55.4. Determination of the amount of costs

Frequently, when the delegate awards costs concurrently with the issue of the decision on the substantive matter, nothing further is heard by this Office, the matter presumably being settled to the mutual satisfaction of the parties.  However, the successful party may otherwise choose to submit a claim for costs (a bill of costs) to the Registrar, who will determine (“tax”) the amount to be paid by the other party. This is more likely to happen when the application for an award of costs has been made after the proceedings have ended. In practice the bill of costs is often filed at the same time as the application for award of costs.

When a bill of costs is filed, the amount of those costs must be taxed, allowed and certified by the Taxing Officer, an employee of the Trade Marks Office appointed by the Registrar for that purpose (subreg 21.13(3)). The Taxing Officer taxes the costs on the basis of the bill submitted and the scale of costs in Schedule 8 (the scale sets the upper limit to the amount of costs that may be claimed against each item). A copy of the bill of costs is sent to the party against whom costs have been awarded and 21 days allowed for their comments. If the amount of costs is challenged, the Registrar may review the taxation of costs taking into account any submissions from the parties (subreg 21.13(4)).

4.1 Allowable costs under Schedule 8

Except where an applicant for costs relies on a certificate provided under subsection 105(1) of the Act (see part 55.5), a person to whom costs have been awarded can be allowed costs only in accordance with the scale of costs set out in Schedule 8 to the Trade Marks Regulations (section 221(1)).  The actual costs incurred in the prosecution of the opposition action, that is money paid out in relation to the items listed in Schedule 8, up to the maximum amount shown against the item, may be allowable.

IMPORTANT:  Schedule 8 is amended from time to time. The version of Schedule 8 that applies depends on when the proceedings commenced. The current compilation of the Schedule applies only to oppositions that commenced on or after 1 October 2024. For oppositions commencing prior to that, a historical version of the Trade Marks Regulations may be consulted. Both the current and immediately previous version of the Schedule are outlined on the Application for an Award of Costs form, which is found on the IP Australia website.

Part 1 of Schedule 8 includes the following items:

• Items 1 to 12 cover costs related to preparing, receiving and perusing the notice of opposition and the evidence in the proceedings and in preparing the cases for hearing.  The cost of employing an agent to advise and assist with the work involved may be claimed against these items.

PLEASE NOTE:  When the successful party does not attend a hearing but files written submissions for consideration at the hearing, a claim for costs under item 13 for preparation of the case for hearing may be claimed.  The preparation of written submissions can be treated as evidence of preparation for verbal presentation provided that there is a reasonable basis to infer that the submissions were intended for a hearing.  There is, however, no item in Schedule 8 for preparation (per se) of written submissions.

• Items 14 to 15 cover the costs of professional legal representation at the hearing.  These costs are only claimable in respect of attendance at the hearing by a registered patent attorney, registered trade mark attorney, or solicitor with or without counsel.
• Item 16 covers fees for attendance at a hearing by counsel.

Part 2, Division 1 of Schedule 8 includes the following:

• Item 1 covers fees paid in relation to the proceedings by the person to whom costs have been awarded. Depending on the type of proceedings and who is the successful party, this may include the opposition fee or the hearing fee(s).

PLEASE NOTE:  Fees required for extending the time for serving evidence, or for filing late evidence, in the proceedings will rarely be covered by an award of costs.  Most extensions of time are sought because the seeking party could not meet the requirements of the Act in time and it is therefore not appropriate that they should be included in an award of costs. Such fees could only be claimed in the unlikely circumstance that the need for further time was the result of some action (or lack of action) by the other party.

• Item 2 covers expenses associated with attendance at the hearing by a party to the proceedings, or that party’s agent.  In this case the agent need not be one of the classes of persons specified in items 14 to 15 of Part 1.

PLEASE NOTE:  In addition to attendance in person at a hearing, a party may attend a hearing by telephone connection or by means of video conferencing.  Therefore, the connection cost associated with attending by these alternative means is recognised as an allowable cost under this item.

Part 2, Division 2 of Schedule 8 covers the allowances which must be paid to a person summoned to appear at the hearing as an expert witness or otherwise.

4.2 Taxation of costs for "multiple" oppositions

When oppositions are filed in respect of a number of applications for the same trade mark for different goods or services, or closely related trade marks for the same goods or services, the grounds of opposition are often the same in each case and the evidence in support of each of the oppositions is identical. Such “multiple” oppositions are usually dealt with at a single hearing. If the result is the same for the first and each of the additional oppositions and costs are awarded and a bill of costs filed for taxing, the question arises as to what, if any, costs should be awarded in respect of the additional oppositions.

Following Latrobe Brewing Company v Simmons (1996) 34 IPR 346:

• receiving, or preparing, a second notice of opposition is just as expensive as receiving or preparing a first; therefore, each notice of opposition should be taxed as a cost in its own right and
• Costs for the receipt and perusal of evidence in the additional oppositions should be taxed at 20% of the relevant scale item for the first opposition. Even if the evidence filed in respect of each case is identical, there is an additional cost involved in either filing or receiving evidence to support or answer each of the additional oppositions.

Following Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd (2001) 53 IPR 591:

• costs in preparing and serving evidence in the additional oppositions should also be taxed at 20% of the scale item for the first opposition.

A summary of the practice which now applies is reproduced in Annex A1.