IP Australia recently conducted a review of its official fees for trade mark actions in an attempt to simplify the fee structure. Subject to amending regulations being made, the revised fee structure is proposed to take effect from 10 October 2016. In addition, the revised fee structure for Madrid import applications and renewals is proposed to take effect from 28 October 2016.
- Registration fees
If a trade mark application is filed prior to 10 October 2016 and is registered after this date, it will still be necessary to pay the current registration fee of AU$300 per Class.
Otherwise, for applications filed on or after 10 October 2016 registration fees will no longer be payable.
This will bring IP Australia into line with most other international intellectual property offices and should streamline the registration process. Under the new regime, a trade mark will automatically be registered if there is no opposition filed within the 2 month opposition period, or if an opposition is decided in favour of the applicant.
There will be an increase in the official filing fees, however, the removal of the official registration fees will reduce the upfront cost of filing an application.
- Application fees
Trade mark application fees will increase (with the exception of Madrid import applications) as follows, to partially offset the removal of the registration fees.
| Item (per class) | Current fee | Fee from 10 October 2016 |
| TM Headstart (pre-application service) new request | $120 | $200 |
| TM Headstart (pre-application service) new representation | $120 | $150 |
| TM Headstart (pre-application service) additional class fee | $120 | $200 |
| TM Headstart (pre-application service) Part 2 fee | $80 | $130 |
| Trade mark application (with picklist) | $120 | $250 |
| Trade mark application (without picklist) | $200 | $330 |
| Series trade mark application (with picklist) | $270 | $400 |
| Series trade mark application (without picklist) | $350 | $480 |
| Trade mark application (paper application) | $220 | $350 |
| Series trade mark application (paper application) | $370 | $500 |
| Item (per class) | Current fee | Fee from 28 October 2016 |
| Madrid import application | $420 | $350 |
Shelston IP files all trade mark applications electronically, and works with clients to draft specifications using approved items from the picklist, where feasible, so as to reduce filing charges.
- Renewal fees
Renewal fees will also increase as follows, to partially offset the removal of the registration fees:
| Item (per class) | Current fee | Fee from 10 October 2016 |
| Trade mark renewal (filed online) | $300 | $400 |
| Trade mark renewal (fee by other means) | $350 | $450 |
| Item (per class) | Current fee | Fee from 28 October 2016 |
| Madrid import renewal | $300 | $400 |
Please note: Australian registrations can be renewed within 12 months of their expiry and International Registrations Designating Australia (IRDA) can be renewed within 6 months of their expiry. For renewals due after 10 October 2016, we recommend bringing forward payment of the renewal fee so as to take advantage of the current lower fee. Please contact us as soon as possible if action is required.
- Extensions of time to pay late renewal fees
The fees for a late extension of time will be reduced to apply for each month (or part of a month), rather than per class for each month (or part of a month).
| Current fee | Fee from 10 October 2016 |
| $100 per class per month or part thereof from the renewal due date | $100 per month or part thereof from the renewal due date |
- Opposition fees
The fees for filing a notice of intention to oppose removal/cessation and the filing of written submissions when not attending a requested hearing will be removed.
| Item: | Current fee | New fee from 10 October 2016 |
| Filing a notice of intention to oppose removal/cessation of protection of a trade mark for non-use | $150 per trade mark | No fee |
| Filing written submissions when not attending a requested hearing | $100 per trade mark | No fee |
- Other fees
All fees for the sale of documents, extracts and certified copies will be removed. There are two new standard fees that now apply for the sale of these documents.
| Item: | Current fee | New fee from 10 October 2016 |
| Certificate by the Registrar of Trade Marks | $50 | No fee |
| Supply of Duplicate Trade Mark Certificate | $250 | No fee |
| Copy of an extract from the Register | $50 | No fee |
| Trade Mark Document requiring a Search | $100 | No fee |
| New Fee – Copy of 1 to 3 documents from the same file | No fee | $50 each |
| New Fee – Copy of 4 or more documents from the same file | No fee | $200 |
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
