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Liability for costs
Parties to Tribunal proceedings may incur a liability for costs. The exact amount of costs will be dependent on the circumstances of the specific application. The Tribunal does, however, use an official scale which reflects a variable amount for process. This includes, but is not limited to, the preparation and filing of forms, the compilation of evidence and the representation at hearings. The cost for the evidence stage will depend on the amount of evidence filed and its relevance. Any appeals within the proceedings may result in further costs incurred. The party that is awarded costs is unlikely to have the total cost of the proceedings reimbursed. This is because costs awards are generally contributor rather than compensatory.
The current scale is set as follows:
- Preparing a statement and considering the other side’s statement – from £200 to £600.
- Preparing evidence and considering the other side’s evidence – from £500 to £2,000, depending on how substantial the evidence is.
- Preparing for and attending a hearing – from £1,500 to a maximum of £3,000 per day of hearing and from £300 to £500 for the preparation of submissions.
- Expenses – (a) official fees arising from the action and paid by successful party, (b) reasonable travel and accommodation expenses for any witness of the successful party, required to attend a hearing.
The scale also considers the requirement of a party to give reasonable notice for the intention of proceeding with a legal remedy and allow the other party to take action to avoid this if they so wish.
Unrepresented parties
Cost awards made to unrepresented parties will include the full cost of official fees (e.g. Tribunal filing fees) but only half of the published amount (e.g. cost of preparing evidence). The unrepresented party is invited to provide a breakdown of their costs. The account includes the number of hours spent on proceedings. The minimum level of compensation for litigants is set at £24 per hour by the Litigants in Person (Costs and Expenses) Act 1975.
Request for costs
A claim for an award of costs is usually included in a statement or counterstatement. If a claim is not included, the Tribunal will consider as awards in favour of the successful party. No award is made until both parties have had the opportunity to comment.
Joint opponents and cross-proceedings
If a successful opposition to an application has two or more parties, any costs awarded are calculated as being for a single opponent only. If the opposition is not successful, the amount each is to pay may be specified, unless it is considered that they are jointly and severally liable.
Costs off the scale
If the Tribunal feels that a case has been brought without any belief that it was soundly based, or if the jurisdiction was being used in a disingenuous way, they are able to award compensatory costs. The ground rule is that the amount awarded should be proportional to the extra expenditure a party has incurred as a result of the other side’s unreasonable behaviour.
Security of costs
This is a provision of an amount of money by one party that is sufficient to cover their liability costs, should they lose. There can be many scenarios that can cause concern for parties in relation to recovering costs, such as a party being based outside the UK or having an outstanding payment ordered by the Tribunal. If the Tribunal feels that an order for security is justified, they can grant it under Section 68 TMA and Rule 68 TMR. It can be made against any party in the proceedings. This order is essentially a deposit for the potential costs recoverable by the other party.
Negotiations and an award of costs
Parties can often reach agreements within themselves to settle the action without the need for a Tribunal decision. It can result in an applicant agreeing to limit their application, usually regarding the goods or services or can also see an application being withdrawn or a registration surrendered. Regarding costs, the Tribunal would expect the agreement to cover the question of costs and to decide on a settlement. If the parties have settled through negotiation, the Tribunal will usually not make a costs award in favour of either party.
An applicant may request an amendment other than as a result of negotiations. This could eliminate the reasons for the opposition, revocation, invalidity or rectification action and prompt withdrawal. An application that has been amended before withdrawal is considered a partial success for the party that brought the proceedings. Partial success can be awarded with costs by the Tribunal, reflecting the extent to which it succeeded.
If negotiations are aborted and an award of costs follows, the court follows the following principle; if a settlement offer was as good as (or better than) the final outcome, the party normally does not have to pay the costs incurred by the other side. However, if the offer was less than the eventual outcome, the party may expect to pay the usual costs.
Enforcement of an award of costs
This is a matter for the party in whose favour the award was made. Under Section 68(2) TMA, an order must be enforced by an application made to the Court.
Non-payments of costs
The Tribunal may be approached by a party in the event that their award remains unpaid. They will write to the party to whom the award was made against, reminding them of their obligation and allowing them an additional period within which to make the payment. They also inform them that if the payment still has not been made, the details of the failure to pay would be published on the Intellectual Property Office website. As the Tribunal have no power to directly enforce the order, this publication is aimed to incentivise the parties and warn them of potential future requests for the security of costs.
