A fee incentive for narrowing the scope of registrations of trade marks

At a glance

Policy ID: 106

Status: On hold

Priority: Medium

Trade marks Fees

Issue summary

The Productivity Commission's Inquiry into Australia's Intellectual Property Arrangements (“PC Review”) discussed the potential use of higher fees per trade mark class of goods and/or services to discourage overclaiming of goods and/or services.

Under this proposal a reduced application fee would apply for seeking registration of a trade mark for a limited number of goods and/or services. This might reduce overclaiming for trade marks that only relate to a narrow range of goods and/or services. 

History

  • On hold 20-Nov-2019

Comments

Issue to be considered in future fee review.

Submissions

IP Australia has received a submission on this issue to the Policy Register.

Legal Practitioner (name withheld)
Submitted on Friday, January 17, 2020 - 18:34

Comment

I do not support the proposal for the following reasons:
(1) IP Australia already charges per-class fees, which increases the costs of an application spanning multiple classes.

(2) The introduction of a differential or "sliding scale" fee per-class would effectively penalise applicants who require multiple classes to cover their goods/services.

(3) The introduction of a differential fee would increase the complexity for quoting and calculating the cost of an application.

(4) A differential fee may cause applicants (particularly self-filing applicants) to inadequately scope their trade mark application as a means of saving cost. The risk is inadequate scoping would leave trade mark under-protected by their trade mark.

(5) The proposal does not prevent broad claims within a single class (eg claiming "clothing, footwear and headgear" in class 25 instead of "socks"). The issue of excessively broad claims could be addressed at examination level by adopting more strict examination policy.

(6) The existing non-use removal action framework provides a tool for third-parties to challenge overly broad scope. In such actions, the onus is on the trade mark holder to establish use in the relevant goods/services, and failing to do so leaves the mark liable for removal in respect of the unused goods/services.

IP Australia response - January 2020
Thank you for your submission to IP Australia’s Policy Register.

We consider this proposal (ID 106) to be only one option to address overly broad registrations that may clutter the trade marks register. We have published the issue for receiving stakeholder feedback and evidence gathering.

We have noted that you do not support the option and the reasons why, including increased complexity and the risks of inadequate protection. We have also noted your comment on the limitation of the option and a suggestion for addressing this issue at examination level. Your submission will be fed into our consideration when we get to work on this issue in the future.

We appreciate the time you have taken to provide the valuable input, and encourage you to continue monitoring the progress of this issue via the Policy Register and welcome your further feedback at any time.

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