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 until 16 February 2020.
With thanks to Harriet Wilson for her assistance with this update.