55.1. Legislative Basis

Under paragraph 202(d) of the Trade Marks Act 1995 the Registrar may, for the purposes of the Act, award costs against a party to proceedings brought before the Registrar.  The power of the Commissioner of Patents to award costs under the equivalent section 210 (d) of the Patents Act 1990 was challenged in the Federal Court in Stack and Another v Commissioner of Patents and Others, (1999) 43 IPR 663 on the ground that it was an impermissible conferral of judicial power on an administrative body.  Drummond J rejected the argument, holding that power to award costs under the Patents Act cannot be described as an essential element of the exercise of judicial power - R v Quinn; Ex Parte Consolidated Foods Corp (1977) 138 CLR 1 applied.

The award of costs is dealt with in subsection 221(1) which provides that the Registrar may award costs in respect of the matters, and in the amounts, provided for in the Regulations.  Under reg 21.13 costs may be awarded in accordance with Schedule 8 or as the Registrar considers appropriate if the Registrar has a discretionary power in relation to the award of costs. The Registrar has such a discretion under subregs 5.17(7), 6.9(4), 9.20(6), 17A.34M(7), 17A.48V(6) and 21.20E(4), to be able to take into account a party’s failure to file a summary of submissions when making an award of costs after a hearing.

An award of costs in proceedings before the Registrar is intended to partially reimburse the successful party for the expenses it incurred in establishing its case.  This will include money paid to an agent who has advised and assisted the party in filing necessary documents and in preparing its case.  As in proceedings in the courts, the costs in proceedings before the Registrar generally do not include work which a party does on its own behalf as this is not done for a payment ¹.  However, unlike the situation in the courts, the payment does not have to be made to a legally qualified person.  There is no limitation in the Act on the classes of persons who may act for another person in trade mark matters.  Therefore if a party has paid for work done on its behalf in establishing its case in proceedings before the Registrar, the expense incurred may be treated as a cost even if the person employed to perform that work is not a solicitor or registered patent or trade marks attorney.

1​​​​​​​ Certain costs in litigation have been found to be confined to money paid or liabilities incurred for professional legal services. Such costs generally may not be claimed if the successful party has been self-represented.  This was considered in the High Court in (1994) 179 CLR 403 where the majority decision was that the appellant’s claim for compensation for loss of time spent in preparation and conduct of his case and for associated travelling expenses was not allowable as a cost.  However the court noted the so-called solicitor litigant exception which allows the successful party to claim such costs if he or she is a self-represented solicitor (See also (No 2) (1976) 136 CLR 47.)  In [2015] FCA 250 Mortimer J held that this exception should apply to the award of costs in proceedings before the Registrar.