News & Insights

IP Australia’s Cost Recovery Implementation Statement (CRIS) has been released and contains a broad swathe of new fee changes affecting patents, trade marks, designs, and plant breeder’s rights.  

Every four years, IP Australia reviews its fees over a 15-month process, including two public consultation phases.  This new iteration of fee changes comes into force from midnight on 1 October 2024. It outlines both fee changes and increases to the costs recoverable in patent, trade mark, and design opposition proceedings.  

In this article, a focus will be placed on the fee changes within Macpherson Kelley’s main intellectual property areas of focus, being trade marks and designs. However, the full schedule of changes may be accessed here. 

Trade mark fee changes  

The release of the CRIS sees changes to the majority of trade mark fee categories, with the exception of filing fees, which remain unaffected.  

The most significant introduction is a new fee structure for filing Statement of Grounds and Particulars (SGP) in trade mark opposition proceedings. A new $250 fee will be applied to each subsequent ground of opposition nominated after the initial three grounds. Previously, multiple grounds could be asserted without an additional fee.  

A $250 fee will also be applied for each subsequent trade mark claimed, following the first 10 trade marks claimed, to be substantially identical or deceptively similar to the opposed trade mark.  

Where the SGP is amended to include a fourth or further ground, or to include an 11th or further trade mark claimed to be substantially identical or deceptively similar to the opposed trade mark, a $250 fee is also applied.  

These fees are partially recoverable as an out-of-pocket expense, capped at $500, should costs be awarded to the opponent, if they are successful in the opposition. 

It should be noted, a section 58A ground in a SGP will not count as a fee attracting ground of opposition if a section 44 ground has been nominated. A section 58A ground cannot be invoked without first addressing section 44, and therefore section 58A will be treated as an extension of the initial section 44 ground. 

Otherwise, further notable changes include: 

1.  a new fee for filing evidence late in opposition proceedings; and 
2.  the current fee associated with requesting a hearing will no longer be payable from 1 October. 

In summary, the changes to trade mark fees are as follows:  

The fees for requesting an examination of a registered design, however, are set to increase, as follows: 

This means it will be cheaper to file a design application, but ultimately be more costly to have an enforceable design.  This seems like a backward step in making design registrations more accessible to smaller designers and potentially decrease innovation in the designs space, as design protection becomes more expensive overall. 

Costs recoverable adjustments  

Costs awarded to a successful party in patent, trade mark, and design opposition proceedings are increasing significantly as of 1 October 2024. The increases range from increases of 50% to awards being tripled in some instances. The full schedule of changes to costs recoverable can be accessed here. 

The amendments are a step in the right direction, however, the amounts available for recovery remain considerably lower than the actual costs incurred by parties.  

How you can minimise fees and what these changes mean going forward  

In relation to trade mark oppositions, it is advisable to file your SGP prior to 1 October 2024 for substantial savings, particularly if the SGP will include more than three grounds of opposition. Otherwise, for future SGP filings after this date, a more strategic approach will need to be taken that carefully considers which grounds of opposition can be properly supported with evidence and legal argument.  

Moreover, as the $400 fee for requesting a hearing by the Registrar of Trade Marks has been repealed, where possible, you should delay requesting a hearing until after 1 October 2024.  

In terms of designs, in circumstances where the application can be filed after 1 October 2024, applicants will enjoy a cost saving, which may have more of an impact where multiple designs are filed. Where applicants intend to request examination, such requests should be made prior to 1 October 2024, before the fee increase takes effect. 

Should you have any queries in relation to how these fee changes will impact your business, please don’t hesitate to contact a member of Macpherson Kelley’s Intellectual Property Team.