By Stephanie Rowland, Partner and Amanda Wong, Associate
IP Australia’s official fees for trade marks, patents, designs and plant breeders’ rights are changing from 10 October 2016.
The Intellectual Property Legislation Amendment (Fee Review) Regulation 2016 has been signed by the Governor General and amends the existing trade mark, patent, design and plant breeders’ rights regulations to give effect to the fee changes from 12am AEDT 10 October 2016.
The purpose behind the fee changes is to:
If you are interested in registering your trade mark(s) and have not yet applied, be aware that the following new official fees will apply from 10 October 2016:
|Trade Mark Applications||Current Fee ||New Fee |
|TM Headstart Part 1 fee (per class)||$120||$200|
|TM Headstart Part 2 fee (per class)||$80||$130|
|Standard trade mark application fee (per class)||$200||$330|
|Trade mark registration fee (per class)||$300||Nil|
If you have existing trade mark registrations, the following fees that may apply to you are also changing:
|Trade Mark Renewals||Current Fee 2||New Fee 3|
|Trade mark renewal fee (per class)||$300||$400|
|Late fee for trade mark renewal||$100 per class, per month||$100 per registration (regardless of number of classes) per month|
|Trade Mark Oppositions||Current Fee 2||New Fee 3|
|Filing a notice of intention to oppose removal/cessation of a trade mark for non-use (per registration)||$150||Nil|
|Filing written submissions when not attending a hearing (per mark)||$100||Nil|
|Trade Mark Document Requests||Current Fee 2||New Fee 3|
|Certificate by the Registrar of Trade Marks (certified document)||$50||Nil|
|Duplicate TM certificate||$250||Nil|
|Copy of extract from the TM Register||$50||Nil|
|NEW FEE – Requesting copies of 1 – 3 documents relating to a single trade mark application/registration/file||N/A||$50 for each document|
|NEW FEE – Requesting copies of 4+ documents relating to a single trade mark application/registration/file||N/A||$200 for each request|
A summary of all fee changes for trade marks, patents, designs and plant breeders’ rights can be found on IP Australia’s website here.
Trade mark registration fees will be gone
Currently, once a trade mark application is accepted by IP Australia and the opposition period expires, a trade mark owner must pay a further registration fee ($300 per class) to secure registration in Australia.
One of the most significant changes is that registration fees will no longer apply for trade mark applications filed after 10 October 2016. This means that applications filed after 10 October 2016 will be automatically registered if no opposition is filed in the two month opposition period, or if an opposition is decided in favour of the applicant.
However, applications filed before 10 October 2016 and accepted after 10 October 2016 must still pay registration fees to secure registration. Trade mark owners who fall into this category should carefully monitor the deadline for paying registration fees to ensure timely payment of fee and prevent any loss of rights.
Better value overall as trade mark registration official fees reduced –
What does this mean for you?
The net effect of the changes means that the total official fees to register a trade mark for 10 years are cheaper and “better value” than before, although the initial filing fees for applications will increase.
The reduced overall official fees for registering a trade mark helps to make going down the path of official trade mark protection a serious consideration as part of your brand protection strategy.
If you are unsure of how IP Australia’s fee changes will affect you, please contact:
Stephanie Rowland | Partner
T: +61 8 6167 9806
Stuart Gibson | Partner
T: +61 3 9605 0092
Warren Scott | Partner
T: +61 3 9605 0984
Scott Coulthart | Special Counsel
T: +61 7 3228 0437
Paul Armarego | Special Counsel
T: +61 2 6196 5204
 These fees apply to trade mark applications filed directly in Australia (ie national applications). Changes to official fees for Madrid import applications and renewals will take effect from 28 October 2016.
 Using online services.
 Using online services.