Trade Mark Alert

IP Australia is making changes to how it charges for application and registration of trade marks providing an opportunity for potential savings.

New Trade Marks

The new fee structure, set to commence on 10 October 2016, will see an overall reduction in fees for registration of a trade mark. If you are thinking about using a new trade mark, this October might be a good time to consider making an application to register it. The cost benefits will need to be balanced with the risks in delaying an application, if you are using, or about to use, a mark.

Although the application fees for trade marks will suffer a slight increase, it is planned that the current registration fee of $300 will be entirely abolished. Thus, for example, a standard trade mark registration^[1] will cost $330 as opposed to the present cost of $500 ($200 application fee and $300 registration fee).

Also to be abolished are all fees associated with making an opposition to a trade mark application.

These apparent savings are not without a downside. Having a single fee payable at the time of the application means you are paying the full amount regardless of the success of your application and whether or not it in fact proceeds to registration.

Whilst the overall savings are to be welcomed the new fee structure means it is even more important to undertake proper and comprehensive searches and take care in making a trade mark application. Having regard to any issues or conflicts that may arise will give your mark the best chance of proceeding to registration.

Renewal of Existing Trade Marks

There will be an increase of $100 in fees for trade mark renewals from 10 October 2016. Renewing your trade mark for a further 10 year period will now cost $400.^[2] There is an obvious benefit in paying for any renewals promptly rather than incurring the higher fee after 10 October. Since renewals are able to be paid up to 12 months in advance any marks which may become due for renewal up to 9 October 2017 could potentially reap this benefit.

in one class and without using the picklist
where fee payment is made via online services

This communication provides general information which is current as at the time of production. The information contained in this communication does not constitute advice and should not be relied upon as such. Professional advice should be sought prior to any action being taken in reliance on any of the information. Should you wish to discuss any matter raised in this article, or what it means for you, your business or your clients' businesses, please feel free to contact us.