Earlier this week, the IPO brought together updated the guidance from previous TPNs about costs in trade mark, patent and design tribunal proceedings in (TPN) 1/2023.
Although unlikely to raise to full compensation, the increases to cost awards for tribunal proceedings before the UKIPO will likely be welcomed by rights holders. Importantly, it is still possible for parties to apply for costs off the scale, if they believe the other party has acted unreasonably in the proceedings.
Of particular note is the scale of costs in proceedings commenced on of after 1 February 2023:
|Preparing a statement and considering the other side’s statement
|From £250 to £750 depending on the nature of the statements, for example their complexity and relevance
|Preparing evidence and considering and commenting on the other side’s evidence
|From £600 if the evidence is light to £2600 if the evidence is substantial. The award could go above this range in exceptionally large cases but will be cut down if the successful party had filed a significant amount of unnecessary evidence
|Preparing for and attending a hearing (including procedural hearings) or submissions-in-lieu
|Up to £1900 per day of hearing, capped at £3900 for the full hearing unless one side has behaved unreasonably. From £350 to £650 for preparation of submissions, depending on their substance, if there is no oral hearing
|(a) Official fees arising from the action and paid by the successful party (other than fees for extensions of time)
(b) The reasonable travel and accommodation expenses for any witnesses of the successful party required to attend a hearing for cross examination
And scale adaptations for trade mark fast-track opposition proceedings:
The costs awarded in trade mark fast-track opposition proceedings will be capped at £600, excluding official fees, made up of:
- £250 for filing a notice of opposition or considering a notice of opposition and filing a counterstatement
- up to £350 for filing written submissions
As with any cap, this does not mean that costs will automatically be awarded at this level. Most awards will be less. The cap does not apply where a party is found to have acted unreasonably in their conduct of the proceedings.