Tribunal Practice Notice (TPN 4/2007)
Costs in proceedings before the Comptroller
1. This Tribunal Practice Notice updates and supplements Tribunal Practice Notice TPN 2/2000 concerning the award of costs in patent, trade mark and design proceedings before the Comptroller.
2. TPN 2/2000 was issued following a review of the Comptroller's practice on the award of costs in proceedings before him. The outcome of that review supported the long-established practice that costs in proceedings before the Comptroller are awarded after consideration of guidance given by a standard published scale. However, the review also concluded that the Comptroller should have the freedom to award costs off the scale to deal proportionately with unreasonable behaviour. This TPN maintains that philosophy but updates the scale values set out in TPN 2/2000 as well as providing further guidance arising from developments in practice in relation to hearings.
The new scale
3. Annex A to TPN 2/2000 puts figures to the scale of costs in respect of an award in proceedings commenced on or after 22 May 2000. This scale has not been revised since April 2000 and it now needs updating to take better account of the real costs currently involved in litigation before the Comptroller whilst still maintaining the underlying contribution-not-compensation approach. The new scale at Annex A to this Notice will be applicable in respect of awards of costs in proceedings commenced on or after 3 December 2007. For proceedings commenced before that date, the scale, published as Annex A to TPN 2/2000, will continue to apply.
4. The previous scale was difficult to interpret because it indicated only upper "limits" which in any event could be exceeded if appropriate. Therefore, it did not indicate whether these limits were for a one day hearing or a ten day hearing, nor did it reflect the weight of the evidence submitted. The new scale has a simpler structure and provides a more transparent balance between providing certainty over the exposure to costs for the losing party and compensating the successful party for a proportion of the costs he has justifiably incurred. The scale therefore sets a cap but also indicates a range of costs commensurate with, for example, the weight of the evidence and the number of hearing days.
Off scale costs
5. TPN 2/2000 recognises that it is vital that the Comptroller has the ability to award costs off the scale, approaching full compensation, to deal proportionately with wider breaches of rules, delaying tactics or other unreasonable behaviour. Whilst TPN 2/2000 provides some examples of unreasonable behaviour, which could lead to an off scale award of costs, it acknowledges that it would be impossible to indicate all the circumstances in which a Hearing Officer could or should depart from the published scale of costs. The overriding factor was and remains that the Hearing Officer should act judicially in all the facts of a case. It is worth clarifying that just because a party has lost, this in itself is not indicative of unreasonable behaviour
6. TPN 2/2000 gives no guidance as to the basis on which the amount would be assessed to deal proportionately with unreasonable behaviour. In several cases since the publication of TPN 2/2000 Hearing Officers have stated that the amount should be commensurate with the extra expenditure a party has incurred as the result of unreasonable behaviour on the part of the other side. This "extra costs" principle is one which Hearing Officers will take into account in assessing costs in the face of unreasonable behaviour.
7. Any claim for cost approaching full compensation or for "extra costs" will need to be supported by a bill itemizing the actual costs incurred.
8. Depending on the circumstances the Comptroller may also award costs below the minimum indicated by the standard scale. For example, the Comptroller will not normally award costs which appear to him to exceed the reasonable costs incurred by a party.
Costs in undefended actions
9. In the past costs have been awarded against rights owners or applicants when an opposition, revocation or invalidity action has been brought without prior notice, even if the action was then undefended and the application or rights in question were immediately withdrawn or surrendered. Unless factors exist which suggest otherwise, as from 3 December 2007 costs will not be awarded against rights holders or applicants who do not defend an action in such situations.
Costs arising from interlocutory or preliminary hearings
10. Notwithstanding the guidance in TPN 2/2000 on the timing of costs awards and their payment, there remains some uncertainty as to whether a Hearing Officer should generally award costs following an interlocutory or preliminary hearing. As from the 3 December 2007 the Hearing Officer will always consider dealing with costs as the cause of them arises, either by specifically making no award if the issues were fairly well balanced or by making an award to the successful party.
Conditional fee arrangements
11. If one of the parties in dispute before the Comptroller has agreed a conditional fee arrangement ("CFA") with their legal representative, any "success fee" will not be taken into account when assessing costs. If the normal scale is applied, there will be no uplift to take account of any CFA. Even when off-scale costs are awarded, the amount will be assessed using the usual principles for assessing off-scale costs, and the amount will not be affected by the existence of a CFA.
12. Because of this, the requirement in CPR 44.15 to provide information about any CFA does not apply to proceedings before the Comptroller. However, parties will need to consider the implications of CPR 44.15 in the event of any subsequent appeal to the courts.
Contacts for enquiries
Current contact details for enquiries about this Notice are:
Fax: +44(0)1633 814491
Trade Marks & Designs:
Trade Marks & Designs Directorate
Fax: +44(0)1633 811175
Comptroller-General of Patents, Designs and Trade Marks
14 November 2007
Scale of costs applicable in proceedings commenced on or after 3 December 2007
|Read across each row to find the type of task in the first cell and the related costs in the send cell.|
|Preparing a statement and considering the other side’s statement||From £200 to £600 depending on the nature of the statements, for example their complexity and relevance.|
|Preparing evidence and considering and commenting on the other side's evidence||From £500 if the evidence is light to £2000 if the evidence is substantial. The award could go above this range in exceptionally large cases but will be cut down if the successful party had filed a significant amount of unnecessary evidence.|
|Preparing for and attending a hearing||Up to £1500 per day of hearing, capped at £3000 for the full hearing unless one side has behaved unreasonably. From £300 to £500 for preparation of submissions, depending on their substance, if there is no oral hearing.|
|Expenses||(a) Official fees arising from the action and paid by the successful party (other than fees for extensions of time).
(b) The reasonable travel and accommodation expenses for any witnesses of the successful party required to attend a hearing for cross examination.