It can be quite costly to oppose a non-use application successfully. At the outset, IP Australia requires several payments of fees including to file a Notice to Oppose or obtain an extension of time. Trade mark oppositions are incredibly technical, and a trade mark lawyer can help you navigate through the proceedings. Under section 202(d) of the Trade Marks Act 1995 (Cth), the Registrar may award costs against a party. So, what needs to be satisfied to obtain an award of costs?

The Proceedings Must Involve An Opposition

Costs can only be awarded in proceedings involving an ‘opposition’ meaning an application to, 

  • Oppose a trade mark’s registration;
  • Seek a trade mark’s removal from the register for non-use; and
  • Seek an extension of time.

Costs Must Have Been Actually Incurred

In trade mark proceedings, a costs award is intended to cover the expenses incurred by the successful party. A costs award is not punitive. The Registrar will not award costs to punish the Applicant or deter others from doing the same. 

The rule that costs must have been actually “incurred” places self-represented litigants in a particular position of vulnerability. Work that a party undertakes on their own behalf is not done for payment. As such, it is not incurred and cannot be recovered. 

The Right to Be Heard

Before awarding costs, the Registrar must afford both the Applicant and the Respondent to the opposition proceedings a reasonable opportunity to be heard. Generally, representations as to costs are dealt with at the end of the hearing. However, it is possible to request a subsequent hearing for the purpose of dealing with any and all costs issues.

Costs Are Not Automatic

The general rule is that costs follow the event, however, an award of costs is not automatic. In trade mark proceedings, it is possible for an award of costs to be withheld where the successful party unreasonably contributed to the proceedings expense. 

Award of Costs Where Proceedings are Discontinued or Dismissed

Where the proceedings are discontinued or dismissed, successfully obtaining an award of costs largely depends upon:

  • The terms of the Deed of Settlement (if any); 
  • Written confirmation demonstrating an agreement between the parties that the Registrar should award costs, even if the document does not specify an amount; or
  • Written submissions that set out exceptional circumstances justifying an order for costs.

Conclusion

If you have any questions about defending a trade opposition or recovering any costs, please get in touch on 1300 544 755. LegalVision’s experienced dispute resolution and litigation lawyers would be delighted to assist you.

Vanja Simic

Next Steps

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