How Much Does a Trademark Cost in Australia?

The cost of responding to an adverse examination report

Everything you pay at this stage is legal fees. A written submission costs $1,500 plus GST and an evidence of use case costs $5,000 to $7,000 plus GST, and you do not choose freely between the two, because the section of the Trade Marks Act 1995 (Cth) that the examiner cited decides which one is open to you.

What an adverse examination report is

An examination report is not a refusal. The examiner sets out what is wrong with your application and tells you which routes are available to fix it.

You have to get the application accepted within fifteen months of the date on the report. That fifteen months is not a deadline for sending a reply, and it does not start again when you send one.

An examiner can raise several kinds of objection, and you clear most of them by amending the application, which IP Australia does not charge for. The two objections below are the ones that cost you money, because answering either takes a substantive legal response rather than an amendment.

• Section 41. The examiner says your mark is not capable of distinguishing your goods or services from those of other traders. Examiners raise this where part of the mark describes what you sell.
• Section 44. The examiner says your mark is substantially identical or deceptively similar to a mark with an earlier priority date, over similar or closely related goods or services.

IP Australia gives you no form to answer an examination report

IP Australia charges you $250 per class to lodge an application, and gives you a guided online form to do it with. The pick-list is built into that form, the fees calculate as you go, and the system will not let you lodge an application that is missing something it needs.

To lodge a response you get no form at all. You submit a cover letter, a declaration and a set of exhibits that you have written and assembled yourself. No template tells you what a distinctiveness case has to contain. Nothing prompts you to break your turnover figures down against the goods and services you actually claimed. Nothing flags a declaration that has left out continuity of use.

Our view is that this is the wrong way round. IP Australia charges for the step that is hardest to get wrong and easiest for its own system to check, and charges nothing for the step that decides whether your mark registers.

The practical result is that applicants budget for the fee they can see and set nothing aside for the stage that decides the application. Some of them read the report as a refusal and let the fifteen months run out on an application that could have been saved.

The two ways to answer an examination report

To answer a section 44 objection by written submission, we argue that the two marks are not substantially identical or deceptively similar, or that the goods and services are not similar or closely related, working through IP Australia's examination practice and the relevant authorities. To answer a section 41 objection the same way, we argue that your mark does have the capacity to distinguish, usually because the element the examiner called descriptive does not describe the goods and services you claimed.

A written submission works where the objection turns on how the examiner assessed your mark or your goods, because that assessment is something we can argue with using material already on the file. If the examiner instead needs to know something about how you have used the mark in trade, argument cannot supply that and you need an evidence case.

What an evidence of use case has to prove

Evidence of use is a sworn declaration supported by dated exhibits, made up of three parts: a cover letter identifying your application and the objection you are answering, the declaration setting out your use of the mark, and exhibits that back up every statement in the declaration.

Section 41: proving the mark has become distinctive

Your declaration has to show that customers read your mark as an indicator of who made the product rather than as a description of what it is. That means setting out when you first used the mark and for how long, whether that use has been continuous, where in Australia you have used it, what you have spent on advertising, and your annual turnover figures.

IP Australia will also give weight to your market share, the channels you advertise through, published articles mentioning the mark, the size of your customer base, distributor activity, declarations from people of standing in your trade, and consumer survey evidence.

Which limb of section 41 the examiner applied decides whether this route is open to you at all. Under section 41(3), where the examiner finds your mark has no inherent capacity to distinguish, you have to prove the mark was already distinctive of your goods at the filing date. Use after that date does not help you and the examiner will not consider evidence of intended use. Under section 41(4), where the examiner finds the capacity is limited rather than absent, evidence of intended use can count, including pre-launch market research, market estimates, product launch plans and marketing plans.

Section 44: proving prior use, honest concurrent use or consent

To clear a section 44 objection with evidence you have to establish one of the three things below, and which one is available to you depends on the facts of your business rather than on how well the argument is put.

• Prior use. You used the mark before the earlier mark's priority date and continuously up to your filing date. You have to identify the specific goods and services you sold under the mark, the month and year you first used it in Australia, documentary proof of continuity such as invoices or annual sales figures, and exhibits showing how you first used it. A statement that you started using it in a particular year will not carry the point on its own, and you may have to remove goods and services you cannot prove prior use for.
• Honest concurrent use. You set out a documented history of the mark: when you chose it, why and how you chose it, whether you knew about the conflicting mark, whether you searched before adopting it, the goods and services you sell under it, first use by month and year, whether use has been continuous, the states or regions you have traded in, any instances of confusion you know about, and your annual advertising spend and turnover for the goods and services you claimed.
• Other circumstances. Most often this means written consent from the owner of the conflicting mark, or use with that owner's permission as a related or subsidiary company.

Why an evidence of use case costs more than a written submission

We draft the declaration, then locate the exhibits, date them, paginate them and cross-reference each one to the paragraph that relies on it, then review the whole bundle against the gaps an examiner will look for.

Your turnover and advertising figures have to come out of your business records and be tied to the goods and services you actually claimed. If you have used the mark through related companies, licensees or an overseas parent, we also have to establish chain of title and who the user was. The declaration is sworn, so every figure in it gets verified before it goes out.

How long the whole thing takes depends on how fast you can find your records rather than on our drafting. Assembling first-use dates, dated invoices, turnover and advertising figures and photographs of packaging or signage from the relevant years is the slow part, and it takes longer if you have changed accounting systems or rebranded a website since. Start pulling records together on the day the report arrives.

The Lazarus Legal credit on written submissions

If we lodge a written submission at $1,500 and the examiner maintains the objection, we credit that $1,500 against the cost of the evidence of use case.

A $6,000 evidence case that follows an unsuccessful submission therefore costs you $6,000 in legal fees, not $7,500. Because trying the cheaper route first costs you almost nothing, we run a written submission before we build an evidence case wherever the submission has a reasonable prospect.

When answering an examination report costs more than the mark is worth

Evidence of use is sometimes the wrong thing to spend money on, and we will tell you so before we take the instruction. The four situations below are the ones where we would advise against running an evidence case, because in each of them the money is unlikely to buy you a registration.

• The examiner cited section 41(3), which rules out both use after your filing date and evidence of intended use, leaving you very little material to work with.
• A direct competitor owns the blocking mark and is unlikely to give you consent.
• Your brand is recent, so you have not yet built up the recognition an evidence case needs to prove.
• You can avoid the conflict by narrowing your specification, which costs nothing, or by refiling a modified mark at $250 per class.

If several of those apply to you, a $6,000 evidence case can cost more than the brand is worth and may still fail. A business twelve months into a name will usually find rebranding cheaper than a business five years in, and you can make that decision more cheaply at the report stage than after a refusal.

IP Australia fees for amendment, deferment, extensions of time and hearings

Before you commit to a written submission or an evidence case, check whether one of the routes below clears the objection instead. Most of them cost you nothing, and the rest cost a fraction of a legal response.

Deferment is the route applicants overlook most often. If the mark blocking you is a pending application, or a registration showing as expired but still renewable, its status may change on its own and the objection disappears without you filing anything substantive. Deferment on the basis of honest concurrent use or other circumstances runs for six months, and a second deferment needs a different ground from the first.

Deferment costs you nothing and an extension of time costs $100 per month, so both are far cheaper than letting the application lapse. Most of the applications we see fail were not lost on the strength of the argument. They were lost because nobody filed anything inside the fifteen months.