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Changes to Australian Trade Marks fees from October 2020

Certain fees, including the government fees to file a standard trade mark application, using a custom description of goods or services increased in October 2020. They have increased by $70 per class of goods or services. When you file a trade mark application, you have to specify the goods and/or services you’re filing a trade mark application in relation to.

They’re broken up into classes or categories and there are government fees per class. Particularly when filing the increase is when you file an application with a custom description. Basically, when you’ve decided to freeform describe your own goods and services instead of using the government approved descriptions, which can be selected from a picklist provided by the trade marks office.

Generally, our office tries to stick with the official picklist, because since that increase the official fees are $150 per class less than the alternative. Prior to the October 2020 increase the difference in fees between a picklist application and a custom description application was $80 per class. So, that has now increased making the difference $150 per class.

The official fee (for a standard application) using the picklist is $250 per class whereas the custom description option is now $400 per class. Our official fees have remained the same.

When would I pick custom descriptions over the pick list option?

It’s not hugely common these days to utilise the ‘own description’ option. For us, this might be used when we receive instructions from an applicant that resides outside of Australia or from their attorneys, as they want their Australian specification to match their foreign specification, and that may not be available using the picklist.

However, when we file trade marks for our clients, almost always, we will use the government picklist unless the client strongly prefers to describe their goods and services in a custom manner, which attracts the higher fee.

Occasionally we have a client with a new product or service that simply doesn’t marry up to the picklist available so may require a custom description to ensure best protection. Another time you may see a custom description is to ensure compliance with an agreement with another party. Occasionally there will be two parties with similar names that have agreed only to use (and file) those trade marks for particular goods and/or services so sometimes this may require a custom description to be entered.

A reason not to use the custom description option, other than the higher fee, is that you don’t have the option to file via what’s called the Headstart early assessment route. To qualify for the pre-filing assessment offered by Headstart you have to use the pick list.

The advantage of requesting a Headstart assessment is that you get very quick pre-filing examination from the government. This will return an indication, before filing, within about 5 business days where as a standard application (which is where you can use a custom description) won’t be examined for up to around 6 months.

Why does it cost so much more to use a custom description of goods or services?

Mostly it is to cover administrative costs and the time of an examiner. When using the picklist, the examiners do not have to spend time considering whether the applicant has selected the correct class, nor do they have to consider whether the nominated goods or services have been correctly classified.

It is not uncommon for a ‘custom description’ application to receive an examiner’s report because of incorrect class selection. We have seen applications filed, for example, in a single class (not always the right one) seeking to cover a wide range of goods or services that may actually fall into multiple classes.

So, the examiner has to spend time researching the goods/services and determining their appropriate classes and then writing to the applicant, considering their response and then having to make various changes to ensure appropriate classes and descriptions on the final registration.

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