Rising Stakes: Significant Cost Increases for Australian IP Proceedings

As of October 1, 2024, substantial changes will be implemented regarding the costs awarded in patent, trade mark, and design rights proceedings. These adjustments reflect a significant increase in the amounts that can be claimed as costs following a hearing. With increasing stakes for both winning and losing parties, the dynamics of IP disputes are set to shift, influencing how parties approach their cases.

For example, take our breakdown of the typical processes and their associated costs involved in a trade mark opposition hearing. The following shows the amounts prior to and after these changes come into effect, based on the released Fee Review. We note that costs have tripled in some cases. As a result, costs for a typical trade mark opposition hearing are likely to more than double from $3,355 to $8,355 as of 1^st October 2024. For a successful opposition, this will be a welcome bonus. On the contrary, an unsuccessful hearing will set the unsuccessful party back further than before.

Matter	Previously	From 1 October
Notice of intention to oppose	200	350
Statement of grounds and particulars	200	750
Evidence in support	700	2000
Receiving and perusing evidence in answer	210	1000
Evidence in reply	350	1000
Preparation of cases for hearing	525	1500
Attendance	1,170 (based on the daily cap)	1,755 (based on the daily cap)
Total	$3,355	$8,355

These changes are likely to influence cost-benefit analysis when deciding whether to proceed with an IP dispute. With the potential for recovering significant costs in the event of a win, there is a stronger incentive for parties to pursue their cases vigorously. Conversely, the heightened costs also mean that the stakes are higher for losing parties. We suspect this will have the effect of more cautious decision-making and may lead some to consider alternative dispute resolution or settlement.

While the potential for recovering costs may encourage more aggressive strategies, the financial implications of a loss are now more pronounced. Legal practitioners and their clients will need to adapt their strategies accordingly, balancing the desire to win with the need to manage costs effectively.

For more information and advice as to how this could affect your IP strategy, please don’t hesitate to contact us.

Gracie Scragg – September 2024

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