Costs at the UK Intellectual Property Office Trade Mark Tribunal

The trade mark tribunal at the UK Intellectual Property Office (UKIPO) hears disputes relating to the registration of trade marks which include opposition, invalidity and revocation proceedings. It offers a quick, cost effective and streamline procedure for these types of disputes to be determined and it is possible to retrieve the UKIPO’s trade mark decisions since the beginning of 1998 by way of the “results of past trade mark decisions” search function.

For many trade mark disputes, costs will be awarded in line with the “scale of costs” and are usually paid by the looser to the winner. The UKIPO’s view on costs is that they should be awarded on a “contribution-not-compensation” approach; this is done on the basis that parties to trade mark disputes at the UKIPO should be provided with transparency on their cost exposure (as well as what they may recover).

The UKIPO’s “Tribunal Practice Notice (TPN) 1/2023: Costs in proceedings before the Comptroller” sets out the scale of costs which the UKIPO will typically award a party. It is well worth a review for any party considering issuing an opposition or defending one. This is for the reason that it sets out the amount of costs the successful party may be awarded at each stage of the proceedings – for example, a party may be awarded between £250-£750 for preparing a statement and considering the other side’s statement.

The TPN provides a warning about “off-scale costs” and reminds parties that it does retain the discretion to make such awards to deal to deal proportionately with unreasonable behaviour. The TPN explains that it is not possible to set out all the circumstances in which a Hearing Officer might depart from the scale. However, the case of Rizla Ltd’s Application [1993] RPC 365 provides some useful guidance. In that case, it was explained that if a case is brought with out any proper belief that it was soundly based in law or if the proceedings were being used other than for the purpose of resolving genuine disputes, the UKIPO has the power to order compensatory costs.

Very recently, in opposition decision BL O/1192/24 Apple relied on Rizla Ltd’s Application to seek off-scale costs. The background to these proceedings is that Razvan Radu had issued invalidity proceedings against two of Apple’s iPhone trade marks which were then struck out on the application of Apple for being an abuse of process. Following the strike out, the Hearing Officer directed that the issue of costs be determined by way of a separate decision following written submissions. Apple put forward five reasons why it should be entitled to off-scale costs, although Apple did not maintain all of these reasons at the hearing, the Hearing Officer did agree with it that Mr Radu’s behaviour in bringing the proceedings was unreasonable (the Hearing Officer’s previous decision found that Mr Radu was attempting to coerce Apple into surrendering its iPhone marks to clear the way for his own trade mark registrations).

The Hearing Officer went onto assess Apple’s costs claim, although Apple was not successful in recovering its full costs (reported as being £27,606) it did obtain off-scale costs against Mr Radu in the sum of £19,389.

The recent decision involving Apple and Mr Radu is very handy for users of the UKIPO’s tribunal, it sets out a clear application of Rizla Ltd’s Application to the facts of the matter, provides guidance of how Hearing Officers will consider applications for off-scale costs and, most importantly, should act as a deterrent for persons attempting to use the UKIPO’s tribunal for unreasonable purposes.