Statutory guidance

Tribunal practice notice (2/2016): Costs in proceedings before the Comptroller

Published 23 May 2016

(1) This Tribunal Practice Notice updates and supplements Tribunal Practice Notice TPN 4/2007 and TPN 2/2000 concerning the award of costs in patent, trade mark and design proceedings before the Comptroller.

Introduction

(2) TPN 2/2000 was issued following a review of the Comptroller’s practice on the award of costs in proceedings before him. The outcome of that review supported the long-established practice that costs in proceedings before the Comptroller are awarded after consideration of guidance given by a standard published scale. However, the review also concluded that the Comptroller should have the freedom to award costs off the scale to deal proportionately with unreasonable behaviour. TPN 4/2007 maintains that philosophy but updates the scale values set out in TPN 2/2000 as well as providing further guidance arising from developments in practice in relation to hearings. This TPN is a further update of the scale values.

The new scale

(3) Annex A to TPN 4/2007 puts figures to the scale of costs in respect of an award in proceedings commenced on or after 03 December 2007. This scale has not been revised since November 2007 and it now needs updating to take better account of the real costs currently involved in litigation before the Comptroller whilst still maintaining the underlying contribution-not-compensation approach. The new scale at Annex A to this Notice will be applicable in respect of awards of costs in proceedings commenced on or after 1 July 2016. For proceedings commenced before that date, the scale, published as Annex A to TPN 4/2007, will continue to apply. The new scale does not affect the £500 cap on costs in fast track trade mark opposition proceedings.

Efficient case management

(4) A party who does not follow a suggestion from the Hearing Officer, confirmed in writing, as to the most efficient means of managing the case will only be entitled to whatever award they would have received if they had followed the Hearing Officers suggestion.

Contacts for enquiries

Current contact details for enquiries about this Notice are:

Patents

Susan Eaves
Room 1R31
Patents Directorate

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel: +44(0)1633 814335

Trade marks and Designs

Raoul Colombo
Room 3B07
Trade Marks and Designs Directorate

Intellectual Property Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ
United Kingdom
Tel: +44(0)1633 811407

John Alty
Comptroller-General of Patents, Designs and Trade Marks

Annex A

Scale of costs applicable in proceedings commenced on or after 1st July 2016

Task	Cost
Preparing a statement and considering the other side’s statement	From £200 to £650 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 £500 if the evidence is light to £2200 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	Up to £1600 per day of hearing, capped at £3300 for the full hearing unless one side has behaved unreasonably. From £300 to £550 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.