Changes to IP Australia's official fees will take place from 10 October 2016. Below is an outline of the fee changes with a focus on trade marks.
Background to Review
A significant fee review has recently been undertaken by IP Australia of the official fees charged in respect of trade marks, patents, industrial designs and plant breeder's rights.
IP Australia's review was undertaken, among other things, to:
- streamline the current fee structure;
- ensure that its fees are internationally competitive; and
- boost innovation and consequent economic activity in Australia by adopting a fee structure that increases the economic value of rights in intellectual property (IP) and reduces the overall cost burden in the early stages of securing the registration of IP in Australia.
Following the review, a new fee structure will take effect from 10 October 2016. Also, changes to the fees payable in respect of Australian designations of international trade mark applications and registrations (Madrid Protocol) will come into effect on 28 October 2016.
Trade Mark Fees
With respect to trade marks, the most significant changes are briefly detailed below:
Combined filing and registration fee
The filing fee per class will be $330 (rather than $200). No registration fee (currently $300) will be payable. This has the effect of reducing the official fees for a single class application from $500 to $330, a significant reduction.
The removal of the registration fee will simplify the registration process and allow a trade mark to achieve registration automatically once the two months opposition period has expired or an opposition is decided in an applicant's favour.
This fee change also brings Australia into line with the vast majority of members of the Madrid Protocol and eases the administrative burden on businesses to pay registration fees that often fall some months or even years after the original filing date. In other words, it extinguishes the scenario of "lapsed-accepted" marks where an applicant fails to pay the relevant registration fee for any reason. It also serves to harmonise Australia's local application system with its Madrid Protocol obligations under which only an upfront filing fee is payable by applicants.
Increased renewal fee
The new fee schedule increases the renewal fee from $300 to $400 per class. Although this is an increase, it offsets IP Australia's reduced fee for new applications. It also has the effect of a registered trade mark owner paying a more significant renewal fee in circumstances when, after 10 years of use, the relevant trade mark may have accumulated some brand equity with the additional cost somewhat immaterial in those circumstances.
As the new fees will come into effect on 10 October 2016, trade mark owners who have registrations due for renewal in the next 12 months (i.e. registrations that fall due for renewal in the statutory 12 months renewal period) are encouraged to renew before that date to take advantage of the current renewal fee of $300 per class.
In this respect, we also encourage holders of international registrations (Madrid Protocol) that designate Australia to take steps to renew their registrations early.
Accordingly, if your Madrid Protocol registration is due for renewal on or before 28 April 2017, we would recommend that you renew the mark before 28 October 2016.
Other fee reductions/waivers
There are also other savings by way of fee reductions/waivers, which are included in the full schedule of trade mark fee changes below.