| Services: | Intellectual Property & Technology |
| Industry Focus: | Agribusiness, Energy, Financial Services, Insurance, Life Sciences & Healthcare, Property |
What is happening?
Following stakeholder consultation by IP Australia, a number of changes will soon be implemented to the official fees payable for various trade mark transactions.
As owners of trade mark registrations will know, a range of fees apply throughout the different stages of a trade mark's life cycle from the initial filing right through to renewals. Some of those fees are payable by 'class', referring to the 45 classes of goods and services under the Nice Classification system.
The fee changes, introduced by the Intellectual Property Legislation Amendment (Fee Review) Regulation 2016 which will amend the Trade Mark Regulations 1995, will bring IP Australia into line with other international IP offices. In the long run, the changes will reduce the overall official cost for trade mark owners to register a trade mark in Australia.
When will the changes take effect?
The majority of the changes will take effect from 10 October 2016.
However, changes to the filing and renewal fees for International Registrations filed via the Madrid Protocol are scheduled to take effect from a slightly later date, on 28 October 2016.
What will the changes look like?
Vital changes for trade mark owners are summarised in the table below:
| Event | Fee change |
|---|---|
| Filing - National application | The fees to file a national trade mark application will increase from AU$200 to AU$330 per class. |
| Series application | The fees to file a series trade mark application will increase from AU$270 to AU$400 per class (to offset the removal of the registration fee). |
| Registration | The AU$300 per class registration fee will be removed. |
| Renewal | The fees to renew a registered trade mark will increase from AU$300 to AU$400 (to offset the removal of the registration fee). |
| Filing – International application (Madrid Protocol) | The fees to file an application for an International Registration via the Madrid Protocol will be decreased from AU$420 to AU$350 per class. |
| Opposition | The AU$150 fee for a trade mark owner to file a Notice of Intention to Oppose in response to a non-use cancellation application filed against their own trade mark registration will be removed. |
What should you do now?
If you already own Australian trade mark registrations that are coming up for renewal in the next 12 months, you may wish to renew those marks before the fee increase takes effect on 10 October 2016. In Australia, a trade mark registration can be renewed up to 12 months before the actual renewal due date.
If you are on the cusp of filing a trade mark application, you may be wondering whether to proceed with your application before or after the changes have taken effect. While some commentators have suggested postponing seeking trade mark protection until after the changes are implemented (to avoid paying a registration fee), this strategy ignores the importance of securing the earliest possible 'priority date' for your trade mark. As a general rule, the earlier you file a trade mark application, the better off you will be. This is because the date on which you file your trade mark application establishes your priority date and this can have a significant impact on your rights in relation to other trade mark users.
If you are considering filing a new trade mark application in Australia, we think the risks of waiting until after 10 October are outweighed by the benefits of setting yourself up for protection from the earliest possible time.
This article is intended to provide commentary and general information. It should not be relied upon as legal advice. Formal legal advice should be sought in particular transactions or on matters of interest arising from this article. Authors listed may not be admitted in all states and territories
