Costs of Trade Marks Proceedings
“Costs” includes fees, charges, disbursements, expenses and remuneration.
Registrar has discretion to award costs
For trade marks proceedings before the Registrar, the Registrar has the discretion to award such costs as he may consider reasonable to any party and direct how and by which parties they are to be paid (Section 87 of Trade Marks Ordinance, Cap. 559)
Costs to follow the event
For contested proceedings, the general principle is that the Registrar will usually award costs to the successful party. The costs order made by the Registrar is “ Costs to follow the event”, Except where it appears to the Registrar that there are circumstances of the case in which some other costs order should be made as to the whole or any part of the costs.
For example, the successful party has failed to comply with requirements relating to contents of pleadings. But it is open to the losing party to submit arguments that the costs should not follow the event.
For uncontested opposition proceedings, representation for costs will have to be made to the Registrar. The Registrar will consider whether proceedings might have been avoided if reasonable notice had been given by the opponent to the applicant before the filing of the notice of opposition in deciding whether costs should be awarded to the opponent.
Taxation of costs
As for the actual amount of costs to be paid, the usual costs order directs the costs to be taxed if not agreed. That means unless parties have reached agreement on the amount payable, no costs are payable unless they have been taxed. The Registrar has the power to tax any costs awarded by him under rule 85(1) of the Trade Marks Rules.
How a bill of costs is taxed
A bill of costs should be drawn up by any party entitled to taxation and submitted to the Registrar, with a copy of it and the correspondence requesting that taxation be served on the other party.
In the taxation of costs, the Taxing Officer has the discretion to allow any particular item of costs, and to determine the amount recoverable by the receiving party in respect of that item. Subject to any representations as to the amount of costs calling for special treatment, costs will be calculated with reference to the usual scale in Part I of the 1st Schedule to Order 62 of the Rules of the High Court (Cap. 4A) as applied to trade marks matters and the scale of costs applicable in opposition proceedings, unless otherwise agreed between the parties. The Scale of Costs is subject to review from time to time.
The Registrar has the discretion to deviate from the scale in the award of costs if there are justification to do so.
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