As reported here, IP Australia has announced official fee changes that will take effect from 1 October 2024, which relevantly affect trade mark opposition fees.
One key change is a new fee structure for filing of Statements of Grounds and Particulars (SGP), which marks the second significant change to Australian trade mark opposition practice over the course of the last 18 months. This change, together with changes to recoverable costs, extend beyond mere cost adjustments but will, in practice, require a unique strategic approach to trade mark opposition proceedings in Australia.
Strategic filing: the new reality
For opponents, the most impactful changes are likely to be the introduction of an AU$250 fee for:
- each additional ground of opposition nominated in an SGP beyond the initial three grounds; and
- each additional prior trade mark registration or application relied upon for the purposes of section 44 (prior registered or pending trade mark rights) beyond the first ten trade mark rights nominated in an SGP.
Historically, in Australia, opponents could file multiple grounds of opposition and rely on multiple prior registered or pending trade mark rights without facing additional fees. The rationale for this practice was to ensure all relevant earlier rights were before the Registrar at the time of considering the merits of an opposition.
However, under the new structure, every additional ground beyond the third ground, and every nominated trade mark after the first ten, will incur the additional AU$250 fee. This change will encourage opponents to adopt a more strategic approach, weighing the necessity and potential impact of each ground before including it in their SGP.
This fee also applies when filing or amending an SGP that includes more than three grounds, further emphasising the need for a judicious approach from the outset. Importantly, a section 58A ground (prior use of a prior registered mark), which cannot be invoked without first addressing section 44, is exempt from this fee when a section 44 ground has already been nominated. This exception underscores a nuanced strategy that opponents must now adopt in navigating the new system.
The changes to the fee structure for oppositions complement the changes in SGP drafting practice resulting from the implementation of the online SGP form in February 2023. Following the implementation of this form, the supporting particulars for each ground of opposition have effectively been limited to 4000 unformatted characters (including spaces), forcing opponents to be more concise in the information provided in support of the opposition.
Beyond costs: a structural shift in practice
While most of the focus will be on the increased opposition costs resulting from these changes, the reality is that the combination of the new fee structure and the character limitations in the online form represent a fundamental change in trade mark opposition practice in Australia. Through the introduction of these fees and practice changes, the new regime encourages opponents to be more selective and focused in pleadings.
Moreover, the new AU$500 fee for late evidence filings also introduces a new level of discipline in managing evidentiary deadlines. This fee applies to requests for Evidence in Support, Evidence in Answer or Evidence in Reply that are filed beyond the established deadlines, discouraging delays and compensating for the additional effort required by IP Australia and the involved parties, and is in addition to the extension fees of AU$150 per month. While this change aims to improve efficiency, it also represents a shift in procedural expectations, with significant implications for how evidence is managed in opposition proceedings.
A distinct approach: comparing jurisdictions
What sets Australia’s new fee structure apart, compared with other jurisdictions, is its calculation of the opposition fee based on the number of grounds, rather than the number of classes. By way of example, in Singapore, opposition fees are charged based on the number of classes a trade mark covers, which reflects the practice to permit oppositions in respect of only some of the classes of goods and services covered by the application.
The Australian and Singaporean approaches can be viewed as different strategies for encouraging more focused and efficient opposition proceedings, whilst also reducing the complexity if the opposition proceeds to final determination. In particular, the Australian and Singaporean approaches differ as follows.
- The Australian “grounds-based” approach aims to discourage the inclusion of excessive or speculative grounds, focusing the parties’ attention on those grounds with reasonable prospects of success.
- The Singaporean “class-based” approach aims to narrows the scope of opposition by encouraging opponents to limit their challenges to the goods and services where there is commercial conflict.
A new dynamic for cost recovery: more risk, more reward
In addition to the new SGP fees, there will also be notable changes to the costs recoverable in Australian opposition proceedings.
Under Australian trade mark practice, the prevailing party typically receives an award of costs, which is determined by reference to a “fee scale” set out in the Trade Marks Regulations 1995 (Cth). The current fees, which have not been updated for some time, result in cost awards that typically range between AU$3,000 and AU$5,000 – amounts that are often negligible when compared to the actual legal expenses incurred.
The costs in the fee scale have been substantially increased, by more than 200% in some cases. The average cost award for the prevailing party under the new fee scale will likely be in the range of AU$7,000 to AU$10,000, effectively doubling the current awards.
The increase obviously raises the stakes for the parties, but reflects inflation over the period since the fees were last considered. That said, most attorneys and practitioners would still consider the scale costs do not reflect the actual costs of opposition proceedings.
Food for thought
For global brands navigating multiple jurisdictions, the implications of Australia’s unique approach to opposition costs may require a different strategic approach. If official fees are a concern, consideration should be given early on to identifying the strongest grounds on which an opponent may rely. In practice, however, this may simply result in higher attorney and practitioner costs as they determine which earlier registrations are most relevant and should be relied upon in the opposition. The cost change also risks affecting “family of marks” arguments or causing an opponent to omit the most relevant earlier registered or pending trade mark rights when cost considerations predominantly drive their motivation.
The broader impact: a new era of trade mark oppositions
The recent and upcoming changes to Australia’s trade mark opposition practice, including changes to the SGP document, associated fee structures, and increased costs awards, represent a significant departure from previous practices, effectively transforming how oppositions are instituted and run in Australia. By introducing a ground-based fee structure, Australia places the onus on opponents to consider the basis for each opposition carefully, penalising those who simply “roll out” the same arguments and marks relied upon in previous oppositions or other jurisdictions.
As this new regime takes effect, it will be interesting to observe its impact on opposition strategy. These changes, while still in infancy, signal a potential new era in trade mark oppositions; one that demands greater foresight and early strategic planning.