55.3. Applications for an award of costs

Under reg 21.12 a party to proceedings before the Registrar may apply to the Registrar for an award of costs in relation to the proceedings. This may happen during the proceedings (reg 21.12(2)(a)) or within 3 months of:

a. the date on which the proceedings are ended by the issue of the Registrar’s decision (reg 21.12(2)(b)(i)).  

b. the date of the Registrar’s notice to the parties that proceedings have been either discontinued or dismissed (reg 21.12(2)(b)(ii)).

3.1 Costs sought at a hearing

Where the proceedings lead to a hearing, it is usual for each party to make submissions on the award of costs at the hearing. A party who chooses not to appear at the hearing may make written submissions as to the award of costs. The award of costs following a hearing will form part of the written decision on the substantive matter. The hearing officer should, if necessary, remind the attending party or parties of the opportunity to request an award of costs. Dealing with that issue at the hearing will avoid a need to revisit the matter at some stage after the substantive matter is decided. Where costs are requested either at the hearing or in written submissions filed by a party, the hearing officer should ensure that the written decision deals with that issue.

3.2 Costs sought when the matter is determined without a hearing

The Registrar may determine an opposition proceeding without a hearing once it is within the scope of regs 5.17, 6.9, 9.20, 17A.34M, 17A.48V or 21.20E if it is also within the scope of reg 21.15. Within the opposition context, procedural disputes (typically extensions of time) may be decided without a hearing where reg 21.15 applies. The matter is then decided on the basis of relevant information held in the Trade Marks Office. By the time matters have reached such a stage, the parties will have received official letters giving them adequate opportunity to be heard on both the substantive matter and the question of costs. The delegate deciding an opposition may therefore proceed to award costs where either party has requested this be done. Where neither party has requested an award, either party may apply for an award of costs within three months of the decision being made.  The three month period for filing an application is extendible under the provisions of section 224.

• Part 51 General Opposition Proceedings

3.3 Costs sought where the matter has not been determined by the Registrar

If an application for an award of costs is filed during the proceeding, but the proceeding is later ended by the discontinuance (withdrawal) of one of the parties, or by dismissal of the opposition prior to determination of the substantive matter by the Registrar, costs will generally be dealt with as set out in part 55.2.5

If an award of costs is sought after the substantive matter has been determined, or after notification of either the discontinuance (withdrawal) or dismissal of the proceedings (reg 21.12(2)(b), the application for costs must be made within three months of the Registrar’s decision or notification.

The other party will be given an opportunity to comment on the application (reg 21.12(3)).  If the Registrar intends not to make an award, the requesting party is advised of that intention and given an opportunity to request a hearing.  It is unusual for such costs matters to go to hearing but if this should happen both sides are given an opportunity to make submissions at the hearing or in writing.

If the Registrar makes an award of costs, the parties are advised of this and their attention drawn to subreg 21.12(4), which deals with the timeframe for filing a bill of costs.  A period of three months is allowed from the time that costs are awarded within which the party that is successful in its application for an award of costs may file a bill of costs, if they wish to have it taxed, allowed and certified (subreg 21.12(4) and reg 21.13).

3.4 Application for extensions of time to apply for an award of costs or to file a bill of costs

A late application for an award of costs, or a bill of costs that has been filed outside the time limit under reg 21.12, can only be considered if the person concerned is granted an extension of time under s 224.  Such an application for extension must be in an approved form and must be filed together with the appropriate fee and a supporting declaration (reg 21.25).  If the extension of time sought is for a period greater than 3 months, the application must be advertised in the Australian Official Journal of Trade Marks for the purposes of opposition (subsections 224(5) and (6)).

• Part 15 General Provision for Extensions of Time