06 December 2024
IP Australia implemented fee changes for trade mark oppositions on 1 October 2024 aimed at encouraging a more strategic approach to opposition proceedings and include the following:
- New fee structure for Statements of Grounds and Particulars (SGP):
- AU$250 fee for each additional ground of opposition beyond the initial three.
- AU$250 fee for each additional trade mark relied upon beyond the first ten.
- This change encourages opponents to be more selective and strategic in their approach.
- Additional fees and cost changes:
- New AU$500 fee for late evidence filings to discourage delays.
- Recoverable costs increased, with awards now ranging from AU$7,000 to AU$10,000, reflecting inflation and increased procedural costs.
- Comparison with other jurisdictions:
- Australia’s new fee structure is based on the number of opposition grounds, in contrast to say Singapore, which charges based on the number of classes.
- The changes in Australia focus on reducing unnecessary grounds and promoting efficiency (at least in the mind of IP Australia).
- Broader implications:
- These changes mark a significant shift in trade mark opposition practices in Australia.
- They require greater foresight, strategic planning, and careful cost management in opposition proceedings.
Overall, the new regime signals a move towards a more focused and efficient approach to handling trade mark oppositions in Australia - though this comes at a price to the public and great care needs to be taken in the preparation of the SGP.
