IP Australia Trademark Renewal Fees - Unfair Terms under Australian Consumer Law?

[WiserNow]

I recently went to renew a trademark and unfortunately was 1 month and 3 weeks late. The late fees IP Australia charge are $100 per month or part thereof.

Given the class action that was taken and won against the NAB for excessive fees would be interested in peoples' views on what IP Australia charge.

I personally feel this is excessive and see this falling under unfair contract terms of the Australian Consumer Law.

 

[Sophea]

Hi Ash,

Australian Consumer Law defines an unfair contract as one that:

• causes a significant imbalance in the parties’ rights and obligations
• is not reasonably necessary to protect the legitimate interests of the benefiting party
• causes detriment (financial or otherwise) to you if it was relied on by the other party.

Meanwhile, common law and equity have always recognised the doctrine of penalties - which states that a term in a contract which is deemed a penalty is unenforceable at law. So for example fees charged by banks for things like late payment fees or cheque dishonours etc have found to be unenforceable "penalties" if they are not proportionate to the cost incurred by the bank by the late payment or dishonour. For example where an account overdrawn by $1 gives rise to a dishonour fee of $30. The High Court has determined that fees imposed by banks are capable of being characterised as penalties and therefore unenforceable depending on the nature and quantity of the fees charged.

Im not overly familiar with the NAB case, but you may have grounds to argue unfair contractual term, if the $100 fee is not proportionate to the cost that the late payment would cause to IP Australia.

 

[Tim W]

I am not sure that Trademark Registration is a transaction to which the Australian Consumer Law applies.

 

[Sophea]

Good point Tim.

 

[Ivy]

Yes, the ACL applies to transactions with Australian businesses. Private seller transactions are not included (with limited exceptions) and I don't believe that transactions with Australian government departments are included either.