As with all legal proceedings, the successful party to a trade mark opposition matter can recover costs incurred in establishing his or her case. An award of costs is not punitive in nature and is intended to cover expenses actually incurred. You cannot automatically recover all expenses. Before challenging or defending the validity of a trade mark, it is then important to consider the consequences of a cost application, particularly:
- 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.
When to Seek an Award of Costs
Under the Trade Marks Regulations 1995 (Cth), a party to proceedings may apply to the Registrar for an award of costs during the proceedings or within three months of a decision being handed down.
It is common for each party to make submissions on the award of costs during the hearing. If parties seek costs during the hearing, they will form part of the written decision. If a matter does not proceed to a hearing but is decided by the Registrar, you may apply instead to the Registrar for an award for costs. Here, any cost order will be determined by the information available to the Trade Marks Office at the time.
If proceedings are discontinued or withdrawn, an award of costs will depend on:
- The terms of the Deed of Settlement (if any);
- Other written confirmation by the parties that demonstrates an agreement that an award of costs should be made (even if the document is silent as to the quantity of costs to be awarded); or
- Written submissions which set out exceptional circumstances that would justify the making of a costs order.
Applying for Costs Out of Time
An application for an award of costs filed outside of time can only be submitted if an extension of time is first granted. To apply for an extension of time, the defaulting party will need to:
- File the approved extension of time form,
- Pay the relevant fee, and
- Tender a supporting declaration outlining why they failed to apply for an award of costs within the relevant time period.
Only allowable expenses can be claimed under an award of costs. These include the costs of:
- Preparing, receiving and perusing the Notice of Opposition;
- Preparing, receiving and perusing evidence;
- Agents fees;
- Professional legal representation fees;
- Hearing attendance fees and expenses;
- Fees in relation to the proceedings and
- Allowances payable to summoned persons.
Once an award of costs is granted, if a party defaults, recovery of costs can be sought as a debt due and owing by the person ordered to pay.
If you would like to know more about the process of applying for an award of costs, please get in touch on 1300 544 755. LegalVision’s experienced intellectual property lawyers would be delighted to assist and answer any of your questions.