Security for costs under Rule 61 of the Trade Marks Rules 2000

Rule 61 of the Trade Marks Rules 2000 gives the Registrar the discretion to require an applicant or opponent who neither resides nor carries on business in the United Kingdom to give security for the costs of the proceedings before the Registrar.

In a recent case (Fitzgerald v Williams, The Times, January 3 1996, C.A.) the Court of Appeal held that an English Court should never exercise its discretion under Order 23 Rule 1 of the Supreme Court, to order security to be given by an individual plaintiff who is a national of and resident in another member state which is a party to the Brussels Convention, at any rate in the absence of very cogent evidence of "substantial difficulty" in enforcing a judgement in that other member state. This was because the Brussels Convention introduced an effective means by which a successful defendant resident in the United Kingdom can enforce an order for costs against an unsuccessful plaintiff in another contracting state. The Convention was brought into effect in the United Kingdom by the Civil Jurisdiction and Judgements Act 1982.

Practitioners should therefore note that in cases where an order for security for costs is sought against a party which is a national of and resident in a state which is party to the Brussels Convention, the Registrar will need to be convinced, by way of evidence showing that there is likely to be substantial difficulty in enforcing an ordinary award of costs, before he will issue an order for security for costs.