55.2. Award of costs

Since costs may only be awarded “against” (s 202) a party, the proceedings before the Registrar in which costs may be awarded involve an opposition.  The legislation provides that the following actions may be opposed:

• Amendment of a trade mark application (s 65A)
• Registration of another party’s trade mark (s 52)
• Protection of an International Registration Designating Australia held by another party (reg 17A.33)
• Removal of a registered trade mark for non-use (s 96)
• Cessation of protection of a Protected International Trade Mark for non-use (reg 17A.48D)
• Grant of an extension of time of more than three months (s 224).

In each case the relevant opposition proceeding commences with the filing of a notice of opposition ².  

It may be the case that before the merits of the opposition are determined the Registrar will hear both parties on a related matter such as the grant of an extension of time to file evidence. However costs may only be awarded if the hearing is held because one of the parties objects to the grant of the extension and has asked to be heard.  Where a hearing is held because the Registrar proposes to refuse the extension of time and the extension applicant asks to be heard, the other party will be given an opportunity to appear at the hearing. If the Registrar subsequently refuses the extension, costs will not be awarded against the extension applicant.  The other party may have attended the hearing and made submissions, but the dispute is between the extension applicant and the Registrar and the other party does not have standing to request costs.

Before making an award of costs, the Registrar must give all parties to the proceedings a reasonable opportunity to make representations or be heard in relation to the award (subreg 21.12 (3)).  This normally happens at the conclusion of the hearing of the substantive matter but in some cases (see part 55.3.3) it may be necessary for the parties to be heard  purely in relation to the award.

2.1 The making of an award of costs

When awarding costs the delegate should make it clear in the decision issued that costs are awarded against a party rather than to a party.  This accords with subsection 221(1), which says that the Registrar may award costs against any party to proceedings brought before him or her.  The wording used by the delegate when awarding costs should clearly identify who must pay the costs as this is the party from whom the debt is recoverable as per subsection 221(3).  

For example, where costs are being awarded in a successful opposition to registration, a suitable form of words would be “I award costs against the applicant in accordance with the scale of costs”  The Act does not provide for the making of orders as part of deciding an opposition and thus it is not appropriate to “order” that one party pay the costs of the other.  

2.2 The general rule for award of costs

It is usual for costs to follow the event, that is, for costs to be awarded against the unsuccessful party to the proceedings.  Where an opponent is only partially successful, for example where as a result of an opposition a registration is issued with a significant restriction or modification, it does not follow that an award of costs is automatic.  Costs may still be awarded against the applicant (see e.g. Societe Francaise des Viandes et Salaisons du Pacifique v Societe des Produits Nestle SA, (1989) 15 IPR 89).  Alternatively, depending on the circumstances, each party may be found to be responsible for its own costs (see e.g. Sasdor Pty Ltd v Atomic Skifabrik Alois Rohrmoser, (1991) 20 IPR 593 where the opponent to a removal for non-use proved use of its mark on some goods and the applicant established non-use of the mark on other goods - there was no award of costs against either party.

2.3 Some exceptions to the general rule

In exercising discretion as to costs, a court may have regard to the conduct of any party that is calculated to contribute unnecessarily to the cost of the proceedings.  Such conduct need not be misconduct. As early as 1838, in Millington v Fox 1B IPR 321, Cottenham LC denied costs to the successful plaintiff, who had been awarded an injunction against use of its trade marks, because he considered that the plaintiff had engaged in “an unnecessary degree of litigation” to obtain its result.  The Registrar is entitled to exercise similar discretion in the interests of natural justice.

Therefore, where the successful party’s actions have caused some unnecessary complication, such as an adjournment, that party may have to pay the costs arising from that part of the proceedings - see the comments of the Deputy Registrar in Sherry Shippers Association v G.Gramp & Sons Ltd (1953) 23 AOJP 2295.  This contrasts with the situation in R&C Products Pry Ltd v Bathox Bathsalts Pty Ltd (1992) 24 IPR 278 where the successful opponent was awarded its costs, including the costs associated with two adjournments of the hearing because those adjournments were caused by the applicant’s mishandling of the case.  See also Schutz-Werke GMBH & Co Kg v Forecast & Trading Pty Ltd, (1998) 44 IPR 209, where costs were not awarded against the unsuccessful applicant for removal because the opponent to removal had failed to comply with the requirement that evidence be filed in English, thereby causing expense and inconvenience to the removal applicant.

In awarding costs, the Registrar or a delegate may decide that certain costs should not be covered by the award.  This would always be based on the facts and history of the proceedings.

2.4 Award of costs for a disputed extension of time

The power of the Registrar to award costs extends to costs associated with hearings held because one party objects to the grant of an extension of time to the other party in opposition proceedings, see Mission Personnel Services Pty Ltd v Mission Australia (1999) AIPC 91-511.

The costs associated with such a hearing are generally awarded against the unsuccessful party in the extension of time matter, regardless of the final outcome of the substantive matter - see e.g. Lind Engineering Ltd v Leeton Steel Works Pty Ltd (1985) 4 IPR 445 and Bernard Leser Publications Pty Ltd v Spiritual Sky Group Cos Pty Ltd (1985) 5 IPR 149.  However if the extension is only granted following matters which came to light at the hearing, then costs may be awarded against the successful party - see for example Nautical Services Pty Ltd v Hitech Distillation (Aust) Pty Ltd (1986) 7 IPR 567 and Foodland Associated Ltd v John Weeks Pty Ltd (1987) 9 IPR 289.

2.5 Consideration of an award of costs where an opposition is resolved without decision of the substantive matter.

These matters involve oppositions where the proceedings end because one party discontinues (i.e. withdraws the application or the opposition) or where proceedings are dismissed by the Registrar because security for costs was not provided (s 222).

Unlike court actions where the withdrawal of one of the parties without the consent of the other is generally regarded as being “with prejudice” or an “effective surrender” which warrants the award of costs, the Registrar does not regard the withdrawal of the applicant or the opponent per se is sufficient reason to award costs. This approach is in line with the decision in Aussie Red Equipment Pty Ltd v Antsent Pty Limited [2001] FCA 1641.

In DC Comics v Beling [2015] ATMO 76 the delegate cited Kiama Council v Grant (2006) 143 LGERA 441:

[W]here some supervening event or settlement so removes or modifies the subject of the dispute that no issue remains except that of costs, the proper exercise of the costs discretion will ordinarily be to make no order as to costs unless:

(i) one of the parties has acted so unreasonably that the other party should obtain the costs of the action; or

(ii) even if both parties have acted reasonably, one party was almost certain to have succeeded if the matter had been fully tried so that the party should obtain the costs of the action.

A party seeking costs in an opposition proceeding that has been resolved prior to the determination of the substantive matter should be able to point to:

• A copy of the terms of settlement that deals with the question of costs; or
• Written confirmation by both parties that while they have agreed that an award of costs should be made to one of the parties, they have been unable to agree on the amount to be awarded; or
• Written submissions that set out exceptional circumstances that would justify an award of costs, including but not limited to the conduct, non-appearance or disappearance of the other party.

The Registrar may otherwise decline to make an award of costs.

² See AKT Consultants Pty Ltd v Alfa Laval Lund AB (2006) 70 IPR 347.