4 Costs Associated With Trade Mark Opposition

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Table of Contents

• What is Trade Mark Opposition?
• Costs Associated With Trade Mark Opposition
• Total Costs
• Key Takeaways
• Frequently Asked Questions

Say you come across an accepted trade mark application that IP Australia will register. However, the trade mark may conflict with or present risks to your business. In this instance, you could oppose the registration of the trade mark. However, this process is not without costs. This article will take you through four costs associated with trade mark opposition. 

What is Trade Mark Opposition?

Trade mark opposition refers to the process of challenging a proposed trade mark registration. There are several reasons why you might want to file a trade mark opposition, including where:

• the trade mark is identical or similar to your trade mark;
• you have been using a similar or identical trade mark before the applicant applied for registration;
• the applicant does not intend to use the trade mark; or
• the applicant is not the true owner of the trade mark.

Costs Associated With Trade Mark Opposition

There are several costs associated with trade mark opposition. However, this will vary greatly depending on several factors, including whether you seek representation. Generally speaking, the costs related to trade mark opposition can be separated into:

• government fees; and 
• professional fees that your legal representatives charge. 

Some of the main fees associated with trade mark opposition are outlined below.

1. Filing Fees

The first fee associated with trade mark opposition is the filing fee. The notice of intention to oppose a trade mark is currently $250. This fee is payable to IP Australia when you provide the written notice of intention, which you must file within two months of the trade mark you are opposing being advertised as accepted.

2. Type of Hearing

The next fees you need to consider are the fees associated with the type of hearing you elect to have. Firstly, it costs $400 to request a hearing in the first instance. If you wish to appear in person at this hearing, the official fee for this is $800 per day. However, you can deduct $400 from this if you were the one to pay the hearing request fee. If the hearing runs for more than one day (which is uncommon), you would have to pay a further $800 each day after that. 

Alternatively, you may have a hearing via telephone or video conference. Again, this is slightly less expensive than an in-person hearing, being $600 per day. But, again, you can deduct the $400 hearing request fee from this if you were the one to pay the request for the hearing fee.

Another option for a hearing is to file written submissions and have the matter decided based on these submissions and evidence filed. The cost of being heard by written submissions is $400. However, again this is deduced if you requested the hearing, and would therefore be $0. 

3. Time Extensions

In addition to payments for the type of hearing you request, there are costs associated with requesting extensions of time for certain things. For example, it costs $150 per month for each extension to file a:

• notice of intention to oppose a trade mark;
• statement of grounds and particulars; or
• notice of intention to defend.

In addition to this cost, extensions are not guaranteed and are at IP Australia’s discretion. Therefore, it is best to avoid applying for extensions and instead is better to meet the relevant deadlines where possible. 

4. Representative Fees

Further to the official filing fees associated with trade mark opposition, you might seek legal representation. A trade mark lawyer or attorney can help you throughout the opposition by:

• preparing and filing the relevant documentation; and 
• compiling evidence to support your case. 

If you require a barrister, the fees will increase.

Total Costs

Generally speaking, it is difficult to estimate precisely how much it costs to oppose a trade mark. However, depending on the various factors outlined above, it may cost several thousand dollars if it proceeds to a hearing. Therefore, when deciding if you should oppose a trade mark, you must carefully weigh the costs versus benefits of filing an opposition.

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Key Takeaways

If you consider that an application for a proposed trade mark registration will present a conflict or risk to your business, you should take action to protect your trade mark. However, this process is not without costs. Some of these costs are associated with:

• filing notices;
• the type of hearing you have;
• requesting extensions of time fees; and
• legal representation.

If you need help opposing a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.

Frequently Asked Questions