Reading time: 3 minutes

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If proceedings are discontinued or withdrawn, an award of costs will depend on: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.

Allowable Expenses

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.

Recovering Costs

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.

Conclusion

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.

Webinars

How Franchisors Can Avoid Misleading and Deceptive Conduct

Wednesday 18 May | 11:00 - 11:45am

Online
Ensure your franchise is not accused of misleading and deceptive conduct. Register for our free webinar today.
Register Now

New Kid on the Blockchain: Understanding the Proposed Laws for Crypto, NFT and Blockchain Projects

Wednesday 25 May | 10:00 - 10:45am

Online
If you operate in the crypto space, ensure you understand the Federal Government’s proposed licensing and regulation changes. Register today for our free webinar.
Register Now

How to Expand Your Business Into a Franchise

Thursday 26 May | 11:00 - 11:45am

Online
Drive rapid growth in your business by turning it into a franchise. To learn how, join our free webinar. Register today.
Register Now

Day in Court: What Happens When Your Business Goes to Court

Thursday 2 June | 11:00 - 11:45am

Online
If your business is going to court, then you need to understand the process. Our free webinar will explain.
Register Now

How to Manage a Construction Dispute

Thursday 9 June | 11:00 - 11:45am

Online
Protect your construction firm from disputes. To understand how, join our free webinar.
Register Now

Startup Financing: Venture Debt 101

Thursday 23 June | 11:00 - 11:45am

Online
Learn how venture debt can help take your startup to the next level. Register for our free webinar today.
Register Now

About LegalVision: LegalVision is a commercial law firm that provides businesses with affordable and ongoing legal assistance through our industry-first membership.

By becoming a member, you'll have an experienced legal team ready to answer your questions, draft and review your contracts, and resolve your disputes. All the legal assistance your business needs, for a low monthly fee.

Learn more about our membership

Need Legal Help? Submit an Enquiry

If you would like to get in touch with our team and learn more about how our membership can help your business, fill out the form below.

Our Awards

  • 2020 Excellence in Technology & Innovation Finalist – Australasian Law Awards
  • 2020 Employer of Choice Winner – Australasian Lawyer
  • 2021 Fastest Growing Law Firm - Financial Times APAC 500
  • 2020 AFR Fast 100 List - Australian Financial Review
  • 2021 Law Firm of the Year - Australasian Law Awards
  • 2019 Most Innovative Firm - Australasian Lawyer