October 2024 deadline approaches, trade mark owners and practitioners should act promptly to ensure that they are positioned to navigate the new structure effectively, balancing procedural efficiency with financial prudence.
For further advice on how these changes may impact your opposition strategy or broader trade mark portfolio, please contact our intellectual property team.
This article was written by Luke Dale, Partner and Christopher Power, Law Graduate.
