28th September 2020 - Jill Junio

In 2019, IP Australia conducted reviews of its fee schedules in consultation with various stakeholders. The results of the extensive, 19-month review were finalised and released on 7 August 2020.

IP Australia announced that the updated fee schedules will apply commencing 12 AM AEST on 1 October 2020. The new fees will impact charges payable to IP Australia across its services including patents, trade marks, designs, and plant breeder’s rights.

The measure to increase fees ensures that the agency continues to recover the costs arising from administering intellectual property rights through the associated legislation.

Following the IP Australia announcement, significant changes include:

1. Increased trade mark application fees (an increase of $70 per class to $400 per class) for standard trade mark applications that do not use IP Australia’s pick list of goods and services, as well as a new hearing fee structure.

2. While trade mark fee changes take effect on 1 October 2020, it is important to note that changes to Madrid Import Application fees will also be introduced on 7 November 2020. This will increase the cost of designating Australia as part of an International Registration by $50.00 to $ 400.00 per class.

See the table below for a summary of trade mark application fees:

FEE DESCRIPTION	OLD	NEW
Standard TM Application - First Class - No Pick List - Preferred Means	$330	$400
Standard TM Application - Additional Classes - No Pick List - Preferred Means	$330	$400
Standard TM Application - First Class - Another Means	$350	$450
Standard TM Application - Additional Classes - Another Means	$350	$450
Standard TM Add Prescribed Goods - First Class - Another Means	$350	$450
Standard TM Add Prescribed Goods - Additional classes - Another Means	$350	$450
Madrid Import Application - First Class*	$350	$400
Madrid Import Application - Additional Classes*	$350	$400
Renewal of registration (registration delayed for 10 or more years after filing date) - Preferred Means	$450	$400
Renewal of registration (registration delayed for 10 or more years after filing date) - Another Means	$450	$450
Late renewal of registration (registration delayed for 10 or more years after filing date) - Preferred Means	$450	$400
Late renewal of registration (registration delayed for 10 or more years after filing date) - Another Means	$450	$450
Series TM Application - First Class - No Pick List - Preferred Means	$480	$550
Series TM Application - Additional Classes - No Pick List - Preferred Means	$480	$550
Series TM Application - Additional Classes - No Pick List - Preferred Means	$480	$550
Series TM Application - First Class - Another Means	$500	$600
Series TM Application - Additional Classes - Another Means	$500	$600
Series TM Add Prescribed Goods - First Class - Another Means	$500	$600
Series TM Add Prescribed Goods - Additional classes - Another Means	$500	$600

Note the decreased cost from $450 to $400 for trade mark renewals provided these are processed online. Otherwise, the charges remain at $450.

To comply with COVID-19 restrictions, opposition hearings are now being conducted by video conference, telephone, or written submission. New fees apply to accommodate these modifications.

The hearing fee for a typical opposition is now reduced to $400.00 instead of $600.00. However, the cost of an oral hearing is higher than hearings held via telephone or video conferencing. Also, a cost of $400 now applies should either party choose to use written submissions and/or obtain a written decision with reasons.

See the table below for the new fee structures applied to opposition hearings:

FEE DESCRIPTION	OLD	NEW
Request for a hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E	$600	Replaced by new Item
Request for an oral hearing in relation to any other matter	$400	Replaced by new Item
Attendance at an oral hearing under regulation 5.17, 6.9, 9.17, 9.20, 17A.34M, 17A.48S, 17A.48V or 21.20E	$600 for each day, or part of a day, less any amount paid under item 14 in relation to the hearing	Replaced by new Item
Attendance at an oral hearing to which item 16 does not apply	$400 less any amount paid under item 15 in relation to the hearing	Replaced by new Item
Filing a request for a hearing	New Item	$400
Appearing and being heard at an oral hearing in person: (a) for the first day (b) if the hearing runs for more than a day	New Item	$800 less any amount paid in relation to requesting a hearing $800 for each day, or part of a day, after the first day
Appearing and being heard at an oral hearing in by means other than in person: (a) for the first day (b) if the hearing runs for more than a day	New Item	$600 less any amount paid in relation to requesting a hearing $600 for each day, or part of a day, after the first day
Being heard on the basis of written submissions only	New Item	$400 less any amount paid in relation to requesting a hearing
Decision with reasons issued in accordance with section 55, section 101, regulation 17A.34N or 17A.48D	New Item	$400 less any amount paid in relation to requesting a hearing

IP Australia are also upgrading their Trade Marks Classification Searching by providing an improved user interface to make it easier for searches. Users will be automatically redirected to the new search system which provides a list of goods and services classes that you can choose for your trade mark.

*All values in this article are in Australian currency (AUD).

Jennifer Lynn Junio, BA Comm, MA CAR

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.