Tribunal Practice Notice (TPN 6/2008)
Costs in proceedings before the Comptroller
1. This Tribunal Practice Notice updates and supplements Tribunal Practice Notice TPN 4/2007 concerning the award of costs in trade mark proceedings.
Introduction
2. TPN 4/2007revised the scale of costs as well as providing further guidance arising from developments in practice in relation to hearings. This TPN provides updated guidance in the specific area of the provision of notice in relation to proceedings, particularly in the light of the provision in the Trade Marks Rules 2008 for an opponent to extend the period for filing Notice of Opposition (Form TM7) by filing Notice of Threatened Opposition (Form TM7a).
The need to provide reasonable notice
3. As from 3 December 2007, costs are not usually awarded against rights holders or applicants who do not defend an action brought without prior notice. This practice still applies to trade mark revocation and invalidation proceedings and to opposition proceedings where, under the new Trade Marks Rules 2008 ("the rules"), the opponent files an opposition without having previously filed a Notice of Threatened Opposition on Form TM7a, or otherwise given the applicant prior notice of the impending opposition.
4. However, as the Registrar copies Notices of Threatened Opposition to applicants, the UK-IPO accepted, in ‘The Response to the Consultation on the new Trade Mark Rules’, that the act of filing Form TM7a would usually be considered as giving the applicant an opportunity to withdraw the application before any formal opposition was filed. The Form TM7a does not provide the applicant with a summary of the intended grounds of the opposition, but in many cases these will be obvious from the results of the Examiner’s search for earlier marks sent to the applicant prior to the publication of the application. Further, the TM7a does provide the applicant with the opponent’s contact address.
5. Thus, an award of costs from the normal scale will usually be made to an opponent where a) a Form TM7a was filed, b) a subsequent Notice of Opposition is filed, and c) the opposition is undefended. The Registrar will use his discretion to reduce that award, or give no award at all, where the opponent did not allow reasonable time between the filing of Form TM7a, and the subsequent Form TM7, or is shown to have unreasonably refused to answer a request from the applicant to give an indication of the prospective grounds for opposition, despite having been asked to do so.
6. Where an opposition is defended, the provision or otherwise of prior notice will not usually affect the award of costs at the conclusion of the proceedings, which will normally be based on the published scale of costs.
Contacts for enquiries
Raoul Colombo
Room
2.G52
Trade Marks & Designs Directorate
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel:
+44(0)1633 811407
Fax: +44(0)1633 811175
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 | |
| Task | Cost |
|---|---|
| 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. |