For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 10 December 2012

Costs in a Trade Mark Opposition: It's a Lot "More" Than You Think

There are aspects of trade mark law that can play a substantial role in a decision about whether to enter into an opposition proceeding, but have tended to attract less commentary and professional discussion. One of the most notable of these aspects is the issue of costs. This is especially so when the jurisdiction involved is a small or medium-sized country. In such circumstances, the decision to go proceed with the opposition action, or to subsequently go forward upon filing, may be materially affected by the likelihood that costs will be awarded if the moving party either withdraws the action or has receives an adverse judgment, assuming that the jurisdiction authorizes costs.

This subject arose as this Kat was recently getting his paws around the latest batch of decisions issued by his own national trade marks registry. Even more than the substantive results of the decisions themselves, what really grabbed his attention were the costs that were being awarded in nearly every instance, even for procedural matters. This led me to ask myself a series of questions that I had never really thought about in a systematic fashion: how many national trade mark systems authorize their respective registries to award costs in such circumstances? What is the usual range of such awards? Is the award of such costs good or bad for the trade mark system?

Except for his own anecdotal experience, this Kat does not know the answer to the first question, beyond the fact that some countries authorize the awarding of costs in such circumstances, while others do not. And so to the initial question for our readers: does your national trade mark practice authorize the awarding of costs in an opposition proceeding?

As for the matter of the range of the costs awarded, this Kat will also rely on his anecdotal experience. On that basis, he notes that, while the amount of such awards tends to be less than the amount awarded by a court of general jurisdiction, the ratio between the two is not nearly as great as one might expect. In some instances, the award given by the registry is even greater as an absolute amount than is the comparable amount awarded by the court. Moreover, as a function of the professional hours devoted to an opposition or cancellation, his impression is that cost awards given by his national registry tend to be larger on a relative basis than the costs granted by the courts. Given the procedural simplicity of most opposition proceedings, as compared with a full-fledged action litigation action in a court of general jurisdiction, this seems surprising.

These considerations lead this Kat to two further thoughts about the circumstances in which a national registry is empowered to grant an award of costs in an opposition action.
1. If the rules governing a trade mark opposition action provide for an exchange of pleadings, submission of evidence, an oral hearing and examination of witnesses and post-hearing written summations, then there is a greater likelihood that the registry will be empowered to grant costs. That said, why a small or medium-sized jurisdiction would be interested in facilitating such a system is a mystery to this Kat, since it seems to be a disincentive for both the applicant and opposer.  This is especially so when budgets are constrained and there are alternative low-cost jurisdictions. All in all, it seems to be a misplaced use of both public and private resources.

2. When, as is becoming increasingly prevalent as a matter of practice, the trade mark registry does not carry out a substantive examination based on relative grounds, the role of the opposition is more central in maintaining the integrity of the registry. Still, in this situation, this Kat suggests that the issue of the scope of costs will likely depend on whether the opposition is maintained before the registry or the court, with the latter inclined to award costs in a greater amount. Here, as well, the question can be asked whether a small or medium jurisdiction is serving its best trade mark interests in providing for that the opposition proceeding be adjudicated before the court rather than the registry.

8 comments:

Department of Minuscule Emendations said...

"All in all"?

the pufferfish said...

Well the UK seems to be quite strict..

My record - other side asked for £15k, after arguments they were awarded £300.

Jeremy said...

Thank you DME, for your attention to detail. The text has been duly amended (or should that be emended ...?)

the pufferfish said...

either has the same affect ;)

Pedro Malaquias said...

In Portugal, no cost are awarded in opposition proceedings. The opposing - even if sucessful - has to bear the fees with the trade mark office (and also with its trade mark representative).

Gregory Chandler said...

I am getting deeper into trademark law.

I will go to India in March 2013.


Gregory Chandler, Attorney at Law

e-mail attatlawgc@gmail.com

Richard Ashmead said...

INTA’s “International Opposition Guide” has reports from rather a lot of countries in its “Monetary Awards” section on whether their opposition authorities have the power to make a formal monetary award to one or more party, notably specific costs, official or attorney fees or other compensation. There is also information (I have not checked where exactly) on where opposition proceedings are adjudicated before the court rather than the registry – few jurisdictions from recollection.

The online publication, available free to all INTA members through INTA’s web site, has edited local input from close to 100 countries, not all of which of course report the existence of opposition provisions, but most do.

For those not familiar with “International Opposition Guide” its purpose is not to show the user how to file an opposition, but to offer information on the structure of local opposition and related practices in numerous jurisdictions to help decisions on when to oppose, available grounds, and when not to oppose.

Sepideh Sarabandi said...

Can anyone offer me some advice.

I have a uk registered limited company and using the same name I applied for trademark with the UKIPO. The application of my trademark was published and just a few days before the opposition deadline I received a TM7a “notice of threatened opposition”

However, the form sent to me by the. iPO did not include any reasons for the opposition and I have not received any correspondence from the opposer.

I had only applied for my trademark to be registered in the UK. The opposer is based in the USA and has filed an international application for a similar wording trademark. They registered their domestic trademark with USIPO before mine but applied for international registration well after me. Simply, when I checked the WIPO trademark database the filing date shown is after mine so I don’t know who has priority? They applied for international mark 4 months after filing their domestic application with USIPO.

They have designated EM in their international wipo application which I presume includes the UK.

So they have not registered the name as a uk limited company, whereas I have, I also have the .co.uk domain so thinking I may have priority but after doing so much research I’m confused.

Mainly WIPO say that the filing date will be the same as the domestic filing date so long as the application is recieved to them within 2 months of the domestic application, if not, then the date it’s received will be the filing date. Well, they filed 4 months after the domestic application and the date recorded on the wipo database gives the later date, I.e. The day they received it which is after my uk application and 4 months after their domestic application. However, I have also read that they have priority if they have the Paris convention which is shown in their application. If this is the case, why does the wipo application not show the original domestic filing date as the international filing date.

I don’t know why they gave no reasons for the opposition or made any contact with me, maybe that will come later. Also, if they are serious why don’t they just file the TM7?

Hope someone out there can give me some guidance as I’ve put a lot of hard work and time into this project. The opposer is a massive corporation and will no doubt swallow me up in court.

Any help gladly appreciated.
Jake

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':