In December 2019, after much anticipation, IP Australia released a draft of proposed amendments to the costs that may be awarded in relation to trade marks proceedings heard before IP Australia. IP Australia comments that these changes should ensure awards more accurately reflect the actual costs incurred by parties and are based on Federal Court practice.

What does this mean for you?

The changes (due to be implemented in October 2020) mean a successful party in trade mark proceedings before IP Australia will be able to seek a costs award which more closely aligns with the actual costs incurred by that party in proceedings. This means a party will be less likely to be left out of pocket after succeeding in trade mark office proceedings.

On the flip side, unsuccessful parties will in the future, be liable for a greater sum, and this will need to be taken into consideration by any parties considering bringing, or defending, a trade mark proceeding before IP Australia.

How are costs awarded?

Generally, costs in trade mark proceedings are awarded pursuant to Schedule 8 of the Trade Marks Regulations 1995 (Cth). Each step in a proceeding is associated with a fixed or maximum amount which can be claimed by a successful party. Historically, costs awarded by IP Australia have been far less than the costs actually incurred by a successful party, meaning that successful parties are often left out of pocket even though they have 'won' the proceedings.

What are the proposed changes?

The draft of proposed changes amends Schedule 8 of the Regulations to increase the maximum amounts that can be claimed against each of the items listed (see comparison table below). Although not shown below, the proposed draft amendments also makes changes to increase the costs awarded for patents and designs.

Trade Marks

Current Matter Current Cost Proposed Matter Proposed Cost
Notice of intention to oppose $200 Preparing and filing notice of intention to oppose $250
Statement of grounds and particulars $200 Preparing and filing statement of grounds and particulars $1,500
Receiving and perusing statement of grounds and particulars $130 Receiving statement of grounds and particulars $800
Notice of intention to defend $200 Preparing and filing notice of intention to defend $250
Notice of opposition filed under subregulation 6.6(1), 8.4(1) or 21.20B(1) $200 Preparing and filing of opposition under subregulation 6.6(1), 8.4(1) or 21.20B(1) $250
Receiving and perusing a notice of opposition filed under subregulation 6.6(1), 8.4(1) or 21.20B(1) $130 Receiving notice of opposition filed under subregulation 6.6(1), 8.4(1) or 21.20B(1) $800
Evidence in support $700 Preparing and filing evidence in support $8,000
Receiving and perusing evidence in support $300 Receiving evidence in support $2,000
Evidence in answer $700 Preparing and filing evidence in answer $8,000
Receiving and perusing evidence in answer $210 Receiving evidence in answer $2,000
Evidence in reply $350 Preparing and filing evidence in reply $2,000
Receiving and perusing evidence in reply $130 Receiving evidence in reply $550
Preparation of cases for hearing $525 Preparing for hearing (including appearing by written submissions alone) $4,000
Attendance at hearing by registered patent attorney, registered trade marks attorney or solicitor without counsel $260 an hour, but not more than $1,170 a day Attendance at hearing by registered patent attorney, registered trade marks attorney or solicitor $1,000 an hour, but not more than $4,000 a day
Attendance at hearing by registered patent attorney, registered trade marks attorney or solicitor instructing counsel $200 an hour, but not more than $900 a day
Counsel fees for attendance at a hearing $300 an hour, but not more than $1,350 a day Attendance at hearing by counsel $1,000 an hour, but not more than $4,000 a day
Receive decision $500

Note that if you would like to make any submissions to IP Australia in relation to these proposed changes the public consultation period is open until16 February 2020.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.