Increases in the scale of costs to be awarded in UKIPO proceedings
According to Tribunal Practice Notice (TPN) 1/2023, the United Kingdom Intellectual Property Office (UKIPO) has increased it scale of costs. The new scale will apply to trade mark, patent and design proceedings commenced at the UKIPO on or after 01 February 2023.
General practice at the UKIPO is that costs should be determined by reference to a scale, with an underlying “contribution-not-compensation” approach. This provides transparency to parties about potential liabilities. However, caps may not apply where a party is found to have acted unreasonably.
Scale of costs in proceedings commenced on or after 01 February 2023
| Task | Costs |
|---|---|
| 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 £2,600 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 £1,900 per day of hearing, capped at £3,900 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. |
| Expenses. | 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. |
| Trade mark fast track opposition proceedings. | 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 and up to £350 for filing written submissions. |
Off-scale costs: unreasonable behaviour
The UKIPO retains its discretion to award costs “off the scale” to deal proportionately with unreasonable behaviour. Generally, the amount will be commensurate to the additional expenditure a party has incurred as a result. Requests for such costs should be supported by a bill itemising the costs incurred.
Examples of unreasonable behaviour include:
- Making an (avoidable) amendment to a statement of case, causing the other party to amend its statement or file further evidence.
- Behaviour designed to delay, frustrate or unreasonably increase the costs/burden on the other party.
- Unreasonably rejecting efforts to settle a dispute before an action was launched or a hearing held.
There may be circumstances where costs below the minimum of the scale are awarded. For example a party who ignores a hearing officer’s suggestion as to the most efficient means of case management, may only be entitled to the award they would have received if they had followed the suggestion.
Off-scale costs: unrepresented parties
Generally unrepresented parties incur lower costs because they do not pay legal fees. If the scale of costs were applied to unrepresented parties, they might receive costs in excess of what they may reasonably have incurred, which would undermine the contribution-not-compensation approach.
At the end of proceedings, unrepresented parties will be sent a proforma to submit how many hours they spent at each stage of the proceedings. If an award is to be made in favour of an unrepresented party hearing officers will consider the proforma when determining the sum to be awarded.
Tribunal Practice Notice (TPN) 1/2023 also sets out specific guidance on costs relating to:
- Undefended actions without prior notice: Generally, costs will not be awarded against parties who were not given prior notice.
- Costs arising from interlocutory or preliminary hearings or case management conferences: Generally, hearing officers will indicate at the end of the hearing or case management conference what their view on costs is. An indication can be balanced against any costs awarded for the rest of the proceedings. Nevertheless, hearing officers still have discretion to make an order for the payment of costs as the cause arises.
- Conditional fee arrangements: If a party has a conditional fee arrangement with their legal representative, any “success fee” will not be taken into account when assessing costs.
- Ex parte hearings: Generally, the UKIPO will not to award or seek costs in connection with ex parte hearings. However, for appeals to the High Court, if the UKIPO loses on appeal, it is expected that an award of costs would be made against them.
Tribunal Practice Notice (TPN) 1/2023
Tribunal Practice Notice (TPN) 1/2023: Costs in proceedings before the Comptroller, published 24 January 2023.
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