Statutory guidance

Tribunal practice notice (2/2015): Fast track opposition costs cap

Published 26 August 2015

1. Review of Fast Track Opposition Process: New Costs Cap

1) The trade marks fast track opposition process was introduced on 1 October 2013. The purpose was to provide SMEs with a quicker and cheaper means of enforcing earlier registered marks against later filed applications by third parties to register conflicting marks.

2) 139 fast track oppositions were filed in the first 12 months ending on 30 September 2014. This accounted for around 7% of the oppositions filed in this period. In all, 232 fast track oppositions were filed up until the end of April 2015. The number and % of oppositions using the fast track route is creeping up to around 10%.

3) 15% of fast track oppositions are filed by litigants in person. A litigant in person is the respondent in around 40% of such cases.

4) The most common outcome of a fast track opposition is that the trade mark application is withdrawn. This happens in around 60% of cases. The opposition is withdrawn in around 25% of cases, sometimes after amendments to the scope of the application. The Office issued decisions in the remaining 15% of cases. These figures are broadly comparable with the outcomes in conventional opposition proceedings.

5) The time taken to issue a decision ranges from 1 month to 7 months (from the filing of a defence). The average time taken is 3 months.

6) The average costs awarded is £460. This compares with the average costs award in standard opposition proceedings of £1235.

2. Introduction of a costs cap for Fast Track Oppositions

7) The potential for costs to be awarded against the losing party is likely to be a major disincentive for an SME considering bringing (or defending) opposition proceedings. Indeed, complaints from businesses to Government about the unaffordable cost of opposition proceedings were one of the reasons for the introduction of a fast track opposition process. Despite this, the opposition rate has not changed very much. It remains around 4% of published applications. This compares to a rate of official objections on relative grounds of 26% prior to the move to an opposition based system in 2007. There are likely to be a number of reasons why the opposition rate is lower than the previous official objection rate, but it is likely that some of the difference is attributable to concern about the potential cost of proceedings.

8) The evidence shows that such fears are largely unfounded. The actual costs awarded in fast track oppositions are quite low. However, in order to bring greater certainty to the matter, and thereby encourage SMEs to protect their IP, the costs awarded in trade mark fast track opposition proceedings will be capped at £500, excluding official fees. This will be made up of:

• £200 for filing a notice of opposition or considering a notice of opposition and filing a counterstatement

• up to £300 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.

9) As a safeguard against possible abuse of the costs cap, it will not apply where a party is found to have acted unreasonably in their conduct of the proceedings. In those cases costs will be awarded as an appropriate level, which may be full compensatory costs.

10) This practice change will apply to fast track oppositions filed on and after 1 October 2015.

Allan James
Head of the Trade Mark Tribunal