If you're a business owner looking to register your trade mark in Australia, prior to filing the trade mark application you should consult experts in Australian intellectual property law to ensure your application is valid, the trade mark is registrable and you do not infringe another traders rights by using the mark prior to registration.
There are also fees and charges which apply to trade mark applications and you should be aware of those fees. In this article we discuss the typical fees and charges that apply in Australian trade mark applications.
Cost of the Trade Mark Application
For the purposes of trade mark registration goods and services are classified into 45 classes. Fees are paid on a per class basis. Thus the official IP Australia fees to file a trade mark will depend on the number of classes your application is filed within. The manner in which the trade mark is filed also determines the fees payable.
If you file the application using the “pick list”, which is a preset list of goods and services from which you select your desired goods and services, the fees are significantly cheaper than hand drafting the goods and services. This is due to the reduced administrative overhead at IP Australia through use of the pick list.
There is overlap between some of the goods and services that fall within the classes. Therefore it is possible to reduce the application fees by crafting your statement of goods and services to protect your goods and services but to only fall within a limited number of classes. We recommend you hire a registered trade mark attorney who can draft the goods and services to reduce overall fees and also provide advice on your application’s chances of success. .
If there aren't any problems or objections in your trade mark application, then there should be no further IP Australia fees in respect of the application. So trade mark attorneys may charge a fee to report acceptance, advertising and registration so ensure you ask if those services are charged when obtaining a cost estimate. For a single class application, inclusive of professional, government services, and GST, you should be paying anywhere between AU$800-$1,100.
Trade Mark Registration
Currently IP Australia is taking approximately 4-5 months to examine trade mark applications. After the trade mark application has been accepted for registration by IP Australia it will be advertised for opposition purposes. Any trader can oppose a trade mark application on any of the grounds for opposition during the two month opposition period. If there are no oppositions the trade mark should become registered within a few days of the opposition deadline passing.
Currently the minimum period between filing and the registration date is seven and a half months. That is due to Australia’s convention deadlines.
There is no longer a separate registration fee in Australia.
If IP Australia raises an objection to registration of the trade mark application it will issue an adverse report. IP Australia does not charge fees to reply to the adverse report. However, you should seek expert advice from intellectual property lawyers before responding to give yourself the best chance of overcoming any objection raised by IP Australia. It is likely the lawyers will charge a fee for their services. Typical fees to obtain advice in respect of the adverse report and also respond to the examination report (without provision of evidence of use) is $1,500 - $2,000 plus GST.
Trade Mark Opposition
If you wish to oppose a trade mark application, there will be additional charges relating to the opposition, including the IP Australia filing fee and hearing fees. Running a trade mark opposition is a complex task and we recommend you consult intellectual property lawyers for assistance.
Global Trade Mark
Many entrepreneurs are benefiting from the global marketplace and seek an “global” trade mark. The truth is, there is no such thing as a global trade mark because trade marks are jurisdiction based. That means that if you want a trade mark in that country you normally have to file within that country.
The cheapest way to obtain overseas trade marks is to use WIPO to designate your countries of interest. Again, fees and charges are charged on a per mark, per class, per country basis. In most countries that application fee is all that you need to pay, assuming the trade mark is accepted. However, some countries require the payment of a second part payment.
In addition, if an objection is raised to registration in a foreign country then you will likely have to appoint a local agent to act for you to obtain the grant of the trade mark. Always appoint experienced intellectual property lawyers who are familiar with the local trade mark laws.
A trade mark can act both as a sword and a shield. The grant of a trade mark is a full defence to trade mark infringement in Australia so long as the trade mark is being used as registered. Whilst there are costs associated with obtaining trade marks they are a tool that is necessary in trade. They also add value to your business when you sell your business.
You should proactively protect your trade mark rights and file a trade mark application as soon as possible to avoid the issues caused by other traders trade marking your brands.