Award of Costs in Trade Mark Opposition Proceedings

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Table of Contents

• When to Seek an Award of Costs
• Applying for Costs Out of Time
• Allowable Expenses
• Withdrawing From an Opposition
• Recovering Costs
• Key Takeaways
• Frequently Asked Questions

If you are successful in opposing another firm’s trade mark, you can recover the costs involved in building your legal case. This is called an award of costs, and it does not include any additional money beyond the expenses you actually incurred. You cannot automatically recover all of your expenses. This article will explain the conditions to apply for an award of costs and its consequences. 

When to Seek an Award of Costs

During a trade mark dispute, you would typically incur legal costs at each stage of the proceeding. If you come out as the winning party or the other side withdraws the case, you can apply for an award of costs to recoup expenses you incurred during the legal dispute. 

The Trade Marks Regulations 1995 (the ‘Regulations’) governs the award of costs in a trade mark proceeding. Under this law, you may apply to the Registrar of Trade Marks (the ‘Registrar’) during proceedings with them or within three months of a decision being made. The Trade Marks Office will use available information on your application date to make a decision.  If your trade mark issue proceeds to court instead, you can request an award of costs during your dispute. The judge’s written decision will include the award.

Alternatively, if your proceeding is discontinued or withdrawn, whether you can get an award of costs will depend on: 

• the terms of the settlement document (also called Deed of Settlement), which outlines the financial compensation you will receive in exchange for not proceeding to court over the dispute;
• other written confirmation of you and the other party agreeing on an award of costs, even if an award amount is not specified; or
• written explanations of why exceptional circumstances you are experiencing (if any) would justify making an award of costs.

Applying for Costs Out of Time

Applying for an award of costs outside of the time limit is only possible if you are first granted an extension of time. The process to apply for an extension of time includes: 

• filing the approved extension of time form with IP Australia;
• paying the relevant fee; and
• submitting a supporting statement outlining why you failed to apply for an award of costs within the relevant period.

Allowable Expenses

You can only claim an award of costs on specific allowable expenses. These include the costs of:

• preparing, receiving and perusing the Notice of Opposition, which outlines why a trade mark application is being opposed;
• preparing, receiving and perusing evidence;
• agents’ fees;
• professional legal representation fees;
• hearing attendance fees and expenses, if your matter goes to court;
• fees for the proceedings; and
• allowances payable to people summoned to the proceedings or court.

There are limits in the Regulations on allowable costs. This means that the award of costs you receive will not always cover the actual amount you incurred. 

Trade Mark Essentials

This guide explains the essentials of trade marks and the steps required to register a trade mark.

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Withdrawing From an Opposition

If your trade mark is being opposed, you may consider withdrawing from a proceeding. If so, you should factor in the appropriate fees. The longer the proceeding goes on, the more costs the other party may incur, which will increase how much you pay in any future costs order. If you decide to withdraw, submit your withdrawal to IP Australia as soon as possible. This limits incurring further expenses by the other party that may be included in an award of costs.

Recovering Costs

If you receive an award of costs, the other party will have a specific time period to make payment. If the unsuccessful party fails to pay within this period, the costs they owe you will become a due debt they must pay. 

Key Takeaways

As a trade mark owner, you should know how to protect your registered trade mark under the relevant legislation. It is possible for the successful party of a trade mark opposition to seek an award of costs, either during the hearing or separately by the Registrar. An award of costs is made in relation to specific allowable expenses associated with an opposition and is not intended to punish the unsuccessful party. Before challenging or defending the validity of a trade mark, you should consider the consequences of a cost application, specifically:

• when to submit an application for an award of costs;
• how to go about applying for costs out of time;
• the types of expenses that can be claimed; and
• the recovery process.

If you would like assistance regarding applying for an award of costs, contact our experienced intellectual property lawyers as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.   

Frequently Asked Questions