TPN 1/2023: New Tribunal Practice Notice relating to costs in UKIPO Tribunal proceedings

The UK IPO has issued the first Tribunal Practice Notice (TPN) of 2023, which brings together previous guidance regarding costs in trade mark, patent and design tribunal proceedings and updates the scale of costs.

Scale of costs

The UK IPO Tribunal will continue to award costs in proceedings in line with the published scale. The scale is designed to provide transparency to parties involved in Tribunal proceedings regarding their exposure to costs if they lose. Costs in Tribunal proceedings seek to provide a contribution to costs incurred, not to compensate the winning party.

TPN 1/2023 contains an updated scale of costs, representing the first increases since 2016. The new scale will apply to all proceedings commenced on, or after, 1 February 2023 and can be seen in Annex A to TPN 1/2023 here.

Unrepresented Parties

Since unrepresented parties do not have to pay professional fees, applying the scale of costs would result in unrepresented parties receiving costs in excess of what they may have reasonably incurred. In light of this, unrepresented parties will be sent a pro forma at the end of the proceedings inviting them to set out the number of hours spent on the proceedings. Where costs are awarded to an unrepresented party, the Hearing Officer will consider whether the time spent was reasonable and costs will be awarded at £19 per hour, which is analogous with the Civil Procedure Rules, Part 46. No costs will be awarded if the party does not return the pro forma.

Off the scale costs

The Tribunal has discretion to award costs “off the scale” in order to deal with unreasonable behaviour. This discretion can be used to deal proportionately with behaviour designed to frustrate, delay, or unreasonably increase the costs or the burden of the other party. It can also be used to deal with repeated breaches of procedural rules.

Undefended actions

Costs will not generally be awarded in undefended actions where proceedings were brought without prior notice.

If a case is withdrawn after it has been defended, costs will be assessed in line with the scale up until the point of withdrawal.

Hearings and case management conferences (CMC)

In most cases, the Hearing Officer will indicate their view on costs at the end of the hearing/CMC, indicating what level of costs should be awarded once the proceedings conclude. This can then be balanced against any costs awarded at the end of the proceedings. Hearing Officers have discretion to make an order for the payment of costs as the cause arises in appropriate circumstances.

Costs awards will not be made in relation to ex parte hearings (hearings between one party and the Office).

Category: News | Author: Sarah Neil | Published: | Read more