IP Australia is set to implement changes to its schedule of fees, with most of the changes taking effect from 1 October 2020. This article considers changes specifically to trade mark fees; however changes also apply to patents, designs and plant breeder’s rights. A complete list of the fee changes can be accessed here.
Following IP Australia’s public consultation in 2019 and a 2016 inquiry by the Productivity Commission into Australia’s intellectual property arrangements, IP Australia has made a number of amendments to the Intellectual Property Laws Amendment (Fee Amounts and Other Measures) Regulations 2020 (Cth)).
The fee review is intended to:
- Support innovators by balancing fees with the cost of doing business;
- Increase flexibility and efficiency for IP Australia and its stakeholders; and
- Explore the impact fees have on the quality of IP applications and competition in the marketplace.
During further public consultation conducted in December 2019, proposed changes to cost awards for oppositions and hearings were identified as an area of concern. These changes have not been implemented and will undergo further consultation and consideration.
Trade Mark Fee Changes
The key trade mark official fees changes are:
- Official fees payable for a standard trade mark application filed online will increase from AUD 330 to AUD 400 per class;
- Application fees for International Registrations Designating Australia (IRDAs) will increase from AUD 350 to AUD 400 per class. Changes to fees for IRDAs will take effect from 7 November 2020;
- Filing costs for series trade marks will increase from AUD 480 to AUD 550 per class;
- Fee increases of AUD 100 will apply to applications filed outside of IP Australia’s online service portal, while fees for using IP Australia’s online goods and services ‘pick list’ will remain unchanged. This reflects IP Australia’s intention to encourage greater use of its online service portal.
Other changes include:
- Fees for requesting trade mark opposition hearings will be reduced from AUD 600 to AUD 400;
- Fees for attending trade mark hearings will increase from AUD 200 to AUD 800 per day for in-person attendance and AUD 600 per day for attendance via telephone or video conference (less any amount paid for requesting a hearing);
- New fees of AUD 400 will apply to requesting a hearing based on written submissions only, or for a written decision to be issued (less any amount paid for requesting a hearing);
- A new expedited postage option is available for urgent document requests. Requests for expedited postage will attract an additional fee of AUD 20;
- In rare cases where registration of a trade mark application has been delayed for a period of 10 years or more, renewal fees paid via IP Australia’s online service portal will decrease from AUD 450 to AUD 400.