Can I Recover Costs After Withdrawing From a Trade Mark Opposition?

In Short

• Withdrawing from a trade mark opposition doesn’t automatically mean you’ll incur costs.

• The Registrar considers various factors, such as the dispute history and any settlement agreements, before awarding costs.

• Timely withdrawal can help minimise further expenses and avoid increasing cost orders.

Tips for Businesses
If you plan to withdraw from a trade mark opposition, act promptly to limit additional costs. Review any settlement agreements or written confirmations with the other party, as these may affect the cost award. Always consider the dispute’s history and consult a professional to ensure the best outcome when withdrawing.

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Table of Contents

• Understanding Cost Awards in Trade Mark Disputes
• Withdrawing From an Opposition
• Factors Influencing Cost Awards in Withdrawals
• Exceptions
• Extension of Time Hearings
• Key Takeaways
• Frequently Asked Questions

In the complex world of intellectual property disputes, trade mark opposition proceedings can be costly and time-consuming. If you have decided to withdraw from such a proceeding, you might wonder about the financial implications. This article explores the possibility of recovering costs in trade mark opposition withdrawals and outlines the key factors influencing cost awards.

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Understanding Cost Awards in Trade Mark Disputes

Generally, costs in trade mark disputes are awarded against the unsuccessful party. However, in cases of partial success or withdrawal, the situation can become more nuanced. Cost awards can apply to various types of oppositions, including:

• opposition to a trade mark registration;
• opposition to an application to remove a trade mark registration based on non-use; and
• applications for extensions of time in opposition proceedings.

It is important to note that cost awards are not punitive. The Registrar only awards costs to cover the actual expenses incurred by the successful party, such as:

• agents’ fees;
• professional legal representation fees;
• fees for the proceedings;
• allowances payable to people summoned to the proceedings; and
• hearing attendance fees and expenses.

Withdrawing From an Opposition

If you are considering withdrawing from an opposition, timing is crucial. The longer a proceeding continues, the more costs the other party incurs, which may increase the amount you must pay in the cost order. Promptly submitting your withdrawal to IP Australia can help avoid further expenses.

Factors Influencing Cost Awards in Withdrawals

When determining whether to award costs in a withdrawal scenario, the Registrar considers several factors, including:

• the existence of a Deed of Settlement between parties, as this may outline financial payment terms;
• any written confirmation of an agreement on costs between parties; and
• written submissions outlining exceptional circumstances justifying a cost order. This could, for example, include the non-appearance or disappearance of the other party.

When deciding to withdraw from a trade mark opposition, it is essential to consider the history of the dispute.

Exceptions

Costs are usually awarded against the unsuccessful party, though there are exceptions. Since the opposition process is part of the registration procedure, evaluating conflicting claims is inherent to this process, with oppositions regarded as a fundamental element.

Where the parties to the dispute have no issues remaining except the question of costs generally, the Registrar will ordinarily make no orders to costs unless:

• one party acted unreasonably, justifying a cost award to the other party; or
• both parties acted reasonably, but one party would have almost certainly succeeded if the matter had proceeded to a full hearing.

Extension of Time Hearings

The Registrar can also award costs associated with hearings held for an extension of time. The costs awarded in these circumstances are generally awarded against the unsuccessful party in the extension of time matter, regardless of the outcome of the hearing of the actual dispute.

If the extension of time only came because of something that was disclosed at the hearing, then costs might be awarded against the successful party.

Key Takeaways

Withdrawing from a trade mark opposition does not automatically mean you will be liable for the other party’s costs. The Registrar considers various factors when deciding on cost awards, including the history of the dispute and any agreements between the parties. When withdrawing, you should carefully review the communications between the disputing parties and take into account any important documents that might outline the terms of financial compensation, such as the settlement deed.

If you need help withdrawing from a trade mark opposition, our experienced IP lawyers can assist as part of our LegalVision membership. You will have unlimited access to lawyers to answer your questions and draft and review your documents for a low monthly fee. Call us today on 1300 544 755 or visit our membership page. 

Frequently Asked Questions

How soon should I notify IP Australia if I decide to withdraw from an opposition?

You should notify IP Australia as soon as possible. Prompt notification can limit further expenses incurred by the other party, which would otherwise increase the amount you must pay in the cost order.

Does withdrawing from a trade mark opposition mean I’ll automatically have to pay the other party’s costs?

No, withdrawing does not automatically result in a cost order against you. Before deciding on cost awards, the Registrar considers various factors, including the dispute’s history and any agreements between parties.